Bybaylor.com, Baylorofdallas.com, 4mybaylor.com

The timeline behind bybaylor.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Baylor University v. Above.com Domain Privacy Claim Number: FA1306001504429 PARTIES Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber PLLC, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com>, registered with Above.com Pty Ltd. 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. Darryl C. Wilson, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013. On Jun 12, 2013; Jun 27, 2013, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2013 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@bybaylor.com, postmaster@baylorofdallas.com, postmaster@4mybaylor.com. Also on June 28, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist. 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" 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 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity Complainant is the oldest continually operating higher education facility in Texas—having been chartered by the Republic of Texas in 1845. Complainant has registered the name BAYLOR as a trademark with the United States Patent and Trademark Office ("USPTO"). See Reg. No. 1,465,910 registered on Nov. 17, 1987. Respondent elected to register the <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com> domain names, all of which are confusingly similar to the BAYLOR mark. The addition of a generic top-level domain (“gTLD”) is irrelevant. The geographic term “dallas” is highly associated with the BAYLOR mark. The rest of the terms are generic and add little distinction to the respective domain names. Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interest Respondent is not commonly known by these domain names. Respondent is most likely Transure Enterprise—the notorious cybersquatter. Respondent uses the domain names to promote monetized advertisement websites. These hyperlinks describe various BAYLOR educational services, yet each resolves to a website that is unaffiliated with Complainant. Respondent requested $900.00 from Complainant, in exchange for the domain names. Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration Respondent seeks to sell these domain names for $900.00, an amount clearly in excess of out-of-pocket expenses. Respondent is preventing Complainant from illustrating its mark in domain names, as seen through its history of bad faith registration. Respondent uses the parkdns@gmail.com e-mail address to do business. This e-mail address has been associated with Transure Enterprises, an entity that seen 165 proceedings brought against it. Respondent is intentionally attracting Internet users to its websites in hopes of confusing them into clicking on the monetized hyperlinks under the assumption that these hyperlinks are associated with Complainant. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant is Baylor University, the oldest continually operating institution of higher learning in Texas and the largest Baptist university in the world. Complainant owns the mark BAYLOR which it has continually used as a mark since at least as early as 1987. Complainant also owns several related marks in the BAYLOR family which it uses extensively in connection with education and medical related services both in real space and in cyberspace on its website <mybaylor.com>. Respondent is Above.com Domain Privacy which list its address as Victoria, Australia. Respondent’s registrar is listed as having the same address. Respondent registered the disputed domain names on the following dates; <bybaylor.com>: May 26, 2012, <baylorofdallas.com>: June 10, 2012, and <4mybaylor.com>: July 3, 2012. DISCUSSION 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. 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.”). Identical and/or Confusingly Similar Complainant explains that it is a university that is well known throughout the United States, and especially well-known in Texas—the home of Complainant since 1845. Complainant states that it has registered the BAYLOR name as a trademark with the United States Patent and Trademark Office ("USPTO"). See Reg. No. 1,465,910 registered on Nov. 17, 1987. The Panel finds that Complainant’s registration of the BAYLOR mark secures its rights in the mark, despite Respondent’s use of a privacy service to potentially mask its true location. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Complainant also argues that Respondent registered the <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com> domain names, all of which are confusingly similar to the BAYLOR mark. Complainant notes that the addition of a gTLD is irrelevant. Complainant believes that the geographic term “dallas” increases the confusing similarity of the domain name—given Baylor University’s presence near Dallas metropolitan area. Complainant claims that the rest of the terms are generic and add little distinction to the respective domain names. The Panel finds that the gTLD is irrelevant. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel also finds that although Complainant’s academic institution is not located in Dallas itself, the proximity of the Waco-based university to the greater Dallas metro-area enhances the confusing similarity of the domain name. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel further finds that the terms “my,” “by,” or “of,” as well as the use of the numeral “4” to mean “for,” are generic terms that add no distinction to the domain name’s under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see alsoYahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). The Panel finds that all of the domain names in dispute are confusingly similar to the BAYLOR mark under Policy ¶ 4(a)(i). Respondent makes no contentions with regards to Policy ¶ 4(a)(i). The Complainant has proven this element. Rights or Legitimate Interests The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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). The Complainant has met this burden. Complainant asserts that Respondent is not commonly known by these domain names. Complainant believes that Respondent is most likely Transure Enterprise—the notorious cybersquatter. The Panel notes that the WHOIS information lists the “Above.com Domain Privacy” service as the registrant for all of the domain names. The Panel further notes that Respondent’s response to the cease-and-desist letter is signed by “Peter” and addressed from an e-mail of “Mr Smith.” See Complainant’s Ex. F. The Panel finds that Respondent has made no attempt to prove it is commonly known by any of these domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by any of the domain names in dispute. Complainant also argues that Respondent uses the domain names to promote monetized advertisement websites. Complainant claims that these hyperlinks describe various BAYLOR educational services, yet each resolves to a website that is unaffiliated with Complainant. The Panel notes that each of the domain names resolve to generic websites that promote various services that range from BAYLOR mark services, to wholly unrelated goods such as “Vibration Machines – Sale,” “Austin Pet Boarding,” and “Real Estate.” See Complainant’s Ex. G. The Panel finds that the use of all of the <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com> domain names to send Internet users to a website that exists to generate hyperlink advertisement revenue for Respondent is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant also notes that Respondent requested $900.00 from Complainant, in exchange for the domain names. The Panel notes that an individual known as “Mr Smith <parkdns@gmail.com>,” responded the Complainant’s cease-and-desist letter sent to the listed WHOIS contact, and stated that “I am still willing to resolve this amicably with a realistic reimbursement,” noting that Respondent wanted “US$900.” See Complainant’s Ex. F. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (the panel determined that the respondent’s immediate willingness to sell off its disputed domain names could be used as evidence to conclude that the respondent truly lacked any Policy ¶ 4(a)(ii) right or legitimate interest in the domain name.). The Panel finds that Respondent’s offer to sell under the circumstances asserted indicates that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). Respondent makes no contentions with regards to Policy ¶ 4(a)(ii). Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. The Complainant has proven this element. Registration and Use in Bad Faith Complainant argues that Respondent seeks to sell these domain names for $900.00, an amount clearly in excess of out-of-pocket expenses. The Panel again notes Respondent’s offer to sell the domain names to Complainant for what Respondent claims is the amicable amount of $900.00. See Complainant’s Ex. F. The Panel finds that if Respondent registered and used these domain names for no other purpose than to await a time when Respondent could sell off these domain names to Complainant such behavior indicates bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant also argues that Respondent is preventing Complainant from illustrating its mark in domain names, as seen through its history of bad faith registration. Complainant notes that Respondent uses the parkdns@gmail.com e-mail address to do business. Complainant claims that this e-mail address has been associated with Transure Enterprises, an entity that has seen 165 proceedings brought against it. The Panel notes that Complainant points to AutoZone Parts, Inc. and ALLDATA LLC v. Shu Lin c/o Shu Lin Co aka Host Master c/o Transure Enterprise Ltd, Case No. FA1330042 (NAF August 3, 2010), a case in which the response was submitted through the same parkdns@gmail.com domain name. Complainant finally elaborates on its belief that Respondent is intentionally attracting Internet users to its websites in hopes of confusing them into clicking on the monetized hyperlinks under the assumption that these hyperlinks are associated with Complainant. The Panel notes that while some of the hyperlinks on these disputed domain names send Internet users through to BAYLOR related websites, many take the Internet user to a competing educational service or to websites that promote wholly unrelated goods. See Complainant’s Ex. Univ. 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.”). The Panel finds that such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Respondent makes no contentions with regards to Policy ¶ 4(a)(iii). The Complainant has proven this element. DECISION Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED. Accordingly, it is Ordered that the <bybaylor.com>, <baylorofdallas.com>, and <4mybaylor.com> domain names be TRANSFERRED from Respondent to Complainant. Darryl C. Wilson, Panelist Dated: August 1, 2013 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.