Baylor University v. Moniker Privacy Services
Claim Number: FA1012001361618
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is Moniker Privacy Services (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2010; the National Arbitration Forum received payment on December 6, 2010.
On December 6, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2010 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@universityofbaylor.com, postmaster@baylorhealthsystems.com, postmaster@baylordowntown.com, postmaster@baylorhosptial.com. Also on December 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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" 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com> domain names are confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com> domain names.
3. Respondent registered and used the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, was chartered by the Republic of Texas in 1845 and is the oldest operating institution of higher learning in the State of Texas. Complainant offers a wide variety of curriculum at its University including subjects such as the arts, sciences, business, law, nursing education, engineering, computer science, music, social work, and theology. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the BAYLOR (e.g., Reg. No. 1,465,910 issued November 17, 1987); BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 issued October 3, 1995); BAYLOR UNIVERSITY MEDICAL CENTER (e.g., Reg. No. 1,670,564 issued December 31, 1991); and BAYLOR HEALTH CARE SYSTEM marks (e.g., Reg. No. 1,515,737 issued Dec. 6, 1988).
Respondent registered the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylordowntown.com>, and <baylorhosptial.com> domain names from February 6, 2005 to September 4, 2010. Respondent’s disputed domain names resolve to websites that feature third-party hyperlinks to businesses and websites that are unrelated to Complainant’s educational institution, as well as links to businesses that compete with Complainant.
Complainant has presented evidence to show that Respondent has been the Respondent in several previous UDRP proceedings in which Respondent has been ordered to transfer the disputed domain names to the respective complainant. See FG Wilson (Eng’g) Ltd. v. Kalopungi / AA7 GROUP LTD, FA 1336834 (Nat. Arb. Forum Sept. 7, 2010); see also Academy, Ltd. d/b/a Academy Sports & Outdoors v. Kalopungi, FA 1347406 (Nat. Arb. Forum October 29, 2010); U.S. Smokeless Tobacco Mfg. Co. v. Kalopungi, FA 1350232 (Nat. Arb. Forum Nov. 10, 2010).
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 the 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:
(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.
Preliminary Issue: Multiple Respondents
The Complainant has made the following allegations which are supported by the record:
The domain names are registered in the name of the purported privacy service of the registrar, Moniker Privacy Services (“Respondent” or “Moniker”). Complainant asserts that Moniker, and not its privacy service customers, is the proper Respondent in this proceeding.
The registrar registers domain names on behalf of its customers and conceals their true identities through its “privacy service.” Indeed, although current ICANN regulations require that registrants’ contact information be made public on the Whois database, Respondent evades these regulations and lists its own information as the registrants’. Under virtually identical facts involving a similar privacy service, a prior UDRP panel found:
[S]ince the kind of service offered by the Registrar and the Respondent [privacy service], which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavors to support the UDRP system and the injured trademark owners. On the contrary, besides the attempt of Cyberflying, the Respondent covered the true owner of the domain name, engaged in Cybersquatting, disclosing false contact details and thus obstructing the UDRP system.
Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, Case No. D2004-0311 (WIPO July 1, 2004) (finding Domains by Proxy was the proper respondent and had acted in bad faith, and transferring domain name <pornsche.com>). To find that each privacy service customer is the “true” respondent would require the grossly inequitable result that Complainant re-file this complaint against each individual, and would allow Respondent to side-step all responsibility for its deceptive and unfair conduct.
Moniker is therefore the proper Respondent in this case because: (1) as a corporate entity, it listed itself as the registrant of the domain names on the Whois record; (2) it concealed its customers by refusing to give up their identities or otherwise investigate when Complainant notified it of potential trademark violations; and (3) it forced Complainant to expend considerable unnecessary expense to enforce its rights.
For the reasons set forth by the Complainant the Panel finds that Moniker Privacy Services is the correct respondent. Cf. ICANN [Draft] Advisory re: RAA Subsection 3.7.7.3 (2010).
Complainant has presented the Panel with evidence that it owns several trademark registrations with the USPTO that coincide with its university name such as, BAYLOR (e.g., Reg. No. 1,465,910 issued November 17, 1987); BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 issued October 3, 1995); BAYLOR UNIVERSITY MEDICAL CENTER (e.g., Reg. No. 1,670,564 issued December 31, 1991); and BAYLOR HEALTH CARE SYSTEM (e.g., Reg. No. 1,515,737 issued December 6, 1988). The Panel finds that Complainant has presented sufficient evidence to establish rights in its BAYLOR marks through such registrations under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <universityofbaylor.com>, <baylorhosptial.com>, <baylorhealthsystems.com>, and <baylordowntown.com> domain names are confusingly similar to Complainant’s BAYLOR mark. The Panel notes that each domain name contains Complainant’s BAYLOR mark entirely while adding generic or descriptive terms such as “university of,” “health systems,” “downtown” and the misspelled version of “hospital”—“hosptial.” Further, each domain name also features the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions to Complainant’s BAYLOR mark are not sufficient to render the disputed domain names distinguishable from Complainant’s mark under Policy ¶ 4(a)(i), and that therefore the domain names are confusingly similar to Complainant’s mark. 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 American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); Microsoft v. Microsof.com a/k/a Tarek Ahmed, D2000-0548 (WIPO July 21, 2000) (the misspelled version of Microsoft—Microsof—held confusing similar to the trademark); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <universityofbaylor.com>, <baylorhosptial.com>, <baylorhealthsystems.com>, and <baylordowntown.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <universityofbaylor.com>, <baylorhosptial.com>, <baylorhealthsystems.com>, and <baylordowntown.com> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylorhosptial.com> and <baylordowntown.com> domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information does not indicate that Respondent is commonly known by the domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names. The Panel finds that without evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to 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 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).
Complainant contends that Respondent is using the disputed domain names to present Internet users with various third-party links to competing and unrelated websites under headings that are linked to Complainant’s educational institution. Complainant argues that Respondent receives click-through fees from the websites and businesses that are linked-to on Respondent’s websites, and that such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. The Panel agrees and finds that Respondent’s use of the disputed domain names as commercial link directory websites that send Internet users to websites that are both unrelated to and in competition with Complainant is not 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 Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent is using the disputed domain name to divert Internet users who are seeking Complainant’s educational institution to Complainant’s competitors. The Panel infers that such a diversionary scheme results in a loss of business and revenue for Complainant and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the disputed domain names to display various third-party hyperlinks that redirect Internet users to websites both unrelated to and in competition with Complainant’s educational institution. Further, Complainant alleges that Respondent receives commercial compensation in the form of referral or click-through fees from the businesses and websites that have hyperlinks on Respondent’s websites. Complainant argues that such use is evidence that Respondent registered and is using the disputed domain names in bad faith. The Panel agrees and finds that Respondent’s use of the disputed domain names to display third-party links to competing and unrelated websites and businesses, presumably for financial gain, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <universityofbaylor.com>, <baylorhealthsystems.com>, <baylorhosptial.com> and <baylordowntown.com> domain names.
Accordingly, it is Ordered that the <universityofbaylor.com>, <baylorhosptial.com> <baylorhealthsystems.com>, and <baylordowntown.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce Meyerson, Panelist
Dated: January 17, 2011
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