Baylor University v. ICS INC.
Claim Number: FA1208001458525
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorheath.com>, registered with TUCOWS, INC.
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 16, 2012; the National Arbitration Forum received payment on August 16, 2012.
On August 16, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <baylorheath.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@baylorheath.com. Also on August 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2012, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates Baylor University, which was chartered in 1845 in Texas and is the largest Baptist university in the world. Baylor provides higher education in the form of undergraduate and graduate degrees in arts, sciences, business, law, nursing, education, engineering, and other fields. Complainant owns the <baylor.edu> domain name, which gives information on its history and educational offerings. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BAYLOR mark (Reg. No. 1,465,910 registered November 17, 1987), its BAYLOR UNIVERSITY mark (Reg. No. 1,923,603 registered October 3, 1995), and its BAYLOR HEALTH CARE SYSTEM mark (Reg. No. 1,515,737 registered December 6, 1988). See Exhibit B. Complainant’s marks are used in connection with medical services and education. Complainant’s licensees, Baylor Health Care System and Baylor College of Medicine, use the BAYLOR marks in their operation of hospitals and medical centers. Complainant’s medical school ranks among the top medical schools in the United States and has affiliation with seven teaching hospitals.
Respondent registered the <baylorheath.com> domain name, which is confusingly similar to Complainant’s BAYLOR marks. Respondent is not using the <baylorheath.com> domain name in a bona fide offering of goods or services or a noncommercial or fair use. Respondent uses the disputed domain name to park a page with hyperlinks that relate to Complainant’s services and divert Internet users to third-party websites. See Exhibit F. Respondent lists the <baylorheath.com> domain name for sale for $7,029, which shows that Respondent lacks rights and legitimate interests in the disputed domain name and demonstrates bad faith registration and use. Respondent is not commonly known by the <baylorheath.com> domain name. Respondent is paid a commission for each user that clicks on the links available at the resolving website, and Respondent attracts Internet users by creating confusion between the affiliation between Complainant’s BAYLOR marks and Respondent’s website. Respondent has demonstrated a pattern of bad faith registration and use of other entities’ registered trademark in domain names. See Exhibit H. The disputed domain name is a typosquatted variation of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its BAYLOR mark.
2. Respondent’s <baylorheath.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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.
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.”).
Complainant asserts that its trademark registrations with the USPTO for the BAYLOR mark (Reg. No. 1,465,910 registered November 17, 1987), its BAYLOR UNIVERSITY mark (Reg. No. 1,923,603 registered October 3, 1995), and its BAYLOR HEALTH CARE SYSTEM mark (Reg. No. 1,515,737 registered December 6, 1988) demonstrate its rights in the marks. In Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), the Panel held that complainant’s rights in its trademark were established via registration with the USPTO. The Panel finds that Complainant’s rights to its BAYLOR marks are secured under Policy ¶ 4(a)(i) by its trademark registrations with the USPTO. The Panel also concludes that Policy ¶ 4(a)(i) does not require Complainant to register its marks in the country where Respondent resides and operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that the <baylorheath.com> domain name is confusingly similar to its BAYLOR mark. Complainant alleges that the addition of the generic term “heath,” which Complainant claims is a typographical variant of the word “health,” and the addition of the generic top-level domain (“gTLD”) “.com” do not change the domain name’s confusing similarity to the BAYLOR mark. The Panel concludes that, because the disputed domain name includes Complainant’s entire BAYLOR mark, with only a misspelled generic term and a gTLD, the <baylorheath.com> domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); 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 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) (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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <baylorheath.com> domain name. The Panel observes that the WHOIS information identifies the registrant as “ICS, Inc.” and determines that the registrant name does not indicate that Respondent is commonly known by the disputed domain name and therefore does not have rights or legitimate interests in the domain name pursuant to 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).
Complainant alleges that Respondent’s lack of rights and legitimate interests is evidenced by Respondent’s use of the <baylorheath.com> domain name to divert Internet users to competing third parties via hyperlinks displayed at the resolving webpage. The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), found that, by capitalizing on the complainant’s marks by attracting Internet users to the disputed domain name where the respondent sold competing products, the respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel finds that Respondent’s use of the <baylorheath.com> domain name to feature hyperlinks to competing entities does not constitute 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).
Complainant contends that Respondent lists the <baylorheath.com> domain name for sale for the price of $7,029. See Exhibit G. Complainant argues that, by attempting to sell the disputed domain name, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel finds that offering the disputed domain name for sale is evidence that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
Complainant alleges that the <baylorheath.com> domain name is a typosquatted variation of its BAYLOR mark. The Panel notes that the disputed domain name contains the BAYLOR mark and a misspelled version of the word “health,” which the Panel determines does not constitute typosquatting because Complainant does not have rights in a mark consisting only of the terms “BAYLOR HEALTH.”
Complainant argues that Respondent’s bad faith registration and use is demonstrated by Respondent’s attempt to sell the <baylorheath.com> domain name for $7,029. The panel in World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), held that the respondent’s bad faith was demonstrated by its offer to sell the domain name for consideration in excess of registration costs. The Panel finds that an attempt to sell the <baylorheath.com> domain name for $7,029 is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant asserts that Respondent has engaged in a pattern of bad faith registration and use, and supports its allegation with indices from the National Arbitration Forum and the World Intellectual Property Organization listing the cases brought against Respondent. See Exhibit H. The Panel concludes that the multiple cases brought against Respondent are evidence of Respondent’s pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Complainant contends that Respondent is paid a fee for each Internet user who clicks on the hyperlinks displayed on the resolving website. Complainant argues that Respondent intentionally creates confusion with Complainant’s mark in order to attract Internet traffic to its website for commercial gain. The Panel finds that Respondent’s bad faith registration and use of the <baylorheath.com> domain name under Policy ¶ 4(b)(iv) is demonstrated by Respondent’s attempt to profit by using a confusingly similar domain name to attract Internet users to its website. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant alleges that Respondent registered a typosquatted version of its BAYLOR mark when it registered the <baylorheath.com> domain name. Complainant argues that the disputed domain name contains the BAYLOR mark in its entirety and adds the word “heath,” which Complainant contends is a misspelling of the word “health.” However, the Panel notes that Complainant does not provide evidence that it has rights in the BAYLOR HEALTH trademark and therefore declines to find typosquatting under 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 <baylorheath.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 2, 2012
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