national arbitration forum

 

DECISION

 

Baylor University v. Sysadmin Admin c/o Balata.com Ltd

Claim Number: FA0901001240597

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is Sysadmin Admin c/o Balata.com Ltd (“Respondent”) Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <baylorlambdas.com>, registered with Black Ice Domains, Inc.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 2, 2009.

 

On January 4, 2009, Black Ice Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <baylorlambdas.com> domain name is registered with Black Ice Domains, Inc and that Respondent is the current registrant of the name.  Black Ice Domains, Inc has verified that Respondent is bound by the Black Ice Domains, 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 January 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 2009 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@baylorlambdas.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a Baptist university located in Texas, USA, that was founded in 1845. 

 

Complainant registered the BAYLOR service mark (Reg. No. 1,465,910) with the United States Patent and Trademark Office (“USPTO”) on November 17, 1987. 

 

In 1997, the national Asian American fraternity Lambda Phi Epsilon established a chapter on the Baylor campus. 

 

From that time to the present, that Lambda Phi Epsilon chapter has taken part in Complainant’s campus-wide fellowship and leadership activities.

 

Respondent has no license or agreement with Complainant authorizing Respondent to use the BAYLOR mark.

 

Respondent registered the <baylorlambdas.com> domain name on April 26, 2008.   

 

The <baylorlambdas.com> domain name resolves to a website that lists links to websites related and unrelated to Complainant. 

 

Some of the related links belong to third parties who compete directly with the business of Complainant.

 

On April 11, 2008 the National Arbitration Forum transferred the <ihatebaylor.com> domain name from Respondent to Complainant.  Baylor Univ. v. Sysadmin Admin c/o Balata.com Ltd, FA 1153718 (Nat. Arb. Forum April 11, 2008). 

In addition, Respondent has been the respondent in three other cases through the National Arbitration Forum in which the disputed domain names were transferred from Respondent to the complainants in those cases.  See Harrah's License Co., LLC v. sysadmin admin c/o balata.com ltd, FA 1107042 (Nat. Arb. Forum Nov. 15, 2007); see also Ali Wing, Inc. v. sysadmin admin c/o balata.com ltd, FA 1169833 (Nat. Arb. Forum April 9, 2008); see also Am. Auto. Ass’n, Inc. v. Sysadmin admin c/o Balata.com ltd, FA 1213525 (Nat. Arb. Forum Aug. 18, 2008).

 

Respondent’s <baylorlambdas.com> domain name is confusingly similar to Complainant’s BAYLOR mark.

 

Respondent does not have any rights to or legitimate interests in the domain name <baylorlambdas.com>.

 

Respondent registered and uses the <baylorlambdas.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant’s registration of the BAYLOR service mark with the USPTO establishes its rights in the mark for purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

The <baylorlambdas.com> domain name consists of Complainant’s BAYLOR mark, the generic word “lambdas,” and the generic top-level domain (gTLD) “.com.”  The inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

The generic word “lambdas” is a term applied to members of Complainant’s fraternity Lambda Phi Epsilon.  Given the association of the fraternity with Complainant, the inclusion of “lambdas” in the disputed domain name increases the confusing similarity of the <baylorlambdas.com> domain name with Complainant’s BAYLOR mark.  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001):

 

[T]he salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.

 

See also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):

 

The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Therefore, the Panel finds that the <baylorlambdas.com> domain name is confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name.  Once Complainant has done so, the burden shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name, whether pursuant to the guidelines in Policy ¶ 4(c) or otherwise.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.

 

Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the <baylorlambdas.com> domain name pursuant to Policy ¶ 4(a)(ii). Because no response was submitted in this case, we may presume that Respondent has no rights to or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii). 

 

However, we will nonetheless examine the record in consideration of the factors listed in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has such rights or interests. 

 

We begin by noting that, under Policy ¶ 4(c)(ii), if Respondent demonstrates that it is commonly known by the disputed domain name, it will have demonstrated rights to or legitimate interests in the domain.  Because we find no evidence in the record suggesting that Respondent is commonly known by the <baylorlambdas.com> domain name, and because Complainant asserts, and Respondent does not deny, that Respondent has no license or agreement with Complainant authorizing Respondent to use the BAYLOR mark, while the pertinent WHOIS information identifies Respondent as “Sysadmin Admin c/o Balata.com Ltd.”, we conclude that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”

 

We also observe that Respondent may prove that it has rights to or legitimate interests in the disputed domain name by showing that the domain is being used 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).  In this connection, there is no dispute as to Complainant’s allegation to the effect that the contested domain name is being used to direct Internet users to a parking website with a list of links to third-party websites. In the circumstances, we may presume that Respondent obtains fee income from the placement of these links.  Using a domain name that is confusingly similar to Complainant’s mark to direct Internet users to a list of commercial links is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain.  Therefore, we conclude that Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

See also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which was blank but for links to other websites, was not a legitimate use of contested domain names).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has made no effort to refute Complainant’s assertions that, on April 11, 2008, the National Arbitration Forum transferred the <ihatebaylor.com> domain name from Respondent to Complainant (see Baylor Univ. v. Sysadmin Admin c/o Balata.com Ltd, FA 1153718 (Nat. Arb. Forum April 11, 2008)), or that Respondent has been a respondent in three other cases before the National Arbitration Forum in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Harrah's License Co., LLC v. sysadmin admin c/o balata.com ltd, FA 1107042 (Nat. Arb. Forum Nov. 15, 2007); see also Ali Wing, Inc. v. sysadmin admin c/o balata.com ltd, FA 1169833 (Nat. Arb. Forum April 9, 2008); further see Am. Auto. Ass’n, Inc. v. Sysadmin admin c/o Balata.com ltd, FA 1213525 (Nat. Arb. Forum Aug. 18, 2008).  From this record we conclude that Respondent has engaged in a pattern of bad faith registration and use of domain names within the meaning of Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) where a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered a disputed domain name, <aria.com>, [in bad faith] to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

We also take into consideration that Respondent is using the <baylorlambdas.com> domain name to resolve to a website that contains links to third-party websites, some of which compete directly with the business of Complainant.  This is further evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent had diverted business from a complainant to a competitor’s website within the contemplation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain name to promote competing auction sites).

 

Finally under this heading, we take notice of the undisputed allegation of the Complaint that the website that resolves from the <baylorlambdas.com> domain name displays advertisements and links to sites that are both related and unrelated to Complainant’s BAYLOR mark.  We presume from this that Respondent receives pay-per-click fees for Internet users’ visits to these links and related advertisements.  Because the disputed domain name is confusingly similar to Complainant’s mark, Internet users are likely to become confused as to Complainant’s possible affiliation with or sponsorship of the disputed domain name and resolving website.  Respondent thus seeks to profit from this confusion by hosting pay-per-click advertising on the resolving website.  This is evidence of bad faith registration and use of the disputed domain 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 Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <baylorlambdas.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

 

Terry F. Peppard, Panelist

Dated:  February 17, 2009

 

 

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