WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ohio State University v. Aaron Brooks
Case No. D2021-3674
1. The Parties
The Complainant is The Ohio State University, United States of America (“United States”), represented by Frost Brown Todd LLC, United States.
The Respondent is Aaron Brooks, China.
2. The Domain Name and Registrar
The disputed domain name <buckeyesfootballjersey.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 9, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 8, 2021. 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 invitation to the Complainant to file an amended Complaint stemmed from the fact that the registrant details of the Domain Name were not fully available in the public WhoIs at the time of the submission of the Complaint. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
4. Factual Background
The Complainant is a leading university in the United States. It is the registered proprietor of numerous trade mark registrations covering the various names under and by reference to which it conducts business. One of those names is “Buckeyes”, the name by which the Complainant’s sports teams and students have been known for at least 100 years.
For present purposes it is only necessary to mention two of the Complainant’s registrations, namely:
- United States Trademark Registration No. 1,267,035, BUCKEYES (word) registered February 14, 1984 (application filed September 29, 1982) for a wide variety of goods and services in classes 11, 14, 16, 18, 20, 21, 24, 25, 28, and 41. The goods covered by the registration include sports clothing; and
- United States Trademark Registration No. 1,294,114 O OHIO STATE (word mark in stylised form) registered on September 11, 1984 (application filed September 29, 1982) for a similar range of goods and services (the “Ohio State logo”).
The Complainant’s merchandise, Buckeyes Fan Gear, is marketed online at “The Official Store of the Ohio State University” at “www.gobuckeyes.com”.
The Domain Name was registered on July 19, 2017 and is connected to a website offering what appear to the Panel to be exclusively replica football jerseys worn by former members of the Complainant’s football teams. The home page features prominently at the top of the page a logo closely resembling the Ohio State logo accompanied by the ® symbol. Above it appears a line reading: “Official Ohio State Buckeyes College Football Jerseys Sale Online Store!” A line at the foot of the page reads: “Copyright ©2021 Official Ohio State Buckeyes Jerseys Store. Powered by Official Ohio State Buckeyes Jerseys Store.com.”
The Respondent has previously been the subject of adverse decisions under the Policy in similar circumstances following complaints filed by The Board of Regents of the University of Oklahoma (The Board of Regents of the University of Oklahoma v. aaron brooks, NAF Claim No. FA1808001803101), The Pennsylvania State University (The Pennsylvania State University v. aaron brooks, NAF Claim No. FA1808001803778), the Board of Trustees of Michigan State University (Board of Trustees of Michigan State University v. aaron brooks, NAF Claim No. FA1903001834528), and The Board of Regents of The University of Texas System (The Board of Regents of The University of Texas System v. aaron brooks, NAF Claim No. FA2002001882754). Each of the domain names under dispute in those cases followed the form of the Domain Name, and featuring a name appropriate to the university in question.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its BUCKEYES registered trade mark; that the Respondent has no rights in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark BUCKEYES followed by the words “football” and “jerseys”, and the generic Top-Level Domain (“gTLD”) “.info”.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s registered trade mark is readily recognizable in its entirety in the Domain Name. The addition of the words “football” and “jerseys”, or the gTLD “.info”, do not prevent a finding of confusing similarity.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts (and the Panel accepts) that, contrary to what is said on the Respondent’s website, the Complainant has no association with the Respondent.
As can be seen from section 4 above, the Respondent has a track record of targeting universities in the United States by registering domain names in similar form to that of the Domain Name and using them commercially to represent falsely that the Respondent’s online store is an official store associated with the university. On no basis can such a use of a domain name give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies primarily upon sub-paragraph (iv), which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
As can be seen from section 4 above, the Respondent is using the Domain Name to impersonate the Complainant for commercial gain. The Panel has no reason to doubt that the Respondent registered the Domain Name for the purpose for which it is being used.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <buckeyesfootballjersey.info>, be transferred to the Complainant.
Date: December 14, 2021