Baylor University v. Janice Liburd
Claim Number: FA1108001401911
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Janice Liburd (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorhelath.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2011; the National Arbitration Forum received payment on August 5, 2011.
On August 4, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <baylorhelath.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2011 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@baylorhelath.com. Also on August 8, 2011, 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 September 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <baylorhelath.com> domain name is confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <baylorhelath.com> domain name.
3. Respondent registered and used the <baylorhelath.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, is the oldest operating higher education institute in the state of Texas, having been originally chartered in 1845. Complainant’s educational services include undergraduate and graduate programs of study in the arts, sciences, business, law, nursing, education, engineering, computer science, music, social work, and theology. Complainant submits the following trademark registrations that it currently owns with the United States Patent and Trademark Office ("USPTO"):
BAYLOR (e.g., Reg. No. 1,465,910 registered November 17, 1987);
BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 registered October 3, 1995);
BAYLOR UNIVERSITY MEDICAL CENTER (Reg. No. 1,670,564 registered December 31, 1991);
BAYLOR HEALTH CARE SYSTEM (Reg. No. 1,515,737 registered December 6, 1988; and
BAYLOR COLLEGE OF MEDICINE (Reg. No. 3,119,420 registered July 25, 2006).
Respondent, Janice Liburd, registered the <baylorhelath.com> domain name on January 10, 2011. Respondent’s disputed domain name resolves to a website which displays third-party links to businesses and websites unrelated to Complainant.
Complainant presents evidence to show that Respondent has been the named respondent in numerous UDRP proceedings in which she was ordered to transfer the domain names to the respective complainant’s. See ER Marks, Inc. v. Liburd, FA 1341427 (Nat. Arb. Forum Sept. 29, 2010); see also Brainetics, LLC v. Liburd, FA 1360210 (Nat. Arb. Forum Jan. 10, 2011); see also Prudential Ins. Co. of Am. v. Liburd, FA 1388619 (Nat. Arb. Forum June 23, 2011).
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.
The Panel finds that Complainant’s registrations with the USPTO establish its rights in the BAYLOR marks under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).
Complainant argues that the <baylorhelath.com> domain name is confusingly similar to its BAYLOR mark specifically. Complainant notes that the domain name contains its entire mark with the addition of a misspelled version of the descriptive term “health,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions to Complainant’s mark, even misspelled terms, do not render the domain name distinct from Complainant’s mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds Policy ¶ 4(a)(i) to be satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the <baylorhelath.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to establish a prima facie case in support of its allegations before the burden is properly shifted to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has presented the Panel with a prima facie case to support its allegations, and the burden of proof has successfully been transferred to Respondent. Respondent has chosen not to submit a Response to these proceedings. Therefore, the Panel may accept Complainant’s arguments as true, unless clearly contradicted by the evidence on record. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will evaluate the evidence on record in making its determination under Policy ¶ 4(a)(ii).
The WHOIS information for the disputed domain name identifies “Janice Liburd” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <baylorhelath.com> domain name resolves to a website containing third-party links under such headings as “health care,” “online payments,” “accept credit card,” and “life insurance.” Complainant contends that the links resolve to websites not affiliated with, or related to, Complainant. The Panel presumes that Respondent receives commercial compensation from such links in the form of click-through fees. Without the benefit of a Response, the Panel finds that Respondent is not using the disputed domain name for 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. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Constellation Wines U.S., Inc. v. Tex. 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).
The Panel finds Policy ¶ 4(a)(ii) to be satisfied.
Complainant presents evidence to show that Respondent has been the named respondent in numerous UDRP proceedings in which it was ordered to transfer the domain names. See ER Marks, Inc. v. Liburd, FA 1341427 (Nat. Arb. Forum Sept. 29, 2010); see also Brainetics, LLC v. Liburd, FA 1360210 (Nat. Arb. Forum Jan. 10, 2011); see also Prudential Ins. Co. of Am. v. Liburd, FA 1388619 (Nat. Arb. Forum June 23, 2011). Complainant contends that such adverse prior UDRP proceedings are evidence in this case that Respondent registered and is using the domain name in bad faith. The Panel finds that Respondent registered and is using the <baylorhelath.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See 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 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) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant further alleges that Respondent receives commercial benefit from its use of the disputed domain name. Complainant argues that the value to Respondent revolves around its usage of Complainant’s BAYLOR mark in the domain name which creates Internet user confusion. Complainant further notes that its official website is <baylorhealth.com>, and that Respondent is hoping to profit from its use of the misspelled term “health” by increasing the number of Internet users who accidently arrive at its website. The Panel finds that Respondent registered and is using the domain name in bad faith pursuant to 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) to be satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorhelath.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 14, 2011
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