Baylor University v. Through The Glass Media Ltd
Claim Number: FA1108001401926
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is Through The Glass Media Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylordallas.org>, registered with GoDaddy.com, 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 August 4, 2011; the National Arbitration Forum received payment on August 5, 2011.
On August 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <baylordallas.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@baylordallas.org. Also on August 5, 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 August 29, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <baylordallas.org> domain name is confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <baylordallas.org> domain name.
3. Respondent registered and used the <baylordallas.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, is a higher education institution located in Texas. Complainant has eight colleges and schools at both the graduate and undergraduate levels, including arts, sciences, business, law, nursing, education, engineering, computer science, music, social work, and theology. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BAYLOR mark:
Reg. No. 1,465,910 registered November 17, 1987;
Reg. No. 1,468,426 registered December 8, 1987;
Reg. No. 1,858,559 registered October 18, 1994; &
Reg. No. 1,936,714 registered November 21, 1995.
Respondent, Through The Glass Media Ltd, registered the <baylordallas.org> domain name on October 14, 2010. The disputed domain name resolves to a webpage filled with pay-per-click links to third party websites with titles like “Baylor University Waco Texas” and “Affordable Baylor Hotel” and news articles resulting from RSS feeds automatically culled from other sites.
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.
Complainant owns multiple trademark registrations with the USPTO for the BAYLOR mark:
Reg. No. 1,465,910 registered November 17, 1987;
Reg. No. 1,468,426 registered December 8, 1987;
Reg. No. 1,858,559 registered October 18, 1994; &
Reg. No. 1,936,714 registered November 21, 1995.
The Panel finds that registering a mark with the USPTO proves that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark). The Panel finds that USPTO trademark registration suffices to prove rights, even when Respondent lives or operates in a different country. See 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 alleges that Respondent’s <baylordallas.org> domain name is confusingly similar to Complainant’s BAYLOR mark because the disputed domain name combines Complainant’s mark with the geographic term “dallas” and the generic top-level domain (“gTLD”) “.org.” The Panel concludes that the presence of a geographic term does not distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). According to Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), which held a gTLD irrelevant for Policy purposes, the Panel concludes that the attached gTLD “.org” here has no effect on preventing confusing similarity. Thus, the Panel finds that Respondent’s <baylordallas.org> domain name is confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶ 4(a)(i).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. In order to shift the burden to prove rights and legitimate interests to Respondent, Policy 4(a)(ii) mandates that Complainant must first make a prima facie against Respondent. As Complainant has made valid arguments addressing the Policy requirements under Policy ¶ 4(a)(ii), it has established a prima facie case against Respondent. Respondent, however, has not satisfied its obligation to prove rights and interests because it has failed to respond to the Complaint. Thus, the Panel infers that Respondent does not contest Complainant’s allegations and does not possess rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will still analyze the record against the Policy ¶ 4(c) factors, however, to determine if Respondent has rights and legitimate interests in the disputed domain name.
The Panel finds that the WHOIS information for the disputed domain name identifies the registrant as “Through the Glass Media Ltd.” Moreover, there is no evidence that Complainant has licensed or otherwise authorized Respondent to use Complainant’s trademark. Because Respondent has no apparent connection with the disputed domain name, the Panel concludes that Respondent is not commonly known by the <baylordallas.org> domain name within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent uses the website resolving from the <baylordallas.org> domain name to display news articles from RSS feeds from other websites and listings of pay-per-click links to third party websites both competing with Complainant and unrelated to Complainant. Examples of the titles of some of the links include “Texas A & M University,” “Basketball game,” and “Baylor University Waco Texas.” In Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003), and Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), past panels concluded that hosting pay-per-click links at a confusingly similar domain name, regardless of whether the links were competing or not, was not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Consistent with those prior cases, the Panel here finds that Respondent’s use of the <baylordallas.org> does not meet the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s resolving website at the <baylordallas.org> domain name is filled with pay-per-click links. Based on Complainant’s description and its provided screenshot, some of these links compete with Complainant by either referring to Complainant or advertising things, such as sports or hospitals, in fields where Complainant operates. The Panel holds that competing with Complainant in this manner by advertising similar services or topics in the form of pay-per-click links disrupts Complainant’s activities and shows bad faith registration and use according to Policy ¶ 4(b)(iii). 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).
Complainant alleges that Respondent is paid a fee or commission when Internet users visit the website at the <baylordallas.org> domain name and click on the advertised links. Based on this potential for profit, Complainant argues that Respondent uses Complainant’s mark in the disputed domain name to intentionally attract and mislead Internet users regarding any affiliation between Complainant and the resolving website. The Panel finds that this represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylordallas.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 9, 2011
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