Baylor University v. Prakhar Bindal / Axsiom Domains Pvt Ltd
Claim Number: FA1509001639581
Complainant is Baylor University (“Complainant”), represented by Travis R. Wimberly, Texas, USA. Respondent is Prakhar Bindal / Axsiom Domains Pvt Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorcreditunion.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2015; the Forum received payment on September 25, 2015.
On September 29, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <baylorcreditunion.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@baylorcreditunion.com. Also on September 30, 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 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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 made the following contentions.
1. Complainant has registered the BAYLOR trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered Nov. 17, 1987), which demonstrates rights in the mark. The mark is used for education and entertainment services, namely conducting college level courses and related entertainment services namely, college sports events, fine art productions, concerts, and lectures. Respondent’s <baylorcreditunion.com> domain name incorporates the BAYLOR mark fully and merely tacks the generic phrase “credit union” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a parked webpage containing unrelated third party hyperlinks.
3. Respondent has engaged in bad faith registration and use. Respondent is attempting to profit commercially from a likelihood of confusion, which consists of bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the prominent Baylor University originally chartered in 1845 which is engaged in the provision of education and entertainment services, namely college level courses and related entertainment services including college sports events, fine art productions, concerts, and lectures.
2. Complainant has registered the BAYLOR trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered Nov. 17, 1987), which demonstrates rights in the mark.
3. Respondent registered the <baylorcreditunion.com> domain name on December 26, 2014.
4. The disputed domain name resolves to a parked webpage containing unrelated third party hyperlinks including hyperlinks to credit unions.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant has registered the BAYLOR trademark with the USPTO (e.g., Reg. No. 1,465,910, registered Nov. 17, 1987). The mark is used for education and entertainment services, namely conducting college level courses and related entertainment services namely, college sports events, fine art productions, concerts, and lectures. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BAYLOR mark. Complainant argues that the <baylorcreditunion.com> domain name is confusingly similar to the BAYLOR mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the descriptive phrase “credit union” and the generic top-level domain name (“gTLD”) “.com.” Complainant argues that the phrase “credit union” is descriptive because it has licensed the BAYLOR mark to the Baylor Health Care System and the Baylor College of Medicine, both of which have their own affiliated credit unions (Baylor Health Care Credit System Credit Union and the BCM Federal Credit Union, respectively). As a general note, the gTLD “.com” can never distinguish a domain name from the mark at issue. See 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). Also, prior panels have established a confusing similarity where the domain name at issue contained the entire mark and a descriptive phrase. See Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). Thus, the Panel finds that the <baylorcreditunion.com> domain name is confusingly similar to the BAYLOR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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) (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s BAYLOR trademark and to use it in its domain name, adding only the generic expression “creditunion”;
(b) Respondent registered the disputed domain name on December 26, 2014;
(c) Respondent is using the disputed domain name to resolve to a parked webpage containing unrelated third party hyperlinks including hyperlinks to credit unions;
(d)Respondent has engaged in these activities without the consent or
approval of Complainant;
(e)Complainant submits that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the BAYLOR mark in domain names. The Panel notes that “Prakhar Bindal” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests 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);
(f)Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the domain name resolves to a parked webpage that contains hyperlinks that appear to reference Complainant but actually lead to unrelated third party websites including credit unions. The Panel notes that the domain name resolves to a webpage that contains links which read, among other things, “Compare Credit Cards,” “Baylor Credit Union,” and “Credit Card Machines.” See Compl., at Attached Ex. E. As a general note, respondents are always responsible for the content of a parked webpage. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). In addition, prior panels have declined to grant respondents rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name resolved to a webpage containing unrelated hyperlinks. 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). Thus, the Panel declines to find that Respondent has established rights under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has demonstrated bad faith registration and use. Complainant submits that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. Complainant maintains that Internet users who view the resolving webpage are likely to believe that the webpage is sponsored by or affiliated with Complainant and its BAYLOR trademark. Further, Complainant adds that Respondent is presumably profiting from this behavior. Prior panels have been consistent in holding that, where a likelihood of confusion for commercial gain exists, that constitutes bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As the Panel finds that a likelihood of confusion for commercial gain is present here, it finds that Respondent has displayed bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BAYLOR mark and the manner in which it has been used, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorcreditunion.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 28, 2015
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