Baylor University v. Wallace Voelker
Claim Number: FA1611001701384
Complainant is Baylor University (“Complainant”), represented by Elizabeth M. Stafki, Texas, USA. Respondent is Wallace Voelker (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorapparel.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 4, 2016; the Forum received payment November 4, 2016.
On November 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baylorapparel.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@baylorapparel.org. Also on November 4, 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 December 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in This Proceeding:
Policy ¶ 4(a)(i)
Complainant has rights in the BAYLOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,465,910, registered on November 17, 1987). Respondent’s <baylorapparel.org> domain name is confusingly similar to the BAYLOR mark because it contains the mark along with the generic term “apparel” and a generic top-level domain (“gTLD”).
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <baylorapparel.org> domain name as it is not permitted to use the BAYLOR mark in any way. Respondent also fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to deceive consumers as to the relationship between the website and Complainant while selling apparel and other merchandise bearing the BAYLOR mark.
Policy ¶ 4(a)(iii)
Respondent uses the <baylorapparel.org> domain name in bad faith because the resolving website is used to deceive consumers as to the relationship between the website and Complainant while selling apparel and other merchandise bearing the BAYLOR mark. Respondent registered the <baylorapparel.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the BAYLOR mark.
Respondent:
Respondent failed to submit a formal Response. The Panel notes that Respondent registered the <baylorapparel.org> domain name March 4, 2016.
Complainant established that it has rights to and/or legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and the domain name is confusingly similar to Company’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims rights in the BAYLOR mark through its registration with the USPTO (Reg. No. 1,465,910, registered on November 17, 1987), and uses its mark in connection with its operation of a university. Complainant provided this registration in Exhibit B. The Panel finds that Complainant has rights in the BAYLOR mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant argues that Respondent’s <baylorapparel.org> domain name is confusingly similar to the BAYLOR mark because it contains the mark along with the term “apparel” and a gTLD. Complainant urges that “apparel” is a generic addition, which increases the likelihood of association between the domain name and Complainant. The Panel agrees and finds that the <baylorapparel.org> domain name is confusingly similar to the BAYLOR mark according to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark do not differentiate one from the other for the purposes of the Policy.).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and that the domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant maintains that Respondent is not commonly known by the <baylorapparel.org> domain name as Respondent is not permitted to use the BAYLOR mark. The Panel finds no evidence to suggest that Respondent is known commonly by Complainant’s mark and finds that Respondent is not commonly known by the <baylorapparel.org> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent does not use the <baylorapparel.org> domain name to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use because the resolving website is used to deceive consumers as to the relationship between the website and Complainant while selling apparel and other merchandise bearing the BAYLOR mark. Complainant provided screenshots of its own websites, in Exhibits C and D, as well as screenshots of the resolving website, in Exhibit E, to demonstrate this use. Complainant urges that Respondent’s website imitates the banner, layout, content, contact information, and offerings of merchandise of Complainant’s own websites. The Panel agrees and finds a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶4(c)(i) and ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent uses the <baylorapparel.org> domain name in bad faith because the resolving website is used to deceive consumers as to a purported relationship between the website and Complainant, which does not exist, but is used by Respondent to sell apparel and other merchandise bearing the BAYLOR mark. Complainant provided screenshots of its own websites, in Exhibits C and D, as well as screenshots of the resolving website, in Exhibit E, to demonstrate this use. Complainant maintains that Respondent’s website imitates the banner, layout, content, contact information, and offerings of merchandise of Complainant’s own websites. This Panel agrees and finds Respondent’s use of the <baylorapparel.org> domain name to be bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant insists that Respondent registered the <baylorapparel.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the BAYLOR mark. Complainant urges Respondent’s knowledge is demonstrated through the purported replication and imitation of Complainant’s own websites on the resolving website. This Panel agrees that such use of the <baylorapparel.org> domain name demonstrates knowledge of Complainant’s rights in the BAYLOR mark, and finds that Respondent registered and uses the domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Similarly, this Panel finds actual knowledge as established by the use of Complainant’s protected mark along with the sale of products bearing Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorapparel.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 12, 2016
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