Baylor University v. Smart Data Center S.A.
Claim Number: FA2108001958820
Complainant is Baylor University (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is Smart Data Center S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorbettingha.com> (“Domain Name”), registered with SafeNames Ltd.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2021; the Forum received payment on August 10, 2021.
On August 12, 2021, SafeNames Ltd. confirmed by e-mail to the Forum that the <baylorbettingha.com> domain name is registered with SafeNames Ltd. and that Respondent is the current registrant of the name. SafeNames Ltd. has verified that Respondent is bound by the SafeNames Ltd. 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 August 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 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@baylorbettingha.com. Also on August 17, 2021, 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 September 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Baylor University, operates a higher learning institution in Texas, including a highly successful athletics program. Complainant has rights in the BAYLOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,465,910, registered Nov. 17, 1987). Respondent’s <baylorbettingha.com> domain name is confusingly similar to Complainant’s BAYLOR mark, only differing by the addition of the term “betting,” the letters “ha,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <baylorbettingha.com> domain name as it is not commonly known by the Domain Name and is neither an authorized user nor licensee of the BAYLOR mark. Additionally, Respondent does not use the Domain Name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to host a sports betting site which includes offering bets on college football, a sport Complainant participates in.
Respondent registered and uses the <baylorbettingha.com> domain name in bad faith. Respondent uses the Domain Name to operate a betting site, which is not a bona fide offering of goods or services. Additionally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the BAYLOR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BAYLOR mark. The Domain Name is confusingly similar to Complainant’s BAYLOR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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”).
Complainant has rights in the BAYLOR mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. 1,465,910, registered Nov. 17, 1987). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <baylorbettingha.com> Domain Name is confusingly similar to the BAYLOR mark as it fully incorporates the BAYLOR mark adding only the generic word “betting”, the letters “ha” and the “.com” gTLD. Previous Panels have held that such changes may not negate confusing similarity between a domain name and a mark 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).); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BAYLOR mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Smart Data Center S.A.” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that prior to the commencement of the proceeding the Domain Name was used to create website (“Respondent’s Website”) which offered gambling services (clearly targeted at the United States market, given the range of sports gambling offered) under the BAYLOR Mark, including gambling on college sports that the Complainant participated in.
The Respondent has provided no evidence in this matter including whether the Respondent is a licensed gambling provider and/or offers legitimate, licensed gambling services from the Respondent’s Website (noting that the Respondent had and has chosen not to exercise the opportunity to provide evidence). Nor has it provided any explanation why it chose to offer gambling services (including gambling services for college sports) under the BAYLOR Mark. There is no attempt to disclaim or otherwise make clear the absence of any association or connection with Complainant. Finally the Respondent’s Website does not provide any contact information for the entity operating the website, merely stating that copyright in the Respondent’s Website is held by “baylorbettingha.com”. This strongly suggests that the Respondent’s Website is not offering legitimate gambling services. In the absence of more detailed information from Respondent the Panel cannot conclude that Respondent has used the Domain Name for a bona fide offering of goods and services or a legitimate non-commercial use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, May 3, 2021, Respondent had actual knowledge of Complainant’s BAYLOR mark. The BAYLOR mark was registered in 1987 for various services, including the offering of college sports events, and has been used since 1845. Moreover, given that BAYLOR is a highly unusual name with no descriptive meaning and given Complainant’s significant reputation, there is no obvious explanation (and Respondent does not provide one) for a party offering gambling services (legitimate or otherwise) to register and use a Domain Name containing the BAYLOR mark other than in awareness of Complainant’s BAYLOR mark with the intention of capitalizing on any association with the Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. In the absence of any evidence of the legitimacy of the gambling services offered on the Respondent’s Website the Panel finds, on the balance of probabilities, that Respondent registered and uses the Domain Name in bad faith to capitalize on any association with Complainant for commercial gain by using the confusingly similar Domain Name to resolve to a website offering gambling services. Under Policy ¶¶ 4(b)(iii) and (iv), promoting commercial content unrelated to complainant’s business and gambling-related content demonstrates bad faith disruption of a complainant’s business and an attempt to attract users for commercial gain. See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant’s mark, to a gambling website). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorbettingha.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 13, 2021
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