DECISION
Texas A&M University v. Metodi Darzev / Tool Domains
Claim Number: FA2310002064423
PARTIES
Complainant is Texas A&M University ("Complainant"), represented by John C. Cain of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Metodi Darzev / Tool Domains ("Respondent"), Sofia, Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aggiecorps.org>, registered with Sav.com, LLC - 9.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 2, 2023; Forum received payment on October 2, 2023.
On October 9, 2023, Sav.com, LLC - 9 confirmed by e-mail to Forum that the <aggiecorps.org> domain name is registered with Sav.com, LLC - 9 and that Respondent is the current registrant of the name. Sav.com, LLC - 9 has verified that Respondent is bound by the Sav.com, LLC - 9 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 October 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2023 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@aggiecorps.org. Also on October 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
The Complainant made the following contentions.
1. The Complainant is a well- known United States university that for more than a century has provided a wide variety of quality educational services, college sports and entertainment services. Among the services provided by the Complainant are quality educational and leadership products and services, its Corps of Cadets and associated products and services.
2. The Complainant has provided those services under a series of trademarks which have become strongly identified with the Complainant for many years and the Complainant has come to enjoy substantial goodwill and fame in those marks ("the AGGIE marks").
3. The AGGIE marks include several trademarks that are registered with the United States Patent and Trademark Office ("USPTO") ( "the federal trademarks") and several trademarks that are registered with the Office of the Texas Secretary of State ("the Texas trademarks").
4. The federal trademarks and the Texas trademarks include a series of trademarks for AGGIE, AGGIES,TEXAS AGGIES, TEXAS A&M AGGIES, GIG 'EM AGGIES, AGGIEBOUND, AGGIELAND and WELOME TO AGGIELAND ( "the AGGIE marks").
5. The federal trademarks include the TEXAS A&M AGGIES trademark, registered number 3,970,755, registered with the USPTO on May 31, 2011.
6. The Texas trademarks include the AGGIE trademark, registered with the Office of the Texas Secretary of State on April 13, 2010.
7. The federal trademarks and the Texas trademarks have come to be seen and accepted as a composite mark for AGGIE CORPS.
8. The Complainant also has and has had at all material times common law trademark rights in each of the AGGIE marks.
9. The Respondent registered the <aggiecorps.org> domain name ("the disputed domain name") on April 30, 2023.
10. In so doing, the Respondent has incorporated in the disputed domain name the Complainant's composite mark for AGGIE CORPS and its constituent marks and the Texas AGGIE trademark without any authority to do so and has added the gTLD ".org".
11. The disputed domain name is identical to the Complainant's composite AGGIE CORPS trademark. In particular, the Respondent has incorporated in the domain name the entirety of that mark with the only addition being the gTLD ".org", which does not negate a finding of identicality with the mark.
12. The Respondent so registered the disputed domain name without the knowledge or permission of the Complainant.
13. The Respondent has caused the disputed domain name to resolve to an inactive or unpopulated website, save that it contains offerings described on the website as "Apply for Student Loan", "Best Student Loans for College" and "Texas Longhorns". The Respondent has also advertised the domain name for sale and has invited prospective buyers to submit a "Price Offer ".
14. By that means, the Respondent has infringed the Complainant's AGGIE marks.
15. The Respondent has no rights or legitimate interests in the disputed domain name.
16. That is so because the Respondent:
(a) has not used or made any 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;
(b) is not commonly known by the domain name;
(c) has not used the domain name for a noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish any of the AGGIE marks; and
(d) is not in any way affiliated with the Complainant.
17. The Respondent has registered and is using the domain name in bad faith.
18. That is so because:
(a) the website to which the domain name resolves is inactive and contains apparent click-through links;
(b) the website may well contain pay per click links that generate fees for the Respondent;
(c) the Respondent has used a privacy service to hide its identity;
(d) the Respondent had actual notice of the Complainant's rights in the AGGIE marks including the identical Texas AGGIE trademark;
(e) the domain name is likely to create confusion with the AGGIE marks;
(f) the AGGIE marks are so well known that the Respondent knew or should have known of the mark and that the domain name would be identical or confusingly similar to it;
(g) the domain name was registered to disrupt the Complainant's business and calculated to give rise to confusion as to the source of the Respondent's website.
(h) The Respondent is not in any way affiliated with the Complainant.
Accordingly it is submitted that the Complainant has established all of the criteria it is required to establish for its claim to succeed, it is entitled to the relief it seeks and the disputed domain name should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. The Complainant is a well- known United States university that provides quality educational, college and sports entertainment and related services including its Corps of Cadets and associated goods and services.
2. The Complainant has established its rights to a series of trademarks registered with the United States Patent and Trademark Office ("USPTO") ( "the federal trademarks") and the Office of the Texas Secretary of State, ("the Texas trademarks") including trademarks for AGGIE, AGGIES,TEXAS AGGIES, TEXAS A&M AGGIES, GIG 'EM AGGIES, AGGIEBOUND, AGGIELAND and WELOME TO AGGIELAND ("the AGGIE marks") and forming a composite mark for AGGIE CORPS.
3. The federal trademarks include the TEXAS A&M AGGIES trademark, registered number 3,970,755, registered with the USPTO on May 31, 2011.
4. The Texas trademarks include the AGGIE trademark, registered with the Office of the Texas Secretary of State on April 13, 2010.
5. The Complainant also has and has had at all material times common law trademark rights in each of the AGGIE marks.
6. The Respondent registered the <aggiecorps.org> domain name ("the disputed domain name") on April 30, 2023.
7. The disputed domain name is identical to the composite mark for AGGIE CORPS and confusingly similar to each of the AGGIE marks.
8. The Respondent has no rights or legitimate interests in the disputed domain name.
9. The Respondent has registered and used the disputed domain name in bad faith.
10. The Complainant has established the elements required to be proved under the Policy and the disputed domain name will therefore be transferred from the Respondent to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a
trademark or service mark on which it may rely in this proceeding. That is so because Policy ¶ 4 (a)(i) provides that the Complainant must show that the dispute domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."
The evidence shows that the Complainant has acquired a composite mark for AGGIE CORPS by virtue of the combined effect of its ownership of all of the federal and Texas State registrations and Panel accepts that this is so.
The evidence also shows that the Texas trademarks include the AGGIE trademark, registered with the Office of the Texas Secretary of State on April 13, 2010. That evidence includes a certificate from the Secretary of State which the Panel has examined and finds that it is evidence of the registration of the mark.
Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). In that regard, the Complainant correctly says that many prior UDRP decisions have found that a US State registered trademark is sufficient to show a complainant's rights in a mark.
Since the Complainant has registered and established its rights in all of the federal and State registrations going to make up the composite AGGIE CORPS trademark through its registration and use of those marks, the Panel finds that the Complainant has rights in that mark under Policy ¶ 4(a)(i).
The Panel also finds that as the Complainant has registered and established its rights in the Texas State mark for AGGIE, the Complainant has rights in that trademark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's composite AGGIE CORPS mark or any of the constituent marks going to make up that mark. The Complainant argues that the disputed domain name is identical to its composite AGGIE CORPS trademark because it consists of the mark itself to which has been added ".org", a generic top level domain. Generic top level domains are generally ignored for present purposes as all domain names require a top level domain. Thus, the domain name is identical to the AGGIE CORPS trademark.
For reasons of completeness, the Panel also finds that the domain name is confusingly similar to the Texas State mark for AGGIE. That is so because the domain name includes the AGGIE mark in its entirety to which has been added the generic word "corps". Adding a generic word such as "corps" to a trademark simply emphasizes the notion that the domain name is meant to invoke the trademark and in the present case the Corps of Cadets for which the Complainant is well-known. Thus, internet users would naturally assume that the domain name related to Corps of Cadets of the Complainant and that it was being used legitimately.
Indeed, it is probably also true to say that the domain name is confusingly similar to each of the federal and State registrations that make up the composite mark, i.e., the AGGIE marks. The Complainant has proved its entitlement to each of that family of registered trademarks as each of them is "a trademark or service mark in which the complainant has rights." They are AGGIE, AGGIES, TEXAS AGGIES, TEXAS A&M AGGIES, GIG'EM AGGIES, AGGIEBOUND, AGGIELAND, WELCOME TO AGGIELAND and AGGIE BUCKS. The evidence is that each of those trademarks has become strongly identified by the public with the Complainant and that the Complainant enjoys both substantial goodwill and fame in all of them. In the Panel's opinion, the domain name is confusingly similar to each of the AGGIE marks. That is verified by comparing the domain name with each of those marks. To take one of them at random, the expression TEXAS A&M AGGIES can only mean the well-known body of students and alumni at the Complainant known as Aggies, including its Corps of Cadets and the domain name can only mean the Corps of Cadets of the Complainant. The two expressions are therefore similar and confusing so, as the reader is left with the confusing notion that the domain name might and probably does mean the Corps of Cadets at the Complainant and that it is therefore official or at least approved, when in fact it is neither.
In particular, it will be noted that each of the AGGIE marks includes the word AGGIE which is the first and dominant word in the domain name , or its plural version AGGIES, indicating that the domain name has been constructed to invoke the concept associated with that word, which must mean the students and alumni of the Complainant and probably all of the activities that the public associate with the Complainant, including its Corps of Cadets.
Accordingly, the domain name would be seen as invoking each of the family of marks and therefore as being confusingly similar to all of them.
In total, as well as the domain name being identical to the composite AGGIE CORPS mark and as well as its being confusingly similar to the State registered AGGIE trademark, the domain name is confusingly similar to each of the foregoing family of marks.
Indeed it is hard to see how the Respondent could have found a more effective way of invoking the Corps of Cadets at the Complainant in its domain name other than by registering the domain name in the form that it has used, i.e., by using the popular name of the student and alumni body, Aggie, and attaching the word "corps" which must mean the Corps of Cadets at the Complainant.
The Panel therefore finds that the disputed domain name is identical to the Complainant's composite mark, confusingly similar to the State mark for AGGIE and confusingly similar to each and every of the large family of AGGIE marks registered by the Complainant.
The Complainant has thus more than made out a strong case for the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a)The Respondent has chosen to take the Complainant's composite mark for AGGIE CORPS and to use it in its entirety in registering the disputed domain name, without permission, adding the gTLD ".org" and generating the clear impression that it is referring to and invoking the Corp of Cadets of the Complainant.
(b) The Respondent has also taken the Complainant's State registered mark for AGGIE and added the generic word "corps", making the domain name confusingly similar to that mark.
(c) The Respondent has also taken the large family of AGGIE marks registered by the Complainant and devised a domain name that the Panel has found is confusingly similar to each of those marks.
(d) The Respondent registered the disputed domain name on April 30 July 23, 2023 despite the fact that it had no right to do so and no right to use the trademark in a domain name or in any other manner.
(e) The evidence is that the Respondent has caused the disputed domain name to resolve to an inactive or unpopulated website, save that it contains offerings described on its website as "Apply for Student Loan", "Best Student Loans for College" and the services covered by the expression "Texas Longhorns".
(f) That use of the domain name shows that the Respondent's intention was to trade on the goodwill associated with the Complainant's ownership of all of the foregoing trademarks and to use that goodwill solely for the Respondent's own financial benefit and the benefit of the third parties who, according to the Respondent, would provide the student loans and the services covered by the expression "Texas Longhorns".
(g) The use of the domain name also included offering the domain name for sale, clearly for the sole benefit of the Respondent and going as far as providing, in one capture of the website seen by the Panel, a convenient form for prospective buyers to complete and provide a "Price Offer" for the domain name.
(h) None of the foregoing conduct of the Respondent could conceivably give rise to a right or legitimate interest on the part of the Respondent and it negates any possibility that it could give rise to any such right or legitimate interest.
(i) The evidence also shows that the Respondent has not used or made any 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 within the meaning of Policy ¶4 (c)(i).
(j) The evidence also shows that the Respondent has not been commonly known by the domain name within the meaning of Policy ¶ 4 (c)(ii).
(k) The evidence also shows that the Respondent has not used the domain name for a noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish any of the AGGIE marks within the meaning of Policy¶ 4(c)(iii). The evidence shows that the domain name was clearly intended to be used by the Respondent for an improper purpose and more likely than not to be used for a financial end, which is commercial in every way.
(l) The Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.
All of these matters go to make out the prima facie case against the Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that the Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on general grounds of bad faith as well as the specific grounds articulated in the Policy.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
(a) the Complainant has submitted persuasive evidence showing that the Respondent has registered and is using the domain name in bad faith as it was not and is not authorized to use the AGGIE marks in the manner aforesaid or at all. In particular, in registering the domain name the Respondent used a privacy service to hide its identity which is an indicia of bad faith.
(b) the Complainant's trademark rights arose well prior to the Respondent's registration of the disputed domain name.
(c) the fame of the AGGIE marks and its services are and were such that the Respondent had actual knowledge of the Complainant and its trademarks when it registered the domain name and that the domain name it was registering would be identical and/or confusingly similar to those marks.
(d) the case clearly falls within Policy¶4(b)(i) as the Respondent's intention was to sell the domain name for valuable consideration. This is made apparent because the Respondent included on its website an announcement that the domain name was for sale and provided a convenient form for prospective buyers to complete and provide a "Price Offer" for the domain name.
(e) the case also falls within Policy¶4(b)(iii) as it is clear that the Respondent registered the domain name to disrupt the Complainant's business, as the website sought to divert users away from the Complainant and to parties whom the Respondent asserted could provide services covered by the expressions on the website as "Apply for Student Loan", "Best Student Loans for College" and "Texas Longhorns". The Respondent thus made itself a competitor of the Complainant as the Complainant already offered "Financial Aid" on its own website at https://www.tamu.edu.
(f) it is apparent from the evidence that the Respondent sought to create confusion with the AGGIE marks as to the source, sponsorship, affiliation or endorsement of the services being offered on its website within the meaning of Policy 4¶4(b)(iv). In that regard, the website contains apparent click-through links to services offered by third parties. The clear intention behind the Respondent's conduct was to give the false impression that it was the Complainant itself that was using its own trademarks to offer to those who saw its links services described on its website as "Apply for Student Loan", "Best Student Loans for College" and "Texas Longhorns". Such conduct clearly amounts to attempting to create confusion with the Complainant in breach of Policy ¶ 4(b)(iv).
(g) It is apparent from the commercial nature of the website that the Respondent was prepared to use the domain name and the website to promote pay per click links that would generate fees or some other financial benefit for the Respondent.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the AGGIE marks and in view of the conduct that the Respondent engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
The Complainant has also cited and relied on a number of prior UDRP decisions that support its contentions.
The Complainant has thus made out its case and is entitled to the relief it seeks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aggiecorps.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: November 2, 2023
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