Baylor University v. Md Touhiduzzaman c/o TKompany
Claim Number: FA1606001679484
Complainant is Baylor University (“Complainant”), represented by Elizabeth Stafki, Texas, USA. Respondent is Md Touhiduzzaman c/o TKompany (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2016; the Forum received payment on June 15, 2016.
On June 16, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@lamarvsbaylorlive.xyz, postmaster@baylorvskansaslive.xyz, postmaster@baylorvssmulive.xyz, postmaster@ricevsbaylorlive.xyz, postmaster@texastechvsbaylorlive.xyz, and postmaster@wvuvsbaylorlive.xyz. Also on June 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns and has long used the marks BAYLOR, BAYLOR UNIVERSITY, and other marks that include the term BAYLOR in connection with a wide range of goods and services, including its athletic programs.
Baylor owns a number of trademark registrations for the BAYLOR marks in the United States and other countries, including the following (among others), BAYLOR, Reg. Nos. 1465910, 1858559, and 1936714 and BAYLOR UNIVERSITY, Reg. Nos. 1923603 and 1935130
Respondent uses a privacy mask to cloak its identity on the at-issue domain name registration records.
The domain names contain the identical mark BAYLOR—a famous mark strongly associated with Baylor University—and merely tack on the names of rival universities and generic or descriptive terms (“vs,” and “live”) that are highly likely to be associated with Baylor and its football program.
Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Instead, on information and belief, Respondent has used the domain names to host illegal streaming of football games between Baylor and other universities. Respondent’s streaming of such content is without Complainant’s permission, and is in violation of the terms of service of its streaming provider.
The home page at <baylorvssmulive.xyz> includes links following a similar format, and with the title “baylor vs smu live / Stream baylor vs. smu Watch Online.”
The other domain names do not currently display substantive content. However, it is highly likely that they were used or intended to stream Baylor football games as the format of the domain names are all identical. They were registered within a day of each other, and the domain names imply the purpose of their corresponding websites.
Respondent is not commonly known by the domain names at issue.
Respondent is not making a legitimate noncommercial or fair use of the domain names. Respondent’s use of the domain names to provide illegal streams of Baylor football games disrupts Baylor’s business by diverting traffic from Baylor’s own streaming service, provided at <baylorbears.com/collegesportslive>.
Respondent has engaged in a pattern of bad faith registration of Complainant’s and others’ trademarks in domain names. For example, Respondent has registered other domain names incorporating other teams’ marks; the content at http://www.baylorvssmulive.xyz shows that Respondent is promoting seattleseahawkslive.com, sanfrancisco49erslive.com, among many others.
Respondent’s bad faith registration and use is also evidenced by: (1) its lack of any trademark or other intellectual property rights in the domain names; (2) its use of domain names that are neither Respondent’s legal name nor a name commonly used to identify Respondent; (3) its failure to use the domain names in connection with any bona fide offering of goods or services; (4) its failure to make any bona fide noncommercial or fair use of the BAYLOR Mark; and (5) the fame of the BAYLOR mark, especially when used in connection with athletics programs, and football in particular.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BAYLOR mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the BAYLOR trademark.
Respondent uses the at-issue domain names to host, or in preparation to host, illegal streaming of Baylor football games.
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(f), 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 (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 at-issue domain names are confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its BAYLOR mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). It is immaterial that Respondent may reside outside the jurisdiction of the trademark registrar. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”).
Respondent’s <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names each contain Complainant’s entire BAYLOR mark, include the name of a college sports team -either Lamar Arkansas SMU, Rice, Texas Tech or WVU- separates the BAYLOR mark and the competing team name with “vs,” adds the generic term “live,” and appends the top level domain name “.xyz” thereto. However, the differences between each of Respondent’s domain names and Complainant’s BAYLOR trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names are each confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i). See Baylor University v. Baylor University, Case No. FA791433 (NAF October 23, 2006) (finding respondent’s domain names confusingly similar to Complainant’s BAYLOR mark because they “consist of Complainant’s federally registered BAYLOR mark with the addition of generic or descriptive terms related to Complainant’s offering of educational or athletic activities, or the medical offerings of Complainant’s licensees,” along with a generic top-level domain); see also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect to each of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect to any of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Md Touhiduzzaman c/o TKompany” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the any of the domain names. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). . See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the at-issue domain names to either stream, or in preparation to stream, football games played between Complainant’s team and its competitors. Using the confusingly similar domain name in this manner, to act as an authorized conduit for Complainant’s proprietary video material, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also Americor Mortgage, Inc. v. Bowman, FA 93548 (Nat. Arb. Forum Apr. 22, 2002) (“Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interests, Respondent registered and uses the domain names to stream unauthorized videos of football games between Complainant’s team and various other college teams. Such use, and even the intent to at some time use the domain name for streaming, disrupts Complainant’s business and thereby demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See ABS-CBN International v. JAN PAUL MANCHING, Case No. FA 1575590 (NAF Sept. 21, 2014) (finding that use of a domain name to provide illegal streams of Complainant’s content disrupts Complainant’s business and constitutes bad faith use).
Additionally, Respondent’s registration of multiple domain names containing Complainant’s trademark suggests Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Finally and although not expressly argued by Complainant, Respondent registered the confusingly similar <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names knowing that Complainant had trademark rights in the BAYLOR mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s multiple registrations of domain names incorporating that trademark and from Respondent’s use of the domain names to stream, or in preparation to stream, unauthorized material directly related to the BAYLOR trademark.
Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lamarvsbaylorlive.xyz>, <baylorvskansaslive.xyz>, <baylorvssmulive.xyz>, <ricevsbaylorlive.xyz>, <texastechvsbaylorlive.xyz>, and <wvuvsbaylorlive.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 21, 2016
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