Baylor University v. Bruce Mudarri / THIS DOMAIN IS FOR SALE
Claim Number: FA1601001655264
Complainant is Baylor University (“Complainant”), represented by Travis R. Wimberly, Texas, USA. Respondent is Bruce Mudarri / THIS DOMAIN IS FOR SALE (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylor.degree>, registered with GoDaddy.com, LLC.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2016; the Forum received payment on January 6, 2016.
On January 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baylor.degree> 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2016 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@baylor.degree. Also on January 6, 2016, 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 January 8, 2016.
On January 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant, Baylor University, was originally chartered in 1845 by the Republic of Texas. The Complainant is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world.
Complainant has registered the BAYLOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered November 17, 1987; Reg. No. 1,858,559, registered October 18, 1994; Reg. No. 1,936,714, registered on November 21, 1995). The mark is used on or in connection with the Complainant’s university and of higher learning.
The disputed domain name is identical or confusingly similar to the Complainant's famous BAYLOR trademark.
The <baylor.degree> domain name is identical to the BAYLOR trademark because it contains the entire mark and differs only by the addition of the generic top-level domain ("gTLD") ".degree".
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name. Further, Respondent’s attempt to sell the domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the domain name is bad faith. Respondent owns and uses several other domain names containing others' famous marks, and this act demonstrates Respondent's bad faith registration and use.
B. Respondent
The Respondent contends he is new to the Internet, and that he has purchased all kinds of domain names, not only under the new gTLD “.degree” but also under the “.com” gTLD, and that he is not familiar with the “rules of the Internet” nor the Trademark laws.
The Respondent approved that he has contacted the Complainant several times and offered to sell the disputed domain name. The Respondent further argues that he did not mean to damage or infringe on others' rights.
The Respondent further argues he has deleted the disputed domain name from his account on December 9, 2015, and he has no knowledge why the disputed domain name was returned to his account.
Finally, the Respondent argues he is fully willing to transfer the disputed domain name to the Complainant without any cost.
The Panel’s findings are explained below.
Preliminary Issue: Consent to Transfer
The Complainant filed its Complaint requesting that the disputed domain name be transferred to the Complainant. The Respondent accepted the Complainant's arguments and consents to transfer the <baylor.degree> domain name to Complainant, immediately and without any costs.
However, after the initiation of this proceeding, The Registrant, GoDaddy.com, LLC, placed a hold on the Respondent’s account and therefore the Respondent cannot transfer the disputed domain name to the Complainant as long as this proceeding is still pending.
While ¶ 4(a) of the Policy requires the Complainant to show three elements in order to succeed in a Panel determination, and such a determination is based on the statements and documents filed in accordance with the Policy, the Rules and principles of law (¶ 15(a) Rules); ¶¶ 3(a) and 8(a) of the Policy provide for the transfer of a domain name on the instructions of the registrant subject to the conclusion of these proceedings.
While there is a clear intent and agreement by the parties to the present case to transfer the disputed domain name to the Complainant, the Policy fails to direct panels to diregard ¶ 4(a) when such an agreement exists. Some panels have foregone the traditional UDRP analysis and order the immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”); see also Monash University v. Kristian Harcourt, College Down Under, Inc., FA 1510001641006 (Nat. Arb. Forum November 16, 2015).
Other panels have felt that at a minimum the complainant must demonstrate that the first element of the UDRP was satisfied. See Coachella Music Festival, LLC v. Paul Mattis, FA 1512001651013 (Nat. Arb. Forum January 3, 2016) (“[A]s a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name.”), citing Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO); see also Spotify AB v. achal / fiber softwares, FA 1509001637464 (Nat. Arb. Forum October 18, 2015).
A third approach by some panels would be to provide a complete analysis of the UDRP elements where the consent to transfer is not implicit (See WP Company LLC v. Jestin Coler / DisInfoMedia Inc, FA 1509001636671 (Nat. Arb. Forum October 26, 2015), or where the respondent’s apparent waver of rights is necessary because the “consent-to-transfer” approach is “but one way for cybersquatters to avoid adverse finding against them.” See Michelin North America, Inc. v. Yuchan Zhao, FA 1509001639765, (Nat. Arb. Forum October 29, 2015). Another panel considered the requirement to provide a full UDRP analysis only in cases where the consent-to-transfer is made in bad faith. See EMVCO, LLC c/o Visa Holdings v. Gary Deroos, FA 1509001637575 (Nat. Arb. Forum October 14, 2015) (“[W]here the consent to transfer is itself offered in bad faith (for example, to permit a serial cybersquatter to avoid having adverse findings entered against it), the Panel may proceed with the traditional analysis notwithstanding the Respondent's request.”)
The result is that a panel must first determine, from a review of the statements and documents filed by the complainant and the respondent, if a full UDRP anlysis should be conducted. This Panel is of the view that a full UDRP analysis should be provided if there is evidence that the consent to transfer is made in bad faith or in order to avoid an adverse decision against a cybersquatter.
In the circumstances this case, the Complainant has provided sufficient evidence to show that the Respondent acted in bad faith in registration and use by attempting to sell the disputed domain name. Moreover, the disputed domain name and other domain names comprising brand names of other entities are still owned by the Respondent at the time of this decision. It is therefore the view of this Panel that the present case merits a full UDRP analysis.
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.
Identical and/or Confusingly Similar
Complainant has rights in BAYLOR trademark under Policy ¶ 4(a)(i) through registration with the USPTO. 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 <baylor.degree> disputed domain name is confusingly similar to the BAYLOR trademarks. The disputed domain name is identical to BAYLOR trademark, differing only by the addition of the new gTLD “.degree”.
The Complainant has proven this element.
Rights or Legitimate Interests
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent’s use of Complainant’s trademark. 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).
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The record shows that the disputed domain name resolves to a website containing an offer to sell the disputed domain name. The use of the disputed domain name in conjunction with advice relating to educational services and at the same time an offer to sell the disputed domain name cannot be seen as bona fide offering of goods or services.
The Complainant has proven this element.
Registration and Use in Bad Faith
The evidence presented to the panel shows that the Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has displayed bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i) by offering the disputed domain name for sale while incorporating educational related context within the web site under the disputed domain name. See Taylor Made Golf Co., Inc. v. David Walker, Case No. FA1355848 (Nat. Arb. Forum Dec. 13, 2010) (finding of bad faith when Respondent attempted to sell the disputed domain name to Complainant.)
Moreover, the Respondent’s bad faith registration and use is evident from the pattern of conduct undertaken by the Respondent of buying domain names of famous universities under the “.degree” new gTLD, and placing on the web sites under such domain names content relating to education and, at the same time, offering those domain names for sale. The placement of content relating to education, in this case, the cost of education, on web sites under such domain names as the disputed domain name, <barnard.degree>, <georegtown.degree> and others, would only lead Internet users who are interested in educational related subjects to these websites. Such Internet users will then be subject to the offer for sale provided by the Respondent. See Exhibit C.
Finally, the Respondent sent the Complainant directed emails offering the disputed domain name for sale. Such behavior is another clear indication of the Respondent’s bad faith registration and use.
The Complainant has proven this element.
Given the Complainant has established the three elements required under ¶ 4(a) of the Policy, the Panel concludes that the requested relief shall be GRANTED.
It is ordered that the <baylor.degree> domain name be TRANSFERRED from Respondent to Complainant .
Jonathan Agmon, Panelist
Dated: January 26, 2016
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