Baylor University v. Mike Pocsik
Claim Number: FA1208001456685
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Mike Pocsik (“Respondent”), Texas, USA, acting pro se.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylornation.com>, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 7, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <baylornation.com> 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 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2012 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@baylornation.com. Also on August 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on August 28, 2012.
On August 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
On August 31, 2012, an Additional Submission was timely submitted by Complainant and was considered by the Panel. On September 5, 2012, an Additional Submission was submitted by Respondent and was considered by the Panel.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Baylor University, is the oldest continually operating institution of higher learning in Texas, having been originally chartered in 1845. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the BAYLOR mark (e.g., Reg. No. 1,465,910 registered November 17, 1987). Complainant operates a website that it uses in connection with its education services and athletic programs at <baylor.edu/nation>.
Respondent’s <baylornation.com> domain name contains the BAYLOR and BAYLOR NATION marks, while adding the generic top-level domain (“gTLD”) “.com.” Respondent is not commonly known by the disputed domain name at issue. Respondent’s domain name resolves to a monetized parking page that contains third-party links to various websites. Respondent registered and is using the disputed domain name in bad faith because Respondent had prior notice of Complainant’s mark through a prior UDRP proceeding. Respondent’s “non-use of the domain name and use of the domain name for a monetized parking page are evidence of bad faith use.”
B. Respondent
Respondent graduated from Baylor University in 1997 and has family members that have graduated from Baylor. The disputed domain name does not resolve to an active website, therefore Complainant’s mark is not being infringed upon. Respondent does not believe that Complainant has the right to register or own every domain name that includes the word “BAYLOR.” Respondent registered the disputed domain name as a venture for its business in building and marketing a college sports themed website.
It is not uncommon for sports related websites to have the word “nation” attached, and the domain name <baylornation.com> was registered to fit a possible future use for a sports related website. At the time Respondent registered the disputed domain name, Respondent had never heard anyone affiliated with Complainant use the words or phrase, “Baylor Nation.” Respondent did not monetize the website, but changed Registrars and selected the default option for domain names that do not resolve to an active website. Respondent did not register the disputed domain name in bad faith because Respondent registered the disputed domain name years before Complainant or any affiliates used the term “Baylor Nation.”
C. Complainant’s Additional Submission
It is undisputed that the domain name at issue is identical or confusingly similar to a mark in which Baylor has rights. In his response, Respondent confirmed that he was aware of the University’s rights in the BAYLOR marks at the time he registered the domain name, and that he registered the domain name with Baylor and its athletics program in mind. His argument that “Baylor Nation” was not used by the University until after the domain name was registered is a red herring, as Baylor had undisputed rights in BAYLOR at the time of his registration, and Respondent admits the generic or merely descriptive term “nation” is recognized as a word used in connection with sports-related websites.
Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent’s central argument on this element appears to be that Respondent explored use of the domain name in connection with a fan site at one time, and “hopes” to use the domain name in the future. Respondent’s point that there is a third-party fan site that is not owned by Baylor is wholly irrelevant as it has nothing to do with Respondent and certainly does not justify Respondent’s own unrelated actions. Respondent has submitted insufficient evidence to prevail on this element. Moreover, Respondent’s actions and statements undermine his claim of rights and legitimate interests in the domain name at issue.
D. Respondent’s Additional Submission
Although the disputed domain name does, in fact, contain the word BAYLOR, it is not “identical” to the Complainant’s mark. The Respondent does not believe the disputed domain name is “confusingly similar” to a mark in which Baylor has rights. The fact that the Respondent registered the domain name baylorgear.com at roughly the same time he registered he disputed domain, is further evidence that he was working on a business plan to start a sports themed website, and was not registering anything in bad faith. The disputed domain was not registered in bad faith. The Respondent believes the Complainant, until recently, had zero interest in the disputed domain name.
(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.
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."
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 has established rights in the BAYLOR mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See 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 Panel notes that Complainant does not argue whether the disputed domain name is confusingly similar or identical to the BAYLOR mark, but does state that the <baylornation.com> domain name contains the BAYLOR and Baylor Nation marks, while adding the gTLD “.com.” The Panel notes that the disputed domain name contains the entire BAYLOR mark in addition to the descriptive term “nation.”[1] The Panel finds that the disputed domain name is confusingly similar to the BAYLOR mark under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Panel finds that Respondent is identified within the WHOIS information as “Mike Pocsik,” that “Mike Pocsik” is not similar to the <baylornation.com> domain name and 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).
The Panel finds that the disputed domain name has been used as a monetized parking page that, according to Complainant’s evidence, displays various third-party links to unrelated business entities. The Panel therefore finds that Respondent’s use of the disputed domain name 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. 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).
As discussed above, the Panel notes that Respondent’s disputed domain name resolves to a parking page through the Registrar that features various third-party links. The Panel finds that Respondent is using the disputed domain name in order to create confusion as to Complainant’s affiliation with the resolving website for commercial gain, and that bad faith registration and use exists under Policy ¶ 4(b)(iv). See 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 further finds that Respondent had actual knowledge of Complainant’s rights in the BAYLOR mark, and that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylornation.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: September 7, 2012
[1] Complainant states that it uses its BAYLOR mark in conjunction with the term “nation” as a website and communication tool for its student body.
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