Baylor University v. Above.com Domain Privacy
Claim Number: FA1108001401924
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com>, registered with Above.Com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., 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 5, 2011, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 9, 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@bayloruniversityu.com, postmaster@searchbaylorhealth.com, and postmaster@baylorhostipal.com. Also on August 9, 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 Tyrus R. Atkinson, Jr., 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 <bayloruniversityu.com> domain name is confusingly similar to Complainant’s BAYLOR UNIVERSITY mark.
Respondent’s <searchbaylorhealth.com> and <baylorhostipal.com> domain names are confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names.
3. Respondent registered and used the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, began operation in 1845 and has provided educational services since that time through its eight colleges and schools. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 registered October 3, 1995) and BAYLOR marks (e.g., Reg. No. 1,465,910 registered November 17, 1987), which Complainant uses in connection with its educational offerings and medical-related services.
Respondent registered the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names no earlier than January 3, 2011. The <bayloruniversityu.com> domain name resolves to a website hosting a search engine and hyperlinks to competing education providers. The <searchbaylorhealth.com> and <baylorhostipal.com> domain names resolve to websites that host search engines and hyperlinks to Complainant’s competitors in the medical services and medical education industries.
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.
As Complainant has registered the BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 registered October 3, 1995) and BAYLOR marks (e.g., Reg. No. 1,465,910 registered November 17, 1987) with the USPTO, the Panel concludes that Complainant has established rights in the marks under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); 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 <bayloruniversityu.com> domain name is identical or confusingly similar to Complainant’s BAYLOR UNIVERSITY mark. Complainant asserts that the disputed domain name contains Complainant’s entire mark, absent the space, combined with the letter “u” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of a space, the addition of a letter, and the addition of a gTLD all fail to significantly distinguish the disputed domain name from Complainant’s mark, rendering Respondent’s <bayloruniversityu.com> domain name confusingly similar to Complainant’s BAYLOR UNIVERSITY mark pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant further claims that Respondent’s <searchbaylorhealth.com> and <baylorhostipal.com> domain names are confusingly similar to Complainant’s BAYLOR mark. The disputed domain names feature Complainant’s BAYLOR mark and add the generic term “search” and/or the descriptive terms “health” or “hostipal,” a misspelled version of “hospital.” Both disputed domain names also contain the gTLD “.com.” Similar to above, the Panel concludes that Respondent’s additions to the disputed domain names fail to remove the disputed domain names from the realm of confusing similarity. See Am. 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)); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel holds that Respondent’s <searchbaylorhealth.com> and <baylorhostipal.com> domain names are confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See 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); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not commonly known by the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names. The WHOIS information does not provide any evidence that Respondent is commonly known by the disputed domain names. While Complainant does not provide any allegations as to whether or not it authorized Respondent to use Complainant’s marks, Respondent has failed to contradict Complainant’s allegations and the evidence in the record. Consequently, the Panel concludes that there is enough evidence in the record to determine that Respondent is not commonly known by the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent’s <bayloruniversityu.com> domain name resolves to a parked website that features a search engine and hyperlinks that resolve to third-parties that compete with Complainant in the education field. Respondent’s <searchbaylorhealth.com> and <baylorhostipal.com> domain names resolve to similar websites that also contain search engines and hyperlinks to Complainant’s competitors, this time in the medical services and education fields. Complainant asserts that Respondent profits from these hyperlinks by receiving a fee each time an Internet user clicks on one of the hyperlinks. The Panel determines that Respondent’s use of the disputed domain names 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant argues that Respondent’s <bayloruniversityu.com> domain name is evidence of typosquatting because Respondent simply adds the letter “u” to Complainant’s mark. As the letter “u” is next to the letter “y” on the QWERTY keyboard, the Panel holds that Respondent has engaged in typosquatting, which is evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent has engaged in a pattern of bad faith registration and use. However, the named Respondent in this case is “Above.com Domain Privacy,” which is a privacy shield, and the cases provided by Complainant all involve Above.com Domain Privacy. Therefore, the Panel determines that there is not evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Respondent’s <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names all resolve to websites that contain a search engine and hyperlinks to Complainant’s competitors. The Panel finds that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by diverting potential customers to Complainant’s competitors. As this is evidence of bad faith under Policy ¶ 4(b)(iii), the Panel holds that Respondent is guilty of bad faith registration and use of the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
As noted above, Complainant asserts that Respondent commercially benefits from the aforementioned hyperlinks. Internet users interested in Complainant may become confused as to Complainant’s affiliation with the disputed domain names and access Respondent’s websites due to this confusion. Thus, Respondent commercially benefits by creating this confusion. The Panel finds that Respondent’s registration and use of the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
As the Panel previously determined that Respondent has engaged in typosquatting relating to the <bayloruniversityu.com> domain name, the Panel holds that Respondent’s typosquatting is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds 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.
Accordingly, it is Ordered that the <bayloruniversityu.com>, <searchbaylorhealth.com>, and <baylorhostipal.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 14, 2011
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