WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baylor University and Baylor College of Medicine v. Alex Yip
Case No. D2003-0414
1. The Parties
The Complainants are Baylor University, a Texas Non-profit corporation having its principle place of business at Waco, Texas, United States of America, and Baylor College of Medicine, a Texas non-profit corporation having its principle place of business at Houston, Texas, United States of America (collectively referred to as "Baylor" or "Complainants") represented by Fulbright & Jaworski LLP, Austin, Texas, United States of America.
The Respondent is Alex Yip, an individual, of Bedford, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name at issue is <bayloreye.org>. <bayloreye.org> is registered with OnlineNIC, Inc., d/b/a/ OnlineNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") via email on May 29, 2003, and hard copy on June 4, 2003. On May 29, 2003, the Center transmitted by email to OnlineNIC, Inc. d/b/a OnlineNIC.com, a request for registrar verification in connection with the domain name at issue. On May 30, 2003, OnlineNIC, Inc., d/b/a OnlineNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint via email on June 18, 2003, and via hard copy on June 20, 2003. On June 23, 2003, the Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2003. Respondent filed no Response. Notification of Respondent Default was sent by the Center on July 15, 2003.
The Center appointed the undersigned, Gaynell Methvin, as the Sole Panelist in this matter on July 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center granted an extension of the date the decision on the Complaint is due until August 15, 2003.
4. Factual Background
Given the Respondentís failure to file a Response in this case, the Panel accepts as true and accurate, all statements of fact made by the Complainants in its submissions (see: Talk City Inc. v. Robertson, WIPO Case No. D2000-0009 (February 24, 2000); Eauto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000)). Accordingly, the following facts are not contested:
4.1. Complainant, Baylor University, is the oldest institution of higher education in the state of Texas. Baylor University offers, and licenses others who offer, a wide variety of products and services under the mark BAYLOR, and various other marks that include the word BAYLOR (hereinafter the "BAYLOR Marks"). These products and services include, for example, educational services, entertainment services such as sporting events and fine art productions, health care services, fund raising services, computer services, and licensed consumer products such as clothing, school supplies, and many other items.
4.2 Baylor has continuously used the BAYLOR Marks in commerce for many years. Baylor uses its BAYLOR Marks extensively in advertising and promotional materials for its various products and services, and operates a website at "www.baylor.edu", where it promotes many of its products and services. As a result of Baylorís long and extensive use of its BAYLOR Marks, the BAYLOR Marks have amassed enormous good will and the public knows and respects the BAYLOR Marks and associates the with Baylor and its high quality products and services. As a result of these efforts, the mark BAYLOR has become famous. See Baylor University v. Intíl Star, Inc., 61 U.S.P.Q.2d 1700, 1701 (W.D. Tex. 2001) (finding the BAYLOR Mark to be distinctive and famous).
4.3. Baylor owns a number of trademark registrations for the mark BAYLOR for a wide variety of goods and services. Representative examples are included at Tab C of the Complaint and are incorporated herein by reference. All of these registrations are valid, subsisting, and owned by Baylor University.
4.4 Baylor College of Medicine, formerly affiliated with Baylor, became an independent institution in 1969. Baylor licenses various marks containing the word BAYLOR to Baylor College of Medicine, including the marks BAYLOR EYE and BAYLOR EYE CONSULTANTS. Baylor College of Medicine uses these marks in connection with its Department of Ophthalmology, which is internationally known as one of the worldís most advanced centers in eye care, research, education and public service. Baylorís faculty of physicians, who operate under the marks BAYLOR EYE and BAYLOR EYE CONSULTANTS, teach extensively in the U.S. and throughout the world and remain at the fore front of eye care research and education.
4.5. Baylor College of Medicine previously owned the domain name <bayloreye.org>. For approximately two years before Respondent registered the domain name <bayloreye.org>, it had been registered and actively used by Baylor College of Medicine to direct Internet users to its website. Baylor College of Medicine inadvertently allowed the domain name registration to lapse and shortly thereafter (on April 2, 2003), Respondent registered the exact same domain name. The domain name was and still is listed on Baylorís promotional materials, such as brochures.
4.6 After Respondent registered <bayloreye.org>, any search of the site brings the searcher to a web page that read "http://www.bayloreye.org Under Reconstruction" and contains an icon at the bottom of the page that reads "xxx amateursex-oral porn". Clicking on that icon redirects the searcher to pornographic web pages as "www.kunt-fu-free.com", "www.mega-cock-cravers-free.com" "www.stud-club-free.com" and "www.sleazy-flicks-free.com". Respondent owns all of these websites.
4.7 On May 14, 2003, Complainants sent Respondent a letter, by email and U.S. mail, demanding that he cease all use of the domain name <bayloreye.org> and transfer the domain name to Baylor within ten days of his receipt of the letter. The U.S. Post Office returned the letter twice due to incorrect address information. On May 21, 2003, Complainants sent Respondent an email indicating that if they did not receive a response from Respondent by May 23, 2003, they would proceed to file a Complaint under the UDRP. No response has been received from Respondent.
4.8 Respondent has made no demonstrable preparations to use the domain name <bayloreye.org> in connection with a bona fide offering of goods or services. At the time the Complaint was prepared, Respondent had no completed Internet site at the domain name <bayloreye.org>, nor any bona fide offering of goods and services. Respondent had only an "under reconstruction" listing on a web page that contained a "pregnant sex" icon that redirected searchers to a pornographic site owned by Respondent and other sites offering sexually explicit and pornographic material. Respondent has no legitimate connection to Complainantsí famous BAYLOR mark.
4.9 Respondentís name is Alex Yip and he is not commonly known by the names BAYLOR or BAYLOR EYE. He operates no business or other organization under the BAYLOR or BAYLOR EYE names.
5. Partiesí Contentions
5.1 Based, inter alia, on the foregoing undisputed facts, Complainants submit:
(a) that Respondentís domain name is confusingly similar to BAYLOR marks (Policy 4(a)(i));
(b) that the Respondent has no rights or legitimate interests in respect of the domain name (Policy 4(a)(ii)); and
(c) that the Respondent has registered and is using the domain name in bad faith (Policy 4(a)(iii)).
5.2 In addition to the undisputed facts stated above, Complaints also support their contentions with the following arguments and legal precedents:
5.2(a) Respondentís domain name <bayloreye.org> is confusingly similar to the BAYLOR Marks because the "BAYLOR" portion of the domain name is identical to Baylor Universityís famous BAYLOR mark, and "BAYLOREYE" is identical or confusingly similar to the marks BAYLOR EYE and BAYLOR EYE CONSULTANTS. WIPO panels have found that, when a domain name incorporates a distinctive mark in its entirety that creates sufficient similarity between the mark and the domain name to render it confusingly similar. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000).
5.2(b) Respondent has no rights or legitimate interests in the domain name <bayloreye.org>, for several reasons. First, the use of a domain name to redirect the public to the websites described above is not a bona fide use and does not create legitimate rights in the domain name. See Albertsonís, Inc. v. Vinamy, FA 100123 (Nat. Arb. Forum October 27, 2001); Singapore Telecommunications Limited. v. Domain for Sale Ė http://offers.NameRegister.com, WIPO Case No. D2001-1059 (October 12, 2001); MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000).
Next, since Respondent has no connection to Complaintsí famous BAYLOR mark, there is no plausible explanation for Respondentís use of the marks BAYLOR and BAYLOR EYE other than his wanting to trade on the fame and goodwill of Complainants. Such use of a domain name does not constitute a bona fide offering of goods and services. See AltaVista Company v. Geoffrey Fairbairn, WIPO Case No. D2000-0849 (October 13, 2000).
In addition, Respondentís name is Alex Yip and he is not commonly known by names BAYLOR or BAYLOR EYE; he is not making a legitimate noncommercial or fair use of the domain name. Instead, Respondent is using the domain name to misleadingly divert consumers and to tarnish the BAYLOR Marks for commercial gain.
Finally, Respondent is using the domain name <bayloreye.org> to attract Internet users to its pornographic sites and other sites offering sexually explicit material. Internet users searching for BAYLOR EYE or BAYLOR EYE CONSULTANTS will be directed to Respondentís web page, which will mislead the searchers and tarnish and dilute the BAYLOR Marks by giving consumers the impression that Baylor endorsed, sponsored, or is otherwise affiliated with Respondentís website that links to pornographic material. Such use is not legitimate and certainly not fair. See MatchNet plc, D2000-0205; World Wrestling Federation Entertainment,Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000).
5.2(c) Complainants support their position that Respondent registered and is using the domain name <bayloreye.org> in bad faith as follows: First, Respondent has registered the domain name primarily for the purpose of disrupting the business of Complainants. The undisputed facts show that Baylor College of Medicine actively used the domain name <bayloreye.org> to direct Internet users to its website and ophthalmology services for approximately two years. Shortly after the domain name inadvertently lapsed, Respondent registered the exact same domain name and posted a bogus website intended to disrupt Complainantsí business and use of the domain name in connection with its website. There is no other plausible explanation for Respondentís conduct. Next, Respondent engaged in bad-faith activities by using the domain name to intentionally attract, for commercial gain, Internet users to his website as "www.bayloreye.org" by creating a likelihood of confusion with Baylorís marks. Respondent registered and is using the domain name for the purpose of directing consumers looking for Complainants to pornographic websites. Such use constitutes bad faith by itself. See CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000). WIPO panels have consistently found that use of an infringing domain name to redirect users to a pornographic website shows that the respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion under ∂ 4(b)(iv) of the Policy. See Singapore Telecommunications Limited, WIPO Case No. D2001-1059; MatchNet plc, D2000-0205; AltaVista Co., D2000-0849; World Wrestling Federation Enter., Inc., D2000-0256. In addition, Complainants present several arguments in support of their position that Respondent is using the domain name for commercial gain. In addition, Complainants argue that it is extremely likely that the Internet users will be confused as to the source, sponsorship, affiliation or endorsement of Respondentís site "www.bayloreye.org". When searchers looking for Baylor are brought to Respondentís web page, they will immediately see in predominant bold print "http://www.bayloreye.org", instantly giving the impression that Baylor is affiliated with the website, and next see an "Under Reconstruction" heading suggesting that Baylor is in the midst of changing the format of its website. Additionally, Baylorís promotional materials list "www.bayloreye.org" as a place to visit for more information about the services offered by Baylor under the mark. Thus, those consumers especially will believe Baylor is affiliated with the site.
Finally, Complainants argue that under the Policy, the enumerated factors that evidence bad faith are "without limitation." See ∂ 4(b) of the Policy. Here Complainants note that the Panel can look to other circumstances as evidence of bad faith. In particular, this Panel can look to the U.S. Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. ß 1125(d)(1)(B)(i), for additional factors demonstrating bad faith. Complainants then rely on the undisputed facts to show how these facts fit within the ACPA guidelines and support their position that Respondent has registered the domain name in bad faith. Complainants also cite the fact that WIPO panels have concluded that the ACPA can be a useful reference point for interpreting the Policy, and court decisions under the ACPA are natural sources of rules and principles of law to apply in resolving UDRP disputes. See Wal-Mart Stores, Inc. v. WallMartCanadaSucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104 (November 23, 2000).
One additional argument by Complainants on this point must be noted: Respondentís bad faith is also evidenced by his use of false contact information in connection with his registration of the domain name <bayloreye.org>. See 15 U.S.C. ß 1125(d)(1)(B)(i)(VII); Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024 (March 6, 2003). Respondent listed the zip code of "45223" in his registration contact information as the zip code for Bedford, Virginia. The correct area code legitimacy of the registration for Bedford, Virginia is "540." Complainants sent Respondent a cease-and-desist letter addressed to the address provided by Respondent in his registration contact information, but this letter was returned since no such address exists. Respondent has provided the same false contact information for other domain names that he owns.
Respondent did not file a timely response and on July 15, 2003, the Center transmitted Respondent a Notification of Respondent Default. As of the date of this decision, Respondent has still not filed a response to the Complaint.
6. Discussion and Findings
6.1 Procedural Matters relating to the Respondentís Default
Paragraph 4(d) of the Rules provides that the Center shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding.
Paragraph 5(a) of the Rules requires that within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Center.
Paragraph 6(b) of the Rules provides inter alia that if neither the Complainant nor the Respondent has elected a three-member panel, the Center shall appoint, within five (5) calendar days following receipt of the response by the Center, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. This procedure is also set out in paragraph 7(c) of the Supplemental Rules.
Paragraph 6(f) of the Rules provides that once the entire Panel is appointed, the Center shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the Complaint to the Center.
Paragraph 10(b) of the Rules requires the Panel to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
Paragraph 10(c) of the Rules inter alia requires the Administrative Panel to proceed with due expedition.
Paragraph 14 of the Rules sets out the procedure to be followed by the Administrative Panel where either party is in default of the procedures and provides that:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
Having considered the file transmitted to the Administrative Panel by the Center pursuant to paragraph 9 of the Rules, the Administrative Panel finds
● That the Center has complied with paragraph 2(a) of the Rules and has employed reasonably available means calculated to achieve actual notice to the Respondent;
● That the Respondent has been given a fair opportunity to present its case and has not done so;
● That there is no evidence of any exceptional circumstances applying to these proceedings.
In the circumstances, the Panel is required by paragraphs 10(c) and 14(a) to proceed to make a decision on the basis set out in paragraph 15(a) of the Rules.
6.2 Substantive Matters
The Rules, at paragraph 15(a), require the Panel to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainants bear the burden of proof and must establish:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
6.2(i) Complainantsí Trademark Rights; Identical/Confusing Similarity
The Complainant Baylor University ("BU") owns a number of United States trademark registrations for the mark BAYLOR, for a wide variety of goods and services. By reason of its long and extensive use of said marks, the BAYLOR mark has become famous. See Baylor University v. Intíl Star, Inc., 61 U.S.P.Q. 2d 1700,1701 (W.D. Tex. 2001) (finding the BAYLOR mark to be distinctive and famous).
In addition, BU licenses various marks to the other Complainant, Baylor College of Medicine ("BCM"), including the marks BAYLOR EYE and BAYLOR EYE CONSULTANTS. BCM has made extensive use of said marks in connection with rendering eye care, research, education and public service.
Finally, BCM previously owned the domain name <bayloreye.org> which it inadvertently allowed to lapse, but which is still shown on its literature and brochures.
The Panel therefore finds that the trademarks BAYLOR and BAYLOR EYE are well known and that Complainants have exclusive rights to these marks.
Identical/ Confusing Similarity
The domain name at issue, <bayloreye.org>, is identical to the Complainantís trademark BAYLOR EYE. The fact that the domain name is in lower case, as well as containing the extension ".org" does not make it any less similar to the trademark (See Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO Case No. D2000-0008.
Apart from the above, the domain name is also confusingly similar to the Complainant BUís registered trademark BAYLOR.
It is obvious that the domain name <bayloreye.org> is virtually identical to Complainant BU trademark BAYLOR EYE and is certainly confusingly similar to the BAYLOR marks.
6.2(ii) Legitimate Interest of the Respondent
Paragraph 4(c) of the Policy provides 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 the Respondentís rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) that before any notice to the Respondent of the dispute, the Respondentís 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) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainants have made out a prima facie case that the use of the domain name by the Respondent is not a bona fide offering of goods or services, that the Respondent is not commonly known by the domain name, that the Respondent appears to be using the domain name for commercial gain, attracting Internet users to his own and to third party sites offering sexually explicit and pornographic material and that such use is calculated to mislead consumers and to tarnish the marks of the Complainants.
There is no evidence before the Panel in this case that the Respondent has any legitimate interest in the domain name <bayloreye.org> for the purposes of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.
The Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondentís failure to respond to this administrative proceeding, that the Complainants are correct in their assertion that the Respondent has no rights or legitimate interest in the domain name.
6.2(iii) Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
Complainants have very convincingly argued that the Respondent has registered and used the domain name in bad faith. The Panel accepts the reasoning of Complainants that the Respondent has registered and used the domain name for the purpose of disrupting the business of Complainants, for commercial gain; to confuse Internet users as to the source, sponsorship, affiliation or endorsement of his disputed site.
Finally, the Panel accepts that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by using the domain name which is likely to cause confusion with the Complainantsí trademarks and former domain name. The Respondent has used the disputed domain name to attract searchers to another website which contains sexually explicit and pornographic material. In the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainantsí goodwill in their marks.
The Panel decides that the Respondent has registered the domain name <bayloreye.org> which is identical or confusingly similar to the Complainantsí marks, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Panel decides that said domain name <bayloreye.org> should be transferred, as requested in the Complaint, to the Complainant, Baylor University.
Dated: August 15, 2003