National Arbitration Forum

 

DECISION

 

Baylor University v. JS

Claim Number: FA0801001141911

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is JS (“Respondent”), Texas, USA.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <baylorbears.biz> and <baylorbears.name>, registered with Tierra Net Inc. d/b/a Domain Discover, and <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv>, registered with Domaindiscover.

 

PANEL

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.

 

Joel M. Grossman, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 1, 2008.

 

On February 5, 2008, Tierra Net Inc. d/b/a Domain Discover confirmed by e-mail to the National Arbitration Forum that the <baylorbears.biz> and <baylorbears.name> domain names are registered with Tierra Net Inc. d/b/a Domain Discover, and that the Respondent is the current registrant of the names.  Tierra Net Inc. d/b/a Domain Discover has verified that Respondent is bound by the Tierra Net Inc. d/b/a Domain Discover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 5, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv> domain names are registered with Domaindiscover, and that the Respondent is the current registrant of the names.  Domaindiscover has verified that Respondent is bound by the Domaindiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@baylorbears.biz, postmaster@baylorbears.name, postmaster@baylorbears.net, postmaster@baylorbearssuck.com, and postmaster@baylorbears.tv by e-mail.

 

A timely Response was received and determined to be complete on February 25, 2008.

 

On March 3, 2008, an Additional Submission was timely submitted by Complainant.

 

On March 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.

 

On March 10, 2008, an Additional Submission was timely submitted by Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Baylor University, asserts that it has a legitimate interest in the mark “Baylor Bears” through several registered trademarks. Complainant also notes that its athletic teams have been known throughout the world of college sports as the Baylor Bears since 1914. Complainant contends that each of the five domain names are identical to or confusingly similar to its mark, noting that each of the domain names wholly incorporates the “Baylor Bears” mark, and in four of the five marks, the only difference is the gTLD “.net,” “.biz,” or the like. In the case of the domain name <baylorbearssuck.com>, the entire mark is incorporated into the domain name, with the sole addition of the generic term “sucks.” Complainant next contends that Respondent has no rights or legitimate interests in the names, noting that Respondent is not using, and has not demonstrated preparation to use, any of the names for any bona fide offering of goods or services, and in fact has listed each for sale. Additionally, Respondent is not commonly known by any of the domain names and is not making a legitimate noncommercial use of any of the names. Finally, Complainant contends that all of the domain names were registered and are being used in bad faith, based on the fact that they were registered for the purpose of being sold.

 

B. Respondent

Respondent asserts that the Complainant’s registered trademark is stylized, and therefore Respondent’s use of the mark is not identical or confusingly similar. Further, Respondent contends that he acquired the names for a business purpose and that he intended to develop a social networking website using these names. He notes that in July, 1993 he had filed for the assumed name “Bear Paws,” and that in May, 2001 he filed for the assumed name “Central Texas Classifieds.” According to Respondent, in 2007 he acquired the domain names with the intention of creating a social networking website akin to MySpace for Baylor University students and alumni. However, due to lack of funds, this website was never developed. Based on these facts Respondent contends that he did not register or use the names in bad faith, and that he was preparing to commence a bona fide offering of goods and services using the domain names. In response to the Complainant’s assertion that Respondent is not commonly known by the domain names, Respondent asserts that he is an alumnus of Baylor University, and therefore he is commonly known as a “Baylor Bear.” He cites to passages on the Baylor University website in which students are referred to as “Baylor Bears.”

 

C. Additional Submissions

In its Additional Submission Complainant challenges Respondent’s contentions that it acquired the domain names in connection with plans to start a legitimate business. Complainant points out that there cannot be a connection between the 2007 acquisition of these domain names and its earlier acquisition of the assumed names “Bear Paws,” and “Central Texas Classifieds.” Further, Complainant notes that each of the domain names is being used for the sole purpose of redirecting the user to the website of another university, Texas A&M, Baylor’s competitor, thus disrupting Complainant’s business.  Regarding the domain name <baylorbearssuck.com>, Complainant acknowledges that while on occasion “gripe sites” that use a trademarked name followed by the word “sucks” might be a legitimate noncommercial use, in the instant case the site is not being used for any such purpose; rather, it immediately redirects users to the Texas A&M site, just as the other four domain names do. Complainant further asserts that the domain names were registered and are being used in bad faith not only due to the fact that Respondent is attempting to sell them, but also because Respondent is, as a joke, redirecting users to the Texas A&M website. Complainant notes that an article in the Texas A&M student newspaper regarding this proceeding Respondent is quoted as saying: “…after they filed and paid the fees to have the hearing, I redirected the addresses to the Aggie athletics website as a joke.   Now I can say that I transferred the domain names Baylor wanted to the Texas Aggies.” Treating these proceedings as a joke is evidence of bad faith.

 

In Respondent’s Additional Submission, he asserts that the newspaper article in the Texas A&M school newspaper is hearsay, and should not be considered. He also asserts that Complainant cannot produce any evidence that its business was disrupted by Respondent’s redirecting users to the Texas A&M site, and there was no such disruption. Respondent states that there is a long history of rivalry and pranks between Baylor University and Texas A&M and his redirecting users to the Texas A&M site was such a prank, and not evidence of bad faith. Respondent also asserts that others are holding domain names similar to <baylorbearssuck.com> but Complainant is not pursuing them.

 

FINDINGS

The Panel finds that (a) the domain names are identical or confusingly similar to the Complainant’s mark; (b) Respondent has no legitimate interests in the name; and (c) the names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant’s near-century use of the name Baylor Bears for its athletic teams, along with its registered trademarks, show that it has rights in the name. Each of the domain names is identical to or confusingly similar to Complainant’s mark, adding only a different gTLD such as “.net” or “.biz.” These different generic top-level domains are irrelevant for purposes of this issue, and the Panel concludes that each of the domain names is confusingly similar to or identical to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). As for the domain name <baylorbearssuck.com> the Panel finds that the domain name wholly incorporates the mark and therefore it is identical to or confusingly similar to Complainant’s mark. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001); see also ADT Servs. AG v. ADT Sucks.com D2001-0213 (WIPO Apr. 23, 2001) (concluding that the term “sucks” added to a mark does not defeat the complainant’s confusing similarity argument, even if it may defeat the complainant’s argument on the other issues in the case). Finally, Respondent’s point that the Complainant’s trademark involves a stylized form of the words Baylor Bears is irrelevant as it is the words, not the style, that are confusing.

 

Rights or Legitimate Interests

 

Respondent asks the Panel to believe that he acquired these domain names as part of a business plan to create a MySpace-type website for Baylor University alumni and students, and that he was actively preparing to establish this site when he determined that such a venture was not economically feasible. Aside from this assertion, there is no evidence to support the contention. By contrast, the facts reveal that upon acquiring the names Respondent began advertising them for sale for $10,000 to $25,000, an amount clearly in excess of his out-of-pocket costs.  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003). In addition, Respondent’s actions in redirecting each of the domain names to the Texas A&M site further undercuts any argument that the names were acquired to serve a legitimate business purpose. Respondent’s contention that he is commonly known by the names because, as a graduate of Baylor University he is a “Baylor Bear” is not at all well taken. He may well establish that he is a graduate of the school, but he has submitted no evidence supporting the contention that he is commonly known as “Baylor Bear.”  The Panel also notes that in a remarkably similar case, the Panel also determined that the respondent had no rights or legitimate interests in the name. In Lebanon Valley College v. BDC Partners, FA 703608 (Nat. Arb. Forum July 7, 2006) the respondent had registered the domain name <lebanonvalleycollegeflyingdutchmen.com>. The complainant in that case was Lebanon Valley College, whose athletic teams are known as the “Flying Dutchmen,” and have been known by that nickname for many years. Like Respondent in the present case, the respondent in Lebanon Valley College asserted that its plan was to establish social networking sites with the name. The panel rejected this use, explaining that an Internet user would be misled into believing that the respondent’s website was sponsored by the complainant, Lebanon Valley College “…once Respondent’s business plans come to fruition an Internet user who after querying a search engine encounters a URL reference containing one of the at-issue domain names will be initially confused into thinking that by clicking that reference he or she will be directed to content sponsored by the Complainant. However, the user will instead be direct[ed] to a website controlled by Respondent.” The exact same reasoning applies here: an Internet user with an interest in Baylor University’s athletic teams could perform a search and find any of Respondent’s domain names, and then visit those sites assuming that they are sponsored by Complainant. This confusion is only exacerbated by the multiple domain names registered by Respondent.  Finally, regarding the domain name <baylorbearssuck.com>, the Panel acknowledges that under certain circumstances such a domain name could constitute a legitimate noncommercial use, as a place where those who wish to criticize the Baylor University athletic teams could post their complaints. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000); see also Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998). However, there is no indication that in this case the domain name is being used or at any time was being used for such a purpose, and absent such a showing, it is no different than the other names at issue here.

 

Registration and Use in Bad Faith

 

There is no doubt that Respondent was aware of Complainant’s mark at the time of the registration of these names, and this fact alone supports a finding of bad faith. See Digi Int’l v. DDI Sys. FA 94313 (Nat. Arb. Forum Oct. 24, 2002). Additionally, the Panel finds that the domain names were acquired for resale at prices significantly greater than Respondent’s out-of-pocket costs, further establishing bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003). Additionally, Respondent’s playful joke of redirecting visitors to each of the five sites to the website of Texas A&M shows that Respondent is contemptuous of these proceedings, and views them merely as an opportunity to harass Baylor University for his own amusement. This clearly is an abuse of the process and warrants a finding of bad faith. Respondent’s assertion that a reference to this article is impermissible under the hearsay rule misses the mark. Hearsay is not a bar to evidence in UDRP proceedings, and even if it was, in this case the matter quoted is a party admission, and therefore falls within an exception to the hearsay rule. As for Respondent’s assertion that rivalry and pranks between Baylor and Texas A&M are common, that may well be, but it cannot excuse an abuse of the UDRP system. Additionally, as noted above, the domain name <baylorbearssuck.com> could in theory survive a challenge of bad faith if it were being used in good faith as a vehicle to criticize the Baylor University athletic teams. See Wal-Mart, supra. However, in the absence of any evidence of any such use at any time, this domain name should not be treated any differently from the others, and the Panel finds that, along with the other four domain names, it was registered and is being used in bad faith. Finally, Respondent points out that others have registered similar domain names and Complainant has not initiated proceedings against them, but only against Respondent. The Panel notes that “selective prosecution” is not a defense to a UDRP complaint. It may or may not be true that others have registered objectionable domain names, but it is Complainant’s option to pursue all, some, or none of the offending domain names. Complainant may choose to pursue other domain name holders, or not, in the future, but that has nothing to do with the instant matter. Here, the Respondent has registered five domain names which, after a review of the three UDRP issues, the Panel has determined must be transferred to Complainant. Whether other domain names must meet a similar fate is left for another day.

 

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 <baylorbears.biz>, <baylorbears.name>, <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Joel M. Grossman, Esq., Panelist
Dated: March 14, 2008

 

 

 

 

 

 

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