National Arbitration Forum

 

DECISION

 

Board of Regents, The University of Texas System v. Konstantinos Zournas

Claim Number: FA0807001218397

 

PARTIES

Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by Susan J. Hightower, Texas, USA.  Respondent is Konstantinos Zournas (“Respondent”), Greece.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universityoftexas.net>, registered with Moniker Online Services, Inc.

 

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.

 

Clive Elliott as Panelist.

 

PROCEDURAL HISTORY

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

 

On July 31, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <universityoftexas.net> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 August 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 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@universityoftexas.net by e-mail.

 

A timely Response was received and determined to be complete on August 22, 2008.

 

On 3 September 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant is a Texas state board established for the purpose of governing The University of Texas System, a system of highly regarded institutions of higher education.  Complainant operates universities and health institutions throughout the state of Texas.

 

Complainant prominently uses the mark UNIVERSITY OF TEXAS in connection with several of its institutions, as well as related marks such as THE UNIVERSITY OF TEXAS AT AUSTIN and UNIVERSITY OF TEXAS MEDICAL BRANCH.

The flagship institution within The University of Texas System is The University of Texas at Austin, which was founded in 1883, and is renowned for providing a variety of educational services at the college and graduate levels. 

 

Complainant participates in many collegiate sports, including football, baseball, basketball, cross-country, golf, rowing, soccer and the like, and it also offers a number of online courses and degrees.

 

Complainant asserts that it has long used the UNIVERSITY OF TEXAS trademark in connection with its wide range of goods and services and in particular owns a number of trademark registrations, including the following US registrations:

·                    UNIVERSITY OF TEXAS: U.S. Reg. No. 1340787

·                    THE UNIVERSITY OF TEXAS: U.S. Reg. No. 1351805

 

Complainant contends that the domain name at issue in this Complaint is identical or confusingly similar to Complainant’s UNIVERSITY OF TEXAS mark.

 

Complainant further contends that Respondent has not used, nor made any demonstrable preparations to use, the domain name at issue or a name corresponding to that domain name in connection with a bona fide offering of goods or services. It states that its attorneys sent Respondent a cease-and-desist letter on June 19, 2008, but Respondent has never responded.  Instead, Respondent has continued using the domain name in connection with a search directory page displaying links with titles likely to be associated with Complainant or its products and services.

 

Complainant contends that Respondent presumably is paid a fee or commission when Internet users visit the website < universityoftexas.net>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites. 

 

Finally, Complainant submits that Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names. 

 

B. Respondent

 

Respondent advises that he is a Greece (sic) based web developer which develops themed search portals among other Internet development projects.  Respondent asserts that he is a website designer and owns many domains, and states that he is not a cybersquatter.  Respondent further asserts that he has registered a portfolio of domains incorporating common words, generic and short terms, useful phrases, first and last names and geographical terms.

 

Respondent indicates that he did not acquire the disputed domain name in bad faith while targeting Complainant.  He asserts that he owns other “university” and “college” domain names and that he was not aware of Complainant’s trademark until notice of this Complaint.

 

Respondent advises that he would have transferred the domain if he had received the cease-and-desist e-mail from Complainant but that he failed to receive it because Complainant used a cryptic subject for the e-mail and it was automatically categorized as spam by Respondent’s e-mail server.

 

Respondent denies that he has registered the domain name in bad faith and consents to the transfer of the domain name to Complainant.

 

Finally, Respondent submits further that Complainant has only presented two previous decisions involving Respondent where Respondent lost and that Complainant failed to provide the three cases Respondent won.

 

 

FINDINGS

Respondent has effectively consented to judgment in favor of Complainant, but at the same time denied that the Complaint has merit. For that reason, the Panel is of the view that it should deal with the case on its merits.

 

Having thus considered the Complaint, the Panel finds that:

 

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

 

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 or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant asserts rights in the UNIVERSITY OF TEXAS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,340,787 issued June 11, 1985).  The Panel finds that Complainant has established rights in the UNIVERSITY OF TEXAS mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant contends that Respondent’s <universityoftexas.net> domain name is identical to Complainant’s UNIVERSITY OF TEXAS mark.  The Panel finds that the addition of the generic top-level domain “.net” and the omission of spaces separating the terms of Complainant’s mark is not sufficient to differentiate Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK).

 

On this basis the Panel finds that the ground is established.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

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 is using the <universityoftexas.net> domain name to operate a website containing links to various competing higher education providers and links to websites selling University of Texas apparel.  The Panel infers from Respondent’s use that Respondent is collecting click-through fees for each redirected Internet user.  As a result the Panel finds that Respondent is not using the <universityoftexas.net> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

Moreover, Complainant contends that Respondent is not commonly known by the <universityoftexas.net> domain name or licensed to register names featuring the UNIVERSITY OF TEXAS mark.  The Panel finds that Respondent has failed to sufficiently establish that it is commonly known by the <universityoftexas.net> domain name and as a result, has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

The Panel finds that this ground is established.

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant contends that Respondent is using the <universityoftexas.net> domain name to operate a website that provides links to various websites offering competing higher education services as well as websites selling retail products featuring Complainant’s marks.  The Panel readily infers that Respondent is profiting from such use through the collection of referral fees for each redirected Internet user.  The Panel finds that such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Moreover, Complainant contends that Respondent’s manner of use of the <universityoftexas.net> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website.  The Panel finds that such use is further 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

This ground is thus made out.

 

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 <universityoftexas.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Clive Elliott, Panelist
Dated: 17 September 2008

 

 

 

 

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