Baylor University v. Carl Henderson
Claim Number: FA1307001509173
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Carl Henderson (“Respondent”), represented by Leslie Warren Cross, Jr. of The Cross Firm, P.C., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <justbuit.com> and <gobusong.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 11, 2013; the National Arbitration Forum received payment on July 11, 2013.
On July 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <justbuit.com> and <gobusong.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 July 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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 bil-ling contacts, and to postmaster@justbuit.com, postmaster@gobusong.com. Also on July 12, 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 Respond-ent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 31, 2013.
Complainant submitted an Additional Submission, which was determined to be complete on August 5, 2013, to which Respondent has timely responded with its own Additional Submission.
On August 7, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, the oldest continually operating institution of higher learning in the State of Texas, provides undergraduate and graduate educational services through its eight colleges.
Complainant holds registrations for the BU trademark, which are on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,468,277, registered Dec. 8, 1987).
Complainant has received widespread recognition of its educational services and sports teams as associated with the BU mark.
Respondent registered the <justbuit.com> and <gobusong.com> domain names on March 20, 2011.
Each of these domain names is confusingly similar to Complainant’s BU mark.
Respondent uses the <justbuit.com> domain name to redirect website visitors to a video hosted by <youtube.com>, which shows Respondent’s music sales-related promotional material.
Respondent uses the <gobusong.com> domain name in a similar manner, redirecting website visitors to iTunes, where Respondent uses Complainant’s mark to sell Respondent’s music.
Respondent has not been commonly known by the disputed domain names, and it does not make a legitimate noncommercial or fair use of them.
Respondent has no rights to or legitimate interests in either of the contested domain names.
By employing the <justbuit.com> and <gobusong.com> domain names to pro-mote its music for purchase, Respondent demonstrates that it registered and uses them in bad faith.
Respondent has misrepresented to Complainant that it removed the content associated with the disputed domain names, when in fact the websites resolving from them still contain that content, and the domain names are still active.
B. Respondent
Respondent registered the <justbuit.com> and <gobusong.com> domain names in order to gain attention and exposure for a sports team “fight song” it created for the benefit of Complainant.
Complainant’s men’s basketball team has used Respondent’s song on its promo-tional video and website, and Complainant’s women’s basketball team played the song when it won its “Big 12” conference tournament.
Once Respondent was notified of a possible conflict with Complainant’s marks, Respondent changed its website to comply with Complainant’s concerns.
Respondent had no intent to exploit or abuse Complainant’s BU trademark.
Complainant has failed to show evidence that the two domain names at issue infringe upon any actual ownership rights of Complainant.
Complainant’s trademark protection extends only to the BU mark, and does not include activity which Respondent pursues through its use of the domain name.
Complainant has not demonstrated that Respondent has used the <justbuit.com> and <gobusong.com> domain names in bad faith.
C. Additional Submissions
Complainant’s Additional Submission alleges, among other things, that:
Respondent admits that Complainant owns federal trademark registrations for the BU mark, yet argues that Complainant does not own registrations for the GOBUSONG or JUSTBUIT names.
This argument is inapposite to Policy ¶ 4(a)(i), because Respondent targets the BU mark specifically.
Respondent does not deny using Complainant’s BU trademark in the disputed domain names to promote itself commercially.
Respondent admits actual knowledge of Complainant and its BU mark at the time Respondent registered the <justbuit.com> and <gobusong.com> domain names.
Respondent’s Additional Submission asserts, among other things, that:
Complainant cannot assert trademark rights as to a product or service class for which it never filed a trademark application.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the BU trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with … the United States Patent and Trademark Office.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that each of the <justbuit.com> and <gobusong.com> domain names is confusingly similar to the BU mark. Each of the domain names includes the full BU mark, with the addition of generic terms associated with the promotion of Complainant’s athletic teams and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, are insufficient to distinguish the domain names from the mark under the standards of the Policy. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to a UDRP complainant’s ICQ mark). See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name, such as “.net” or “.com,” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another under Policy ¶ 4(a)(i)). This is because every domain name requires a gTLD.
Respondent asserts that the question before us is whether Complainant has rights in the names JUSTBUIT and GOBUSONG. It is not. If Respondent’s assertion were accepted, the effect would be to remove confusing similarity from the dual standards of the Policy, leaving it with only the test of strict identity between a domain name and the mark of another on which it is based. Such a result can only be accomplished by an amendment of the Policy by its authors.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. We will therefore examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain names. Moreover, the WHOIS information for each of the domain names identifies the registrant only as “Carl Henderson,” whereas the resolving websites indicate that Respondent is otherwise known as “Pinc Gator.” These appellations do not re-semble either of the disputed <justbuit.com> and <gobusong.com> domain names. Accordingly, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in either of them within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), finding that a respondent was not commonly known by a disputed domain name where the relevant WHOIS information did not support such a finding, and where other evidence in the record reflected a different name for that respondent.
We next observe that Complainant asserts that Respondent uses the domain name <justbuit.com> to redirect Internet users to a video on <youtube.com> which shows promotional material using Complainant’s mark, and that Respond-ent uses the <gobusong.com> domain name in a similar manner, redirecting website visitors to iTunes, where Respondent uses Complainant’s mark to sell Respondent’s sports-related music. For its part, and consistent with Complain-ant’s assertions, Respondent concedes that it registered the <justbuit.com> and <gobusong.com> domain names in order to gain exposure for a sports team “fight song” it created, putatively for the benefit of Complainant. In the circum-stances here presented, this employment of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii). See, closely on point, Anheuser-Busch, Inc. v. salvisongs.com, FA1401118 (Nat. Arb. Forum, Aug. 29, 2011).
Respondent contends that the result in Anheuser-Busch v. salvisongs.com should not be relied upon because it was a default decision issued upon the non-appearance of the responding party. This argument is specious. Taking only one well known example, the decision in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) was likewise issued in a default setting, yet it has become widely regarded as seminal teaching in this field.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, for its anticipated profit, Respondent’s employment of the domain names <justbuit.com> and <gobusong.com>, which are confusingly similar to Complainant’s BU trademark, demonstrates bad faith registration and use of the domain names under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), finding, under Policy ¶ 4(b)(iv), that a UDRP respondent registered and used a disputed domain name in bad faith where it diverted Internet users to its own website, likely profiting from this use.
It is also obvious from the record that Respondent, like Complainant a resident of the state of Texas, knew of Complainant and its rights in the BU trademark when it registered the two contested domain names on the same date, March 20, 2011. This is independent proof of bad faith registration of the domain names. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding bad faith registration of a contested domain name where the link between a UDRP complainant's mark and the content advertised on a respondent's website was obvious, so that that respondent "must have known about the Complainant's mark when it registered the subject domain name").
In addition, we take notice of the fact that there is evidence in the record indicat-ing that Respondent, having been advised by Complainant of its objections to Respondent’s employment of the disputed domain names, declared that it had altered the content of the resolving websites to meet all of those objections, whereas in fact it had not.
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <justbuit.com> and <gobusong.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 26, 2013
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