Claim Number: FA0802001153718
PARTIES
Complainant
is
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ihatebaylor.com>, registered with Sitename.com LLC.
PANEL
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.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2008. In response to the request of the National Arbitration Forum, Complainant amended the caption to state “c/o Balata.com Ltd, in order to more thoroughly identify the Respondent.
On March 4, 2008, Sitename.com LLC confirmed by e-mail to the National Arbitration Forum that the <ihatebaylor.com> domain name is registered with Sitename.com LLC and that the Respondent is the current registrant of the name. Sitename.com LLC has verified that Respondent is bound by the Sitename.com LLC 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 March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 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@ihatebaylor.com by e-mail.
A timely Response was received and determined to be complete on March 18, 2008.
A timely Additional Submission was received from Complainant and determined to be complete on March 24, 2008.
On March 28, 2008, Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
PRELIMINARY ISSUE
The Response received on March 17, 2008 was non-compliant pursuant to ICANN Supplemental Rule 5, in that the Response was not received in hard copy.
The
Panel, operating within its authorized discretion whether to admit the deficient Response as evidence,
rules to admit the opposition
documents as timely and to accord them their due weight. While the formal
deficiency of not sending a hard copy in accomplice with an electronic submission
does not exact any prejudice upon the Complainant, its exclusion would exact
the extreme result of placing the Respondent in a de facto default posture. The Panel rules to decide this case on
the merits, rather than on inferences drawn from the Complaint. See
Strum v. Nordic Net
RELIEF SOUGHT
Complainant requests that the domain name <ihatebaylor.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant contends as follows:
Baylor
is the owner of and has long used the marks BAYLOR,
Baylor’s Center for International Education hosted, during the fall of 2006, over 390 students from over 60 countries on the Baylor campus.
The
domain name <ihatebaylor.com>
is identical or confusingly similar to Complainant’s mark BAYLOR. The disputed domain name incorporates
Complainants mark BAYLOR, a famous mark highly
associated with
Respondent has no rights or legitimate interests in the disputed domain name, and its use does not constitute legitimate or fair use under ¶4(c)(iii). Further, Respondent is using the name solely for its traffic value.
The domain name is used in connection with a parking page that appears to relate to BAYLOR and its education services, yet diverts traffic to third-party websites not affiliated with BAYLOR.
Respondent is not commonly known by the domain name <ihatebaylor.com>.
Respondent registered the domain name in bad faith, in that Respondent’s registration and use of <ihatebaylor.com> is solely for a website that provides pay-per-click links. Respondent has failed to comply with the demands of Complainant’s cease and desist letter, and moreover, in response thereto, offered to sell the domain name for $650.00 to Complainant. Respondent has engaged in a pattern of bad faith registration and use of other’s trademarks as domain names. Respondent owns no intellectual property rights in the domain name <ihatebaylor.com> and Respondent has not used the domain name in connection with the bona fide offering of any goods or services.
B. Respondent contends as follows:
“We bought this domain name in good faith for business use not having the complainant in mind but the generic combination of ‘I Hate Baylor,’ which is not to be confused with the complainant name “Baylor University”.
Our
website content is about Humor and does not have any relation to the
C. Complainant’s Additional Submission is as follows:
Respondent’s use of the domain name for a parking page with links relating to higher education, as well as a photo of what appeared to be a college building, enhanced the specific association between the domain name and Complainant.
Respondent’s ad hoc statement that the disputed domain name was registered “for business use,” unaccompanied by facts or evidence, is meritless. Respondent’s continued use of the domain name for a monetized parking page (albeit a different one) totally undermines any argument of bona fide use.
Respondent’s recent content change to offensive, discriminatory and adult-oriented jokes and photographs is insufficient to extinguish the domain name’s confusing similarity to the BAYLOR mark or to transform the website into a legitimate use.
FINDINGS
1. The domain name <ihatebaylor.com> registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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.
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 contends that it has rights in the BAYLOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,465,910 issued Nov. 17, 1987) and extensive use. The Panel finds that Complainant’s rights in the BAYLOR mark are sufficient to satisfy Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Baylor University v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec., 3, 2007) (“Complainant has clearly established rights in the BAYLOR Marks through its registration of the mark with the [USPTO] (Reg. No. 1,465,910 issued Nov. 17, 1987). This Panel finds that this sufficiently establishes Complainant’s rights in the BAYLOR mark pursuant to Policy ¶4(a)(i).”).
Complainant contends that the disputed domain name is comprised of Complainant’s BAYLOR mark with the additional derogatory and generic term “ihate” and the generic top-level domain name (“gTLD”) “.com.” Complainant contends that the addition of a derogatory and generic term fails to remove confusing similarity from a domain name, particularly when the disputed domain name has been registered primarily for commercial gain. Moreover, Complainant contends that the addition of a gTLD has been found to be irrelevant in a Policy ¶4(a)(i) analysis because a gTLD is required of all domain names.
The Panel therefore finds that the addition of the generic term “ihate,” and the gTLD “.com” fails to adequately distinguish the disputed domain from Complainant’s mark pursuant to Policy ¶4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Caixa d’Estalvis v. Namezero.com, D2001-0360 (WIPO May 3, 2001) (finding “[t]he general principle taught by precedents seems to be that, when a SUCKS domain name has been registered for the main purpose of making money, it has been registered in bad faith, while when the purpose was really to provide criticism, political or otherwise, a finding of bad faith would not be appropriate”); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that the complainant, owner of the federally registered trademark CABELA’S and user of the domain name <cabelas.com> was entitled to relief under UDRP against the respondent for the bad faith registration and use of the domain name <cabelassucks.com>, because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [cabelassucks.com] in addition to Complainant’s site <cabelas.com>.”); see also Trip Network, Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has offered the <ihatebaylor.com> domain name for sale to Complainant. The Panel finds that such an offer for sale indicates that Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Vance Int’l. Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“an attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests”).
Complainant offered persuasive evidence in its Additional Submission, that upon receipt of the Complaint, Respondent changed the content on the website to which the disputed domain name resolves. The Panel was influenced by Exhibit B to Additional Submission which shows that the disputed domain name currently resolves to a website that displays crude, adult-oriented photographs and links. The Panel finds such use to be neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii), and further that such use tarnishes Complainant’s mark for a religious affiliated University. See Oaws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy
¶4(c)(iii)).
Complainant evidences, through its Exhibit F, that Respondent had previously been using the disputed domain name to resolve to a parked website which featured links to third-party websites not affiliated with Complainant; and moreover, displayed a picture of what purports to be a college building and students.
Complainant also proves, through its Exhibit E, which consists of an e-mail from Respondent, that Respondent has admitted using the disputed domain name solely for its traffic value, which Complainant contends is derived from the value of Complainant’s BAYLOR mark. “We have developed a technology that is analyzing traffic generated by these domains and buys select domains via domain auctions with a bidding process such as Deleting.co.uk...” The Panel finds such derivative use for traffic value to be neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Golden Bear Int’l, Inc. v Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002 (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant’s Cease and Desist letter to Respondent, dated October 29, 2007, (Exhibit D) proves that it has never authorized Respondent to use the BAYLOR mark and that Respondent was not commonly known by the <ihatebaylor.com> domain name prior to receiving notice of the dispute. This Panel therefore finds that Respondent lacks rights and legitimate interests in the <ihatebaylor.com> domain name. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”; see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Registration and Use in Bad Faith
As noted above, Complainant through its Exhibit E, portray, through Respondent’s own e-mail admission that the site is using the disputed domain name solely for its traffic value, derived from the value of Complainant’s BAYLOR mark. This parked website features confusingly similar student oriented links (as “college scholarship”) to third-party websites not affiliated with Complainant. The Panel infers that Respondent has profited from such use through the collection of referral fees for each redirected Internet user. The Panel finds that said use is likely to lead to confusion among Internet users as to Complainant’s sponsorship of, or affiliation with the resulting website. In these regards, the Panel was also influenced by Complainant’s Exhibit F which shows a college campus with students, under the <ihatebaylor.com> domain name. Such use has been found to be evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Am. Univ. v Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Dell Inc. v. Innervision Web Solutions, FA445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000) (finding bad faith where respondent was intentionally using <walmartcanadasucks.com> <walmartuksucks.com>, and <walmartpuertoricosucks.com> domain names to attract Internet users to his website); see for example, Dell Inc. v Innervision Web Solutions, FA 445601(Nat. Arb. Forum May 23, 2005) (“The registration and use of ‘sucks’ domain names, when operated for commercial gain, is evidence that the domain name was registered and used in bad faith.”).
Complainant proves that Respondent has offered the disputed domain name for sale, both by Exhibit F, which contains the notation “this domain may be for sale” in the upper right corner, and by Exhibit E email which requests $650.00 for the transfer of the name. Respondent requested compensation for “time” as well as money spent, which is, per se, a request for more than out-of pocket expenses. The Panel thus finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered for sale, for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale.).
Complainant shows that Respondent has engaged in a pattern of bad faith registration and use of domain names incorporating others’ well-known marks, through its citation of the following cases. See Harrah’s License Co., LLC v. sysadmin admin, FA 1107042 (Nat. Arb. Forum Jan. 3, 2008); see also Hoffman-LaRoche AG v. sysadmin admin, D2007-0785(WIPO Aug. 7, 2007); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. V. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug 17, 2000) (finding that the respondent violated Policy ¶4(b)(ii) by registering multiple domain names that infringe upon others famous and registered trademarks).
Complainant shows, in Exhibit A, in its Additional Submission, that upon receipt of the Complaint, Respondent changed the website to which the disputed domain name resolves. That is, Respondent updated on February 26, 2008. Complainant contends that the website to which the disputed domain name currently resolves (Complainant’s Exhibit B) displays crude, adult-oriented photographs and links. The Panel was influenced by both Exhibits A and B in Complainant’s Additional Submission, that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Wells Fargo & Co. Party Night., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶4(b)(iv)); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith.).
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 <ihatebaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: April 11, 2008
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