Baylor University v. nam jong Gang
Claim Number: FA1509001637633
Complainant is Baylor University (“Complainant”), represented by Travis R. Wimberly, Texas, USA. Respondent is nam jong Gang (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorhealthcaresystems.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 Forum electronically on September 14, 2015; the Forum received payment on September 14, 2015.
On September 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baylorhealthcaresystems.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 September 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2015 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@baylorhealthcaresystems.com. Also on September 16, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the BAYLOR HEALTH CARE SYSTEM mark in the marketing of a network of hospitals, physicians and other healthcare providers.
Complaint holds a service mark registration for the BAYLOR HEALTH CARE SYSTEM, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,515,737, registered December 6, 1988).
Respondent registered the domain name <baylorhealthcaresystems.com> on March 6, 2015.
The domain name is confusingly similar to Complainant’s BAYLOR HEALTH CARE SYSTEM mark.
Respondent has not been commonly known by the domain name.
Respondent has failed to make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Respondent uses the domain name for its own commercial gain by displaying click-through links that appear to be related to Complainant, but in fact resolve to unrelated websites.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 cancelled 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.
In view of Respondent's failure to submit a response, the Panel will decide this proceeding pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the BAYLOR HEALTH CARE SYSTEM service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here South Korea). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding, under Policy ¶ 4(a)(i), that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <baylorhealthcaresystems.com> domain name is confusingly similar to Complainant’s BAYLOR HEALTH CARE SYSTEM service mark. The domain name contains the mark in its entirety, merely removing the spaces between its terms and adding the letter “s” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis because they are dictated by the standardized nature of second- and top-level domain names).
See also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding, Policy ¶ 4(a)(i), that the addition of the letter “s” to the mark of a UDRP complainant in creating the domain name <barnesandnobles.info> failed to avoid confusing similarity between the domain name and the mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent 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) (finding that a UDRP 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 respondent 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 Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the … domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the 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 contested domain name which are cognizable under the Policy.
In this connection, we first note that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the domain name <baylorhealthcaresystems.com>. We also note that there is nothing in the record suggesting that Respondent has received permission from Complainant to use its BAYLOR HEALTH CARE SYSTEM service mark in a domain name or otherwise. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “nam jong Gang,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in a contested domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence showing that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, but instead uses the <baylorhealthcaresystems.com> domain name for commercial gain by displaying on the resolving website click-through links that appear to be related to Complainant, but resolve to unrelated websites. This use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that using a domain name which was confusingly similar to the mark of a UDRP complainant to operate a website featuring links to other websites offering goods and services unrelated to the business of that complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii) so as to entitle that respondent to claim rights to or legitimate interest in the domain name by reference to either of those provisions of the Policy).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the disputed <baylorhealthcaresystems.com> domain name, which is confusingly similar to Complainant’s BAYLOR HEALTH CARE SYSTEM service mark, to seek commercial gain by creating a likelihood of confusion among Internet users as to the possibility of complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as evidence of Respondent’s bad faith in the registration and use of the domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a disputed domain name to maintain a web directory was evidence of bad faith where that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
It is also evident from the record that Respondent knew of Complainant and its rights in the BAYLOR HEALTH CARE SYSTEM mark when Respondent registered the <baylorhealthcaresystems.com> domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's mark at the time of its registration of a confusingly similar domain name).
For 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 domain name <baylorhealthcaresystems.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 13, 2015
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