Board of Regents, The
Claim Number: FA1001001303034
Complainant is Board of Regents, The
REGISTRAR
The domain names at issue are <wwwtexaslonghornfootball.com> and <texaslonghornclub.com>, registered with Above, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 15, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwtexaslonghornfootball.com and postmaster@texaslonghornclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwtexaslonghornfootball.com> and <texaslonghornclub.com> domain names are confusingly similar to Complainant’s TEXAS LONGHORNS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtexaslonghornfootball.com> and <texaslonghornclub.com> domain names.
3. Respondent registered and used the <wwwtexaslonghornfootball.com> and <texaslonghornclub.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Board of Regents, The University of Texas
System, operates nine institutions of higher learning in the state of
Respondent registered the disputed domain names on or after
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."
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.”).
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.
Complainant owns a trademark registration for the TEXAS
LONGHORNS mark with the USPTO (e.g.,
Reg. No. 3,665,961 issued
Complainant argues that Respondent’s <wwwtexaslonghornfootball.com> and <texaslonghornclub.com> domain names are confusingly similar to Complainant’s TEXAS LONGHORNS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names contain Complainant’s mark in its entirety, omit the letter “s,” omit spacing, add the descriptive terms “football” or “club,” add the prefix “www,” and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omission of the letter “s” in a disputed domain name creates a confusing similarity between a disputed domain name and a mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”).
The
Panel finds that a disputed domain name that adds a descriptive term with an
obvious relationship to Complainant’s sports activities creates a confusing
similarity between the disputed domain name and Complainant’s mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb.
Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the
complainant’s registered mark “llbean” does not circumvent the complainant’s
rights in the mark nor avoid the confusing similarity aspect of the ICANN
Policy); see also PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘
In addition, the Panel finds that the addition of the “www” to
Complainant’s mark does not create a distinct domain name and is instead
confusingly similar pursuant to Policy ¶ 4(a)(i). See
Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters “www” are not distinct in the “Internet world” and
thus the respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to the complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat.
Arb. Forum
Lastly, the Panel finds that the addition of a gTLD and the
omission of spacing in a disputed domain name are irrelevant in distinguishing
a disputed domain name from a registered mark.
See Reese v. Morgan, FA 917029
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain names. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain names. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain names. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Lu Lan” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain names to display links
advertising third-party websites in competition with Complainant’s offering of
intercollegiate sports. The Panel infers
that Respondent is using the disputed domain names to earn click-through fees,
and thus finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites 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) because the registrant presumably receives
compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers seeking Complainant’s website to the competitive
websites that resolve from the disputed domain names, through the confusion
caused by the similarity between the TEXAS LONGHORNS mark and the disputed domain
names. The Panel finds that Respondent’s
use of the disputed
domain names disrupts Complainant’s educational and athletic
interests, and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii).
Respondent is using the disputed domain names to intentionally divert Internet users to the associated website, which displays third-party links to competing websites. In cases such as this, the Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s TEXAS LONGHORNS mark and the confusingly similar disputed domain names. The Panel finds that Respondent’s use of the disputed domain names is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtexaslonghornfootball.com> and <texaslonghornclub.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 25, 2010
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