DECISION

 

The Board of Regents of The University of Texas System v. Thomas Tiosh / Mariya

Claim Number: FA2006001901485

 

PARTIES

Complainant is The Board of Regents of The University of Texas System (“Complainant”), represented by Alexandra H. Bistline of Pirkey Barber PLLC, United States. Respondent is Thomas Tiosh / Mariya (“Respondent”), Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tiosh.org>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 23, 2020; the Forum received payment on June 23, 2020.

 

On June 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tiosh.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tiosh.org.  Also on June 24, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, The Board of Regents of the University of Texas System, is a Texas state agency established for the purpose of governing the University of Texas System. The Texas Institute of Occupational Safety & Health (“TIOSH”) is a program operating within Complainant’s system. Complainant has rights in the TIOSH mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,692,264, registered Mar. 4, 2003). See Compl. Ex. B. Respondent’s <tiosh.org> domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s TIOSH mark in its entirety, merely tacking on the “.org” generic top-level domain (“gTLD”).

2.    Respondent does not have rights or legitimate interests in the <tiosh.org> domain name. Respondent is not licensed or authorized to use Complainant’s TIOSH mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant by redirecting users to a webpage that displays third-party advertisements under the pretext of operating a blog.

3.    Respondent registered and uses the <tiosh.org> domain name in bad faith. Respondent uses Complainant’s mark to attract Internet users to its website for commercial gain. Additionally, Respondent’s use of fictitious WHOIS information evidences bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the TIOSH mark as shown through use of Complainant’s mark and information on Respondent’s website.

 

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <tiosh.org> domain name is confusingly similar to Complainant’s TIOSH mark.

2.    Respondent does not have any rights or legitimate interests in the <tiosh.org> domain name.

3.    Respondent registered or used the <tiosh.org> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the TIOSH mark based upon the registration with the USPTO (e.g., Reg. No. 2,692,264, registered Mar. 4, 2003). See Compl. Ex. B. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the TIOSH mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <tiosh.org> domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s TIOSH mark in its entirety, merely tacking on the “.org” gTLD. Addition of a gTLD to a mark is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the TIOSH mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <tiosh.org> domain name because Respondent is not licensed or authorized to use Complainant’s TIOSH mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel still finds the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name identifies the registrant as “Thomas Tiosh / Mariya,” but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the TIOSH mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent doesn’t use the <tiosh.org> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to pass off as Complainant by redirecting users to a webpage that displays third-party advertisements. Use of a disputed domain name to commercially benefit from hosting advertisements may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant claims that while Respondent’s webpage is being used as a blogging website, that use is simply pretextual and the true purpose of the webpage is to generate advertising revenue. Complainant notes that the content of Respondent’s blog is copied from third party scientific articles and there is no consumer interaction with the articles. Complainant provides a screenshot of Respondent’s website, featuring the blog posts and advertisements on the site. See Compl. Ex. C. The Panel therefore agrees with Complainant that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <tiosh.org> domain name in bad faith because Respondent uses Complainant’s mark to attract Internet users to its website for commercial gain. Use of a confusingly similar domain name to deceive consumers into visiting a webpage may be evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). As previously mentioned, Complainant provides screenshots of Respondent’s website and claims that Respondent uses the site to pass off as Complainant and commercially benefit from advertising revenue. See Compl. Ex. C. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TIOSH mark. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and may be shown by a respondent’s use of the mark and other identifying information in connection with the disputed domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant claims that Respondent had actual knowledge of Complainant’s rights in the TIOSH mark based upon Respondent’s use of the "Texas Institute of Occupational Safety and Health” name on its webpage header. Thus, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tiosh.org> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  July 31, 2020