Board of Regents, The University of Texas System v. Wesley Amann
Claim Number: FA1301001481912
Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Wesley Amann (“Respondent”), Texas USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <university-texas.com>, registered with GoDaddy.com, LLC.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2013; the National Arbitration Forum received payment on January 24, 2013.
On January 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <university-texas.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2013 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@university-texas.com. Also on January 25, 2013, 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 February 11, 2013.
Complainant submitted an Additional Submission on February 15, 2013 that was determined to be timely and compliant with The Forum’s Supplemental Rule #7.
On February 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions are as follows:
The disputed domain name at issue is identical or confusingly similar to Complainant’s marks. The disputed domain name is nearly identical to the mark UNIVERSITY OF TEXAS, merely replacing the preposition “of” in the mark with a dash (“-“).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has used the disputed domain name in connection with a parking page displaying links with titles likely to be associated with Complainant or its products and services, such as “Watch Live Football,” “Bachelor Degree Online,” “2012 Masters Colleges,” and “Go Back To School,” among others. These links divert Internet users to third-party websites that are not affiliated with Complainant.
Complainant’s attorneys sent Respondent a cease-and-desist letter on October 16, 2012, regarding the disputed domain name. Respondent responded to that letter on October 24, 2012, that the “domain name is for sale through GoDaddy Auctions” and that Complainant or its attorneys “are welcome to purchase the domain name through the auction,” and would not agree to Complainant’s demands. Respondent also stated in his response that the disputed domain name was “no longer directed to a monetized parking page.” However, while the disputed domain name no longer resolves to a pay-per-click parking page, it instead redirects to the “www.rocket5.com” website, which appears to be Respondent’s own website2 and which promotes “Premium Domains” and lists a number of domain names for sale. Further, the disputed domain name is for sale at auction for $195.
Respondent is not commonly known by the domain name at issue. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, as detailed above, Respondent has used this domain name for a pay-per-click parking page displaying links with titles likely to be associated with Complainant or its products and services, and now redirects the domain name to his own website that offers domain names for sale. An offer to sell the domain name is evidence of a lack of legitimate interest in the name. As detailed above, Respondent would not comply with Complainant’s demands, instead it tells Complainant the domain name is for sale and invites Complainant to purchase the domain name (for $195).
Respondent registered and is using the disputed domain name in bad faith. Respondent has not agreed to Complainant’s demands and has continued his infringing activities despite being given notice of Complainant’s trademark rights. Respondent was presumably paid a fee or commission when Internet users visited the website at the disputed domain name, clicked on the various links likely to be associated with Complainant, and were diverted to third-party websites. Thus, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the UNIVERSITY OF TEXAS Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.3
Respondent now redirects the disputed domain name to his own website “www.rocket5.com” that promotes “Premium Domains” and offers domain names for sale. The address of Respondent as shown in the WhoIs record and the address listed on his website at www.rocket5.com are in Austin, Texas, the location of the University. This is further evidence that the disputed domain name was intentionally selected by Respondent to create a likelihood of confusion with the University. As detailed above, Respondent would not comply with Complainant’s demands, and instead tells Complainant the domain name is for sale and invites Complainant to purchase the domain name for $195. This is further evidence of bad faith.
Respondent’s bad faith also is evidenced by the fact that it owns no trademark or other intellectual property rights in the disputed domain name; which does not consist of the legal name of or a name commonly used to identify Respondent. Also, Respondent has not used the domain name in connection with a bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain names incorporate the distinctive UNIVERSITY OF TEXAS Marks.
B. Respondent
In its Response, Respondent contends as follows:
The disputed domain name is made up of two common English words. On February 10, 2013, a Google search of university-texas returned 375,000,000 results. On the same date, an exact search of “university-texas” returned 1,660,000 results. There are over 85 universities in Texas. The disputed domain name is not identical to universityoftexas.com and the term too generic to be considered confusingly similar. See Exhibit A to the Response.
Respondent owns the disputed domain name because he paid the registration fee. The disputed domain name was unregistered when Respondent purchased it. After the domain name was registered, it was “parked” with GoDaddy but to the best of Respondent’s knowledge and recollection, Respondent received no fees or payments for this “parking”, and Respondent had GoDaddy remove the disputed domain name from this status when Respondent found out it resolved to advertisements. Respondent has not used the disputed domain name for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark or service mark.
At no point in time did Respondent approach Complainant for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Respondent charges $150 per hour for its time and has invested much more than 2 hours in the selection and purchase of the disputed domain name. Respondent did list the disputed domain name for sale on the GoDaddy marketplace (where millions of domain names are listed for sale). Respondent made no direct approaches to anyone to sell the disputed domain name. Respondent did not register the disputed domain name in order to prevent the Complainant from doing anything and has pattern of using my domains in any negative fashion.
Respondent did not register the disputed domain name for the purpose of disrupting any business of anyone or intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
C. Additional Submissions
In its Additional Submission, Complainant contests Respondent’s argument that the disputed domain name is too generic to be considered confusingly similar to Complainant’s mark, and refers to Response Exhibit A showing the results of Google searches for “university texas” and “university-texas.” Complainant contends that the only natural search results displayed in Respondent’s Exhibit A for each of these searches are for websites owned and operated by Complainant or its universities. More specifically, says Complainant, the first search result of each search in Respondent’s Exhibit A is for the official website of The University of Texas at Austin, the flagship academic institution within the UT System and frequently referred to as “The University of Texas”. The second search result of each search in Respondent’s Exhibit A is for the official website of The University of Texas at San Antonio, another academic institution within the UT System. Complainant contends that, instead of supporting Respondent’s claim that the disputed domain name is not “confusingly similar” to Complainant’s marks, Respondent’s Response and its Exhibit A further establish that the disputed domain name is likely to cause confusion with Complainant.
Complainant is a Texas state board governing The University of Texas System (the “UT System”), a system of institutions of higher education. The UT System, which has operated for more than a century, consists of nine universities and six health institutions throughout the State of Texas. These institutions offer a variety of products and services in education, medicine, scientific research and development, and athletics, among many others.
The University of Texas at Austin (the “University of Texas” or the “University”) is the flagship academic institution within the UT System and is frequently referred to as “The University of Texas”. The University is located in Austin, Texas. In addition to providing educational services, the University of Texas actively participates in many collegiate sports, such as football. The University uses the marks UNIVERSITY OF TEXAS, TEXAS, and other marks incorporating those marks in connection with these sports teams. A variety of licensed products adorned with these and related marks can be purchased. Complainant also owns a number of U.S. trademark registrations for these marks, inter alia:
UNIVERSITY OF TEXAS, U.S. Reg. No. 1340787, Reg. Date June 11, 1985, filed on August 27, 1984, covering glass cups in International Class 21, first use/first use in commerce September 1, 1981;
THE UNIVERSITY OF TEXAS, U.S. Reg. No. 1351805, Reg. Date July 30, 1985, filed on August 27, 1984, covering shirts in International Class 25, first use/first use in commerce January 1, 1983, and
TEXAS, U.S. Reg. No. 1231407, Reg. Date March 15, 1983, filed on August 3, 1981, covering educational services and entertainment services in International Class 41, first use/first use in commerce 1914.
The disputed domain name was registered on September 19, 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."
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.
Since Respondent’s evidence in support of its argument that the disputed domain name is generic may reasonably have not been anticipated by Complainant, the Panel decides to consider Complainant’s Additional Submission, in that it addresses Respondent’s Exhibit A by demonstrating that each of the search results referred to by Respondent in its Response are not related to the generic meaning of the terms “university” and “Texas”, but rather correspond to institutions constituting or referring to the University of Texas system.
By submitting printouts of certificates of trademark registration, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the marks UNIVERSITY OF TEXAS, THE UNIVERSITY OF TEXAS and TEXAS. See “Findings” above.
In the Panel’s opinion, Respondent’s argument that the disputed domain name is too generic to be considered confusingly similar to Complainant’s mark does not alter the fact that the USPTO granted Complainant valid trademark registrations for UNIVERSITY OF TEXAS and THE UNIVERSITY OF TEXAS. Nor has such argument any influence on the well-established test for establishing the requirement of Policy ¶ 4(a)(i), i.e. a straightforward comparison between both identifiers. The disputed domain name consists of the terms “university” and “texas” in the same order as in Complainant’s marks (although separated by a hyphen) plus the gTLD “.com”. The disputed domain name does not contain the terms “of” and “the” but, in the Panel’s view, this minor difference is inapt to distinguish the domain name from Complainant’s UNIVERSITY OF TEXAS and THE UNIVERSITY OF TEXAS marks. Therefore, the Panel concludes that the disputed domain name is confusingly similar to marks in which Complainant has rights.
It is well established that a 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), and then the burden shifts to the 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).
In the present case, Complainant contends and submits evidence that Respondent is not making any of the legitimate uses of Policy ¶ 4(c)(i), (ii) or (iii)). For its part, Respondent alleges that the disputed domain name was unregistered when Respondent purchased it, and that Respondent owns it because it paid the registration fee. In the Panel’s opinion this argument fails to establish a legitimate basis for the registration of the disputed domain name, because it would make every domain name registration legitimate, and render the Policy inapplicable in all cases. See Educational Testing Serv. v. TOEFL, D2000‑0044 (WIPO Mar, 16 2000), “If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy.”
Respondent’s contention that the disputed domain name is made of two common English words, and that the domain name is ”too generic to be considered confusingly similar” to Complainant’s marks would perhaps have been more useful to Respondent had it actually used the disputed domain name in this “generic” sense. Instead, Respondent simply “parked” the disputed domain name, causing or allowing that commercial links and other advertising be posted on the corresponding website. In fact, Respondent’s Exhibit A, instead of showing that the search results for “university texas” and “university-texas” predominantly relate to the generic meaning of such terms, contains results referring to educational institutions belonging to the University of Texas system, as underlined by Complainant in its un-contested additional submission. Accordingly, the Panel finds that the disputed domain name has not been used in connection with a present or future bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i). Nor has Respondent made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy ¶ 4(c)(iii). As shown by Complainant, Respondent parked the disputed domain name with a provider of parking services, and commercial links were posted on the website at the disputed domain name, thus misleading consumers presumably looking for the educational institutions protected by Complainant’s marks. Complainant has also shown that even after the disputed domain name ceased to resolve to a pay-per-click parking page, Respondent still redirected it to the “www.rocket5.com” website, where “premium domains” are promoted and a number of domain names are offered for sale. This means that the past and present use of the disputed domain name is neither noncommercial nor fair. 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Also, there is no contention or evidence that Respondent has been commonly known by the disputed domain name or by a name corresponding to the disputed domain name, pursuant to Policy ¶ 4(c)(ii).
Finally, there is nothing on the record indicating that Respondent may have any rights or legitimate interests whatsoever in the disputed domain name.
Accordingly, the Panel concludes that the second requirement of the Policy is met.
Complainant has been using the mark UNIVERSITY OF TEXAS since 1982, the mark THE UNIVERSITY OF TEXAS mark since 1983, and the mark TEXAS (in connection with educational services) since 1914. Also, Complainant’s registrations for the UNIVERSITY OF TEXAS and THE UNIVERSITY OF TEXAS marks predate the registration of the disputed domain name by three decades. Further, Respondent is a resident of Austin, Texas, where the University of Texas at Austin, is located. These facts lead the Panel to conclude that Respondent knew and targeted Complainant when the disputed domain name was registered.
As to the use of the disputed domain name, Complainant has evidenced that Respondent parked the domain name in a website on which commercial links and advertising were posted, from which Respondent was to obtain monies via a “pay-per-click “ system. In the Panel’s view, Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location, which is a circumstance of bad faith registration and use, pursuant to Policy ¶ 4(b)(iv).
This conclusion cannot be altered by the fact that Respondent in the end may have not received any monetary benefit from the parking, and that it later decided to suspend the parking of the disputed domain name, and instead redirect it to a website where domain names – including the disputed domain name – are being offered for sale. In the Panel’s view, Respondent at all times unfairly used the renown of Complainant’s marks for commercial gain, thus acting in bad faith, whether or not a monetary benefit actually materialized. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
For these reasons, the Panel concludes that that the third requisite of the Policy is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <university-texas.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi
Dated: March 5, 2013
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