Baylor University v. James Perry / GradVentures, LLC / Registration Private / Domains By Proxy, LLC
Claim Number: FA1906001847203
Complainant is Baylor University (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is James Perry / GradVentures, LLC / Registration Private / Domains By Proxy, LLC (“Respondent”), represented by Steven L. Rinehart of Registered Patent Attorney, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylorfanatic.com>, <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com>, 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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2019; the Forum received payment on June 10, 2019.
On June 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baylorfanatic.com>, <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com> 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 June 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2019 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@baylorfanatic.com, postmaster@baylorgrad.com, postmaster@bearsgrad.com, postmaster@bugrad.com, postmaster@bigbearsfan.com. Also on June 13, 2019, 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 July 8, 2019.
Additional Submission by the Complainant was received on July 15, 2019.
On July 15, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado as Panelist.
Additional Submission by the Respondent was received on July 22, 2019.
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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant argues that the disputed domain names <baylorfanatic.com>, <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com> are under common control, in spite of the fact that the domain names <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com> have James Perry as the Registrant and the domain name <baylorfanatic.com> is registered with a privacy service.
That is because the disputed domain names are all being offered in connection with a vanity email address service on the website at gradmail.com.
The Complainant also argues that the disputed domain names are identical or confusingly similar to Complainant’s Baylor marks.
The complainant argues that the disputed domain names incorporate the Baylor marks with the addition of generic terms such as “fanatic” and “grad” which could be associated with the University.
Furthermore, the Complainant alleges that the Respondent has no rights nor legitimate interests in the disputed domain names, considering that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of such. In addition, the Complainant claims that the Respondent is not commonly known by the domain names at issue nor it is licensed or authorized by the Complainant to use the Baylor marks.
At last, the Complainant argues that the Respondent registered and is using the domain names in bad faith, in order to attract fans of Baylor to Respondent’s email vanity service.
The Complainant argues that the lack of any intellectual property rights in name of the Respondent in relation to the disputed domain names and his use of federally registered marks that are neither Respondent’s legal name nor a name commonly used to identify Respondent proves the bad faith in use and registration by the Respondent.
B. Respondent
The Respondent argues that the disputed domain names were all registered in good faith, with the purpose of offering vanity email address graduates of schools having Baylor-formative or Bears-formative names (or mascots) associated with their school.
The Respondent also claims that its registration and use of the disputed domain names is also fair considering that the disputed domain names pay tribute to Complainant, being considered a “fan site” type of use, considered by the several WIPO Panels as legitimate interests.
Moreover, the Respondent submits that Complainant’s alumni have an implied license to use the Complainant’s marks under the first sale doctrine.
The Respondent also argues the Doctrine of Laches in relation to the <bugrad.com>, <bearsgrad.com>, <baylorgrad.com>, as the latest was registered May 29, 2008 and Complainant delayed over ten years to bring action against these disputed domain names.
Finally, the Respondent argues that the Complainant has not met the burden of proof required under Policy ¶ 4(a)(i), as Complainant only alleges that it has a trademark rights over the Baylor marks and does not prove that each dispute domain name is confusingly similar to the Complainant’s marks. The Respondent also affirms that the Complainant did not present enough evidence of the “bad faith in registration and use” claim, having only attached a couple of screenshots from the websites redirected by the disputed domain names.
Respondent also claims that its use and registration is fair use and the words “bear” and “baylor” are commonly used in similar institutions to Complainant and that Complainant’s marks are generic.
C. Additional Submissions
In its Additional Submission, the Complainant affirms that it is well-established that the “registration of a mark with the USPTO is sufficient to establish rights in a mark.” The Complainant also quotes previous UDRP proceeding which held that Baylor has established rights in the Baylor Marks sufficient for a UDRP proceeding based on its registrations with the USPTO.
The Complainant also reaffirms that the use of the Complainant’s marks added by generic terms such as “fanatic” and “grad” increase the confusion with the Complainant’s marks, considering the Complainant’s educational services.
The Complainant refutes the Respondent’s legitimate interest claim based on a previous Panel's decision that found that a respondent’s use of generic terms like “fan” in a domain name that incorporates the Baylor Marks still renders the domain name identical or confusingly similar.
The Complainant further maintains that Respondent’s listing of the domain names at issue in connection with a drop-down menu on its gradmail.com website specifically designated for “Baylor University” exacerbates the confusing similarities to the Baylor Marks.
Complainant also argues that Respondents registration and use of the disputed domain names does not compare to “fan sites” since there is no nominative fair use when a vanity email address incorporates a trademark and uses it in order to capitalize on its trademark value.
The Complainant also alleges that Respondent’s use of the disputed domain names is indeed commercial as Respondent would be charging for its services. In addition, the Complainant argues that the Respondent’s laches argument is strongly disfavored as a defense to claims under the Policy as well as that the first sale doctrine does not apply to the case.
In the Additional Submission filed by the Respondent, the Respondent added that the abbreviation “BU” is not unique to, or evenly primarily identified with, the Complainant – nor even is the BU abbreviation in connection a bear mascot, naming other Institutions identified by the BU abbreviation.
The Respondent further alleges that it does not charge for its services, and that the screenshot of the website <gradmail.com> presented by the Complainant in Exhibit A of the Complainant’s Additional Submission were taken in a brief period of time (during a period of only a few weeks in 2018).
Moreover, the Respondent affirms that it is only facilitating use of the disputed domain names by graduates of schools wanting to pay tribute to schools of their liking, offering a similar service to the ones provided by GoDaddy. In this sense, the Respondent reiterates that the Complainant was not able to prove confusingly similarity as well as that there is evidence of good-faith use by the Respondent.
The Complainant is the University founded in 1845, located in Waco, Texas, chartered by the Republic of Texas. It is the oldest operating institution of higher learning in Texas and is the largest Baptist university in the world.
The Complainant is the owner of trademark registrations for the BAYLOR and BAYLOR BEARS marks, such as trademark reg no. 1,465,910, for the BAYLOR mark, and reg no. 1,467,391, for the BAYLOR BEARS mark, both registered since November 1987 before the USPTO.
The bear has served as Baylor’s mascot since 1914 and is a symbol of the University.
The Complainant is also the owner of the domain name <baylor.edu>, registered since 1989.
The disputed domain names were registered as follows: <bugrad.com> was registered September 5, 2003, <bearsgrad.com> was registered August 21, 2007, <baylorgrad.com> was registered May 29, 2008, <bigbearsfan.com> was registered March 26, 2016, and <baylorfanatic.com> was registered August 23, 2018.
The disputed domain names <baylorfanatic.com>, <bugrad.com>, <bearsgrad.com> and <bigbearsfan.com> currently all resolve to the website hosted by the domain name <gradmail.com>, which provides vanity email addresses to apparently anyone that subscribes to the Respondents services. The disputed domain name <baylorgrad.com> does not resolve to any websites.
The Complainant has sent a demand letter to Respondent on November 2018, conveying its objections to the use of the disputed domain names. However, the Respondent did not reply to the demand letter.
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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In the current proceedings, the Panel finds that the Complainant has sufficiently presented evidence that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
That is because, although <baylorfanatic.com> is registered with a privacy service, the domain is being offered, along with the other disputed domain names, in connection with a vanity email address service on the website at <gradmail.com>. The domain names that list James Perry as the registrant include the registrant email address <domains@gradmail.com>, evidencing that James Perry is likely the registrant of all five domain names in dispute. Moreover, all five domain names are registered with the same registrar, GoDaddy.
Thus, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Compl. Ex. C. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”
As disclosed through Annex C of the complaint, the Complainant owns trademark registrations for the BAYLOR mark and BAYLOR BEARS, such as trademark reg no. 1,465,910, for the BAYLOR mark, and reg no. 1,467,391, for the BAYLOR BEARS mark, both registered since November and December 1987 before the USPTO. Moreover, the Complainant is also the owner of trademark reg. no. 1,468,277 for the BU mark before the USPTO, also registered since 1987.
Although the Respondent argues that Complainant’s marks are generic and that are other Institutions that make use of these “baylor” and “bears” terms and the BU abbreviation, the Panel finds that the trademark certificates presented by the Complainant provide enough evidence of the ownership regarding said trademark registrations, which are unequivocally incorporated by the disputed domain names.
In this sense, the disputed domain names are all composed of reproductions of the Complainant’s marks, with the mere addition of generic terms such as “fan” and “fanatic” and “grad”, which are not enough to prevent the confusion and similarity with the Complainant’s registered trademarks.
Therefore, the Panel finds that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
There is no evidence that the Respondent owns any rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s marks. In this sense, the Complainant has made prima facie case that the Respondent lacks legitimate interests in the disputed domain names.
Furthermore, from the documents attached to the complaint, the Respondent failed to present any trademark rights or submit any documents that prove it owns any legitimate rights over the disputed domain names.
Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent’s <baylorfanatic.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com> redirects to a vanity email address creation website, while <baylorgrad.com> does not resolve to any substantive content.
Unlike what Respondent argues, use of a disputed domain name to attract Internet users and redirect them to a business venture unrelated to the Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Additionally, inactive use of a disputed domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”)
Moreover, the services offered by the Respondent (vanity email addresses) cannot be considered analogous to tribute sites or fan sites, not being of noncommercial use, considering Exhibit A of Complainant’s Additional Submission, evidence that the Respondent did charge for said services.
Thus, the Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Respondent been licensed or authorized by the Complainant to use Complainant’s marks, as well as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain names were registered and are being used in bad-faith considering that Respondent has registered such with the intention to provide vanity email addresses that clearly are associated with the Complainant’s marks and services, profiting off Complainant’s marks without any authorization from the Complainant.
The Respondent is not related or an associated entity to the Complainant. Thus, it lacks legitimate rights over the disputed domain names, which incorporate the Complainant’s marks.
Moreover, the Respondent registered the disputed domain names in order to provide Internet users, under the payment of a subscription fee of US$ 29.95 per year (see Exhibit A of Complainant’s Additional Submission) – therefore, with commercial gain – vanity email addresses to anyone, being them associated to the Complainant’s University or not.
In this regard, the Respondent counter-argues that it does not charge its subscribers anymore, having the Complainant misinterpreted the content of Complainant’s <gradmail.com> website.
In spite of the fact that the current content of Respondent’s website does not indicate the charge of any fees, the Panel finds that the Respondent did register the disputed domain names with the purpose of obtaining commercial gain.
Therefore, Respondent registered the disputed domain names to attract Internet users for commercial gain. Use of a disputed domain name to confuse Internet users into believing an affiliation exists between Complainant and Respondent and to divert Internet user seeking complainant to respondent’s own website for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”)
In addition to that, the Respondent not only has registered the disputed domain names, which are associated with the University administrated by the Complainant, but also several other domain names, associated with other educational institutions, having the Respondent established a pattern of registering infringing domain names to profit of such under Policy ¶ 4(b)(ii).
Finally, the Respondent has never been authorized by the Complainant to register/use its marks and Respondent’s infringing use of Complainant’s marks could only be done in bad faith. Registration of a disputed domain name that uses a mark that respondent has no connection with can be evidence of bad faith under Policy ¶ 4(a)(iii). See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”). Here, Complainant points to the fact that Respondent is not known by the disputed domain name, nor was ever authorized by Complainant, the rightful owner of the Baylor marks. See Compl. Ex. C.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) 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 <baylorfanatic.com>, <baylorgrad.com>, <bearsgrad.com>, <bugrad.com>, and <bigbearsfan.com> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: July 23, 2019
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