The Board of Regents of The University of Texas System v. S Jon Grant
Claim Number: FA2109001962940
Complainant is The Board of Regents of The University of Texas System (“Complainant”), represented by Alexandra H. Bistline of Pirkey Barber PLLC, Texas, USA. Respondent is S Jon Grant (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utexas.us>, registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 10, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <utexas.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@utexas.us. Also on September 13, 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 October 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
1. Respondent’s <utexas.us> domain name is confusingly similar to Complainant’s UTEXAS mark.
2. Respondent does not have any rights or legitimate interests in the <utexas.us> domain name.
3. Respondent registered and uses the <utexas.us> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, The Board of Regents of The University of Texas System, is a higher education institution. Complainant holds a registration for the UTEXAS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,285,324, registered August 28, 2007).
Respondent registered the <utexas.us> domain name on April 24, 2020, and uses it to download malware onto user computers.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
The Panel finds that Complainant has rights in the UTEXAS mark through its registration with the USPTO. See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”).
Respondent’s <utexas.us> domain name uses Complainant’s UTEXAS mark and simply adds the “.us” ccTLD. Adding a ccTLD is insufficient to differentiate a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Therefore, the Panel finds that Respondent’s <utexas.us> domain name is virtually identical to Complainant’s UTEXAS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent does not have rights or legitimate interests in the <utexas.edu> domain name, as it is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the UTEXAS mark. The WHOIS of record identifies Respondent as “S Jon Grant.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(iii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent does not use the <utexas.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the domain name to download malware. Redirecting Internet users to a website that attempts to download malware onto users’ computers is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides a screenshot of the disputed domain name’s resolving website, which attempts to download software flagged by an antivirus program. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(ii) or (iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <utexas.us> domain name in bad faith by offering the domain name for sale. Under Policy ¶ 4(b)(i), offering a domain name for sale may be evidence of bad faith. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant provides a screenshot showing the domain name for sale online for $1799. Therefore, the Panel finds that Respondent registered the disputed domain name with the bad faith intent to sell the domain name for more than out-of-pocket costs.
Complainant also argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), adverse UDRP cases may demonstrate a Respondent’s pattern of bad faith registration and use. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides screenshots of previous Forum cases where Respondent was ordered to transfer a domain name. Therefore, the Panel finds that Respondent exhibits a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
The Panel also finds that Respondent’s use of the <utexas.us> domain name to download malware demonstrates bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <utexas.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 8, 2021
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