Baylor University v. fcctryu nhbvcxrae / livestream it / nuibn ymiio / dffgdfgd dfgdgf / bd it / dfhdfdh bffdhd / dhakait
Claim Number: FA2003001888660
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is fcctryu nhbvcxrae / livestream it / nuibn ymiio / dffgdfgd dfgdgf / bd it / dfhdfdh bffdhd / dhakait (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com>, registered with 123-Reg Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2020; the Forum received payment on March 18, 2020.
On March 23, 2020, 123-Reg Limited confirmed by e-mail to the Forum that the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names are registered with 123-Reg Limited and that Respondent is the current registrant of the names. 123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited 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 March 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@oklahomavsbaylor.com, postmaster@texasvsbaylor.com, postmaster@baylorvsoklahomastate.com, postmaster@texastechvsbaylor.com. Also on March 30, 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 April 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names were registered with the same registrar, use the same hosting service, and all follow the same pattern with the language “Baylor vs.”
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
Complainant made the following contentions.
Complainant, Baylor University, is a college based in Texas that participates in many sports but notably football. Complainant has rights in the BAYLOR mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,465,910, registered Nov. 17, 1987). See Compl. Ex. C. Respondent’s <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names are confusingly similar to Complainant’s BAYLOR mark, as the domain names are identical to Complainant’s mark and only incorporates terms that are likely to be associated with Complainant’s football program.
Respondent has no rights or legitimate interests in the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the BAYLOR mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to stream Complainant’s football games illegally.
Respondent registered and is using the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s own business by streaming football games in competition with Complainant’s own streaming service. Further, Respondent passively holds the disputed domain names.
Respondent also submits that the facts and of the proceeding are similar to those in Baylor Univ. v. Md Touhiduzzaman c/o TKompany, Case No. 1679484 (Forum 2016), which was decided by the panel in favour of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant was chartered in 1845 and is a college based in Texas that participates in many sports and notably football.
2. Complainant has established its trademark rights in the BAYLOR mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,465,910, registered Nov. 17, 1987).
3. Respondent registered the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names on September 19, 2019, September 28, 2019, September 8, 2019, and September 9, 2019, respectively.
4. Respondent is likely to use the disputed domain names to stream Complainant’s football games illegally and in the case of one of the domain names it resolves to a website used for pornographic content, which shows that Complainant has no right or legitimate interest in the disputed domain names and that it registered them 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BAYLOR mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,465,910, registered Nov. 17, 1987). See Compl. Ex. C. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the BAYLOR mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BAYLOR mark. Complainant argues Respondent’s disputed domain names are confusingly similar to the BAYLOR mark as they incorporate the mark and also words that are likely to be associated with Complainant’s football program. The Panel notes that Respondent also adds the “.com” generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant argues that the disputed domain names incorporate words that are related to Complainant’s football program by following the scheme “Baylor vs.” The Panel therefore determines the disputed domain names are confusingly similar to the BAYLOR mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BAYLOR trademark and to use it in its domain names, adding words that are likely to be associated with Complainant’s football program and which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names on September 19, 2019, September 28, 2019, September 8, 2019, and September 9, 2019, respectively;
(c) Respondent will likely use the disputed domain names to stream Complainant’s football games illegally and one of the domain names resolves to a website used for pornographic content;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BAYLOR mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “fcctryu nhbvcxrae / livestream it / nuibn ymiio / dffgdfgd dfgdgf / bd it / dfhdfdh bffdhd / dhakait” and no information on the record indicates Respondent was authorized to register domain names incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain names are demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain names are likely to be used to stream Complainant’s football games and one of the domain names resolves to a website used for pornographic content. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Roku, Inc. v. Renato Ascencio / ServersMX, FA 1799002 (Forum Sep. 6, 2018) (“Respondent uses the domain name to offer unauthorized streaming devices and illegal streaming content that violates international copyright laws. It is well accepted that illegal use of a domain name can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.”).Specifically, Complainant contends that the domain names will likely be used illegally to stream Complainant’s football games in direct competition with Complainant’s own streaming services and one of the domain names resolves to a website used for pornographic content;
Moreover, Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant and the Panel agrees. The Panel therefore determines that Respondent does not have rights or legitimate interests in the disputed domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s bad faith is indicated by its use of one of the disputed domain names to show pornographic content and that it is likely that the other domain names will be used to stream Complainant’s football games. Use of a domain name to resolve illegal and competing content can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).The Panel find on the totality of the evidence that Respondent has registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant alternatively submits that Respondent’s failure to use the disputed domain names is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Complainant’s alternative submission is valid. Therefore, on the totality of the evidence that Respondent’s inactive holding of the domain names is evidence of its bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BAYLOR mark and in view of the conduct of Respondent since it registered the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
The Panel will therefore follow the decision in Baylor Univ. v. Md Touhiduzzaman c/o TKompany, Case No. 1679484 (Forum 2016) and find for Complainant.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oklahomavsbaylor.com>, <texasvsbaylor.com>, <baylorvsoklahomastate.com>, and <texastechvsbaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 28, 2020
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