Texas A&M University v. David Gunn
Claim Number: FA2301002028396
Complainant is Texas A&M University (“Complainant”), represented by John C. Cain of Munck Wilson Mandala, LLP, Texas, USA. Respondent is David Gunn (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aggie12thman.com>, <aggie12thman.org>, <aggie12thman.mobi>, <aggie12thman.info>, and <aggie12thman.biz>, (‘the Domain Names’) registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on January 20, 2023; Forum received payment on January 20, 2023.
On January 23, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <aggie12thman.com>, <aggie12thman.org>, <aggie12thman.mobi>, <aggie12thman.info>, and <aggie12thman.biz> Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2023 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@aggie12thman.com, postmaster@aggie12thman.org, postmaster@aggie12thman.mobi, postmaster@aggie12thman.info, postmaster@aggie12thman.biz. Also on January 24, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant owns several trade marks containing AGGIE and 12th MAN registered in the USA with first use recorded as the 1930s or 1920s for educational and/or sporting services.
Aggie12thman.com registered in 2012 and the rest of the Domain Names registered in 2022 are all confusingly similar to the Complainant’ trade marks adding only a gTLD in each case which is insufficient to prevent said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and is not authorised by the Complainant.
Aggie12thman.com is not being used. The rest of the Domain Names have been used for competing pay per click links. These uses are not legitimate or fair or a bona fide offering of goods and services.
Respondent does not have any rights or legitimate interests in the Domain Names.
Intention to capitalize on a well known mark is bad faith registration and use. Passive holding of a domain name or use for pay per click links containing a well known mark is bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns several trade marks containing AGGIE and 12th MAN registered in the USA with first use recorded as the 1930s or 1920s for educational and/or sporting services.
Aggie12thman.com registered in 2012 is not being used. The rest of the Domain Names registered in 2022 have been used for competing pay per click links.
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”).
The Domain Names each consist of the Complainant’s AGGIE and 12th MAN marks (registered in the USA for educational and/or sporting services with first use recorded in the 1930s or 1920s) and a gTLD.
Combining two marks of the Complainant and adding a gTLD does not prevent confusing similarity between each of those marks and each of the Domain Names. Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”).
Accordingly, the Panel holds that the Domain Names are each confusingly similar to each of the Complainants’ registered marks.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence to suggest the Respondent is commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
There has been no use of aggie12thman.com. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
The rest of the Domain Names have been used to link to third party businesses that compete with the Complainant. The Respondent does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Ashley Furniture Industries Inc v domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015)(linking to pay per click links does not amount to a bona fide offering of goods and services or a legitimate non commercial fair use).
The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant and set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. The Respondent is passively holding aggie12thman.com. Passive holding of a domain name containing a well known mark without legitimate excuse is bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The combination of two marks of the Complainants in the Domain Names shows that the Respondent had actual knowledge of the Complainants and its rights, business, products and services at the time of registration of the Domain Names.
In the opinion of the panelist the use made of the the Domain Names other than aggie12thman.com for competing pay per click links is confusing and disruptive in that visitors to the relevant sites attached to these domain names might reasonably believe they were connected to or approved by the Complainant as they provided competing services or goods under a domain name containing the Complainant’s distinctive marks. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to these websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites or products or services offered on them likely to disrupt the business of the Complainant. See Health Republic Insurance Company v Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aggie12thman.com>, <aggie12thman.org>, <aggie12thman.mobi>, <aggie12thman.info>, and <aggie12thman.biz> Domain Names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 20, 2023
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