The Board of Regents of the University of Oklahoma v. aaron brooks
Claim Number: FA1808001803101
Complainant is The Board of Regents of the University of Oklahoma (“Complainant”), represented by Tynia A. Watson of Crowe & Dunlevy, P.C., Oklahoma, USA. Respondent is aaron brooks (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <oklahomabasketballjersey.info> and <oklahomasoonersfootballjersey.info>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2018; the Forum received payment on August 24, 2018.
On August 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oklahomabasketballjersey.info> and <oklahomasoonersfootballjersey.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2018 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@oklahomabasketballjersey.info and postmaster@oklahomasoonersfootballjersey.info. Also on August 28, 2018, 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 September 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in OKLAHOMA and OKLAHOMA SOONERS and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith.
B. Respondent
Respondent has not filed a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns, inter alia, United States Trademark Reg. No. 4,294,514, registered February 26, 2013 for the mark OKLAHOMA and Reg. No. 3,071.146, registered March 21, 2006 for the mark OKLAHOMA SOONERS;
2. the disputed domain names <oklahomabasketballjersey.info> and <oklahomasoonersfootballjersey.info> were registered in July 2017 and July 19, 2017 and resolve to websites which use Complainant’s trademarks and promotes the sale of either basketball or football clothing; and
3. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations for OKLAHOMA and OKLAHOMA SOONERS, the Panel is satisfied that it has trademark rights in those terms (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) “Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
For the purposes of comparison, the gTLD, “.info”, can be ignored (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The disputed domain names then take one or other of the trademarks to which is added the descriptive word, jersey and either word, football or basketball. The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks since the added matter does not distinguish the domain names from the trademarks in any significant way so as to avoid confusion (see, for example, YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark).
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information identifies Respondent as “Aaron Brooks”. Accordingly, there is no prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. Further, the Complaint includes screenshots of the resolving websites which show the sale of either basketball or football clothing under Complainant’s trademarks. There is no evidence that Complainant has authorized Respondent to use the trademarks and Complainant denies any such authorization. Complainant states that Respondent is not a licensed seller of Complainant’s products. On the evidence presented, the Panel accepts that submission since there is no indication that the sales from the resolving websites meet the requirements set out in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel finds no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Nor is there legitimate noncommercial or fair use of the domain names.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response that prima facie case is not met. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The domain names have already been found to be confusingly similar to the trademarks. The use is for commercial gain. The evidence indicates that Respondent has directly targeted Complainant and its trademarks. All the elements of paragraph 4(b)(iv) are met (see Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) “Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oklahomabasketballjersey.info> and <oklahomasoonersfootballjersey.info> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 25, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page