revenge.com

Baylor files lawsuit over trademark abuse in websites using name, mascot

By: Travis Measley

Posted: 2/27/08

Baylor University joined the list of Texas universities to throw their hat into the ring of copyright and trademark infringement cases, filing a dispute involving five domain names that Baylor officials believe are legally theirs under trademark law.

What separates Baylor from Texas A&M's 12th Man battle, or the University of Texas' fight against the "Saw 'Em Off" logo on merchandise, is that this fight comes against one of their own, and, oddly enough, indirectly involves the Aggies.

On Feb. 6, an administrative proceeding began between Baylor University and John Stipe, a graduate of Baylor, over the lawful ownership of five domain names: baylorbears.biz, baylorbears.name, baylorbears.net, baylorbearssuck.com, and baylorbears.tv.

In response to the proceedings, Stipe redirected all five of the domain names to the A&M athletics website, aggieathletics.com. As of Tuesday, all five of the domain names will go directly to

aggieathletics.com

"After they filed and paid the fees to have the hearing, I redirected the addresses to the Aggie athletics website as a joke," Stipe said. "To me it seemed funny to do that and I look at in the same light as whatever Aggie painted the horns off on the Texas football field long ago."

Steven Moore, the chief marketing officer at A&M, said that he was not aware of the issue, and that A&M wasn't involved in the case. He said he wasn't surprised this was an issue because the domain name business is a tough, slippery one to deal with.

"A lot of people register all types of domain names, forcing anyone that wants them or feels they have legal rights to them to go through the owner to get them," Moore said. "I have no idea what the case here is, but its still a tough situation for both sides."

During the early part of April 2007, Stipe was searching through the expired .net domain names and stumbled across the domain name baylorbears.net, which was available for purchase on the open market to anyone for registration fee.

Stipe said he thought that Baylor used to own the domain name, as well as others. When asked if this were true, Baylor spokeswoman Lori Fogleman said that the University would not comment until after the litigation.

Stipe purchased the domain names about eight months ago and said he planned to construct a website for Baylor students and alumni to communicate.

"I was hoping to create a My Space-like forum for Baylor students and for businesses owned by Baylor alumni, where they could communicate and possible do business across," Stipe said. "Unfortunately, I probably won't be able to get it off the ground due to lack of funds."

In the case, Baylor requests that the panel rule that the domain name registrations be transferred to the University on the grounds that the names at issue are identical or confusingly similar to the University's trademarked "Baylor" and "Baylor Bears."

Under trademark law, the owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. With the changing technology, and the emergence of domain names and their possible trademark issues, the Internet Corporation for Assigned Names and Numbers adopted the Uniform Domain Name Dispute Resolution Policy in 1999.

Under the 1999 resolution, Stipe is required to submit to a mandatory administrative proceeding if "a third party asserts that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights." Baylor will also be forced to prove, under the resolution, that Stipe has no rights or legitimate interest in the domain name and that the name has been registered and used in bad faith.

"In December of 2007, outside counsel sent a notice to Mr. Stipe," Fogleman said. The notice was a cease-and-desist letter, asking Stipe to transfer the domain names to the University under the ICANN regulations. When Stipe did not respond in the set amount of time, Baylor filed with the National Arbitration Forum and an administrative proceeding was put in place to hear the case.

Stipe was required to send a written response to the panel in charge of his case regarding all exhibits against him by Tuesday. Stipe said he sent in his responses and now awaits the panel's decision.

Stipe said that attaching the names to an Aggie website was a way to bring his situation out and make the University look foolish for demanding the names for what Stipe believes is "no apparent reason."

"Now I can say that I transferred the domain names that Baylor wanted to the Texas Aggies. I think it's a huge embarrassment to the administration that these domain names went expired. I can't prove that they are expired, but it seems to me that if they really wanted them, they wouldn't have let them expire."

At Baylor, officials have a policy that attempts to retain all possible domain names that may fall under their trademarks, but they said it's tough and something that is dealt with on a daily basis.

"Our standard practice is not allowing anyone to cybersquat on domain names using the Baylor trademark without authorization," Fogleman said.

To Stipe, the policy seems to contradict the actions of Baylor officials in regards to domain name issues.

"They basically told me that they are protecting their trademarks and that I have to turn the domain names over to them," Stipe said. "Its funny though, because if you look at them, Baylor picks and chooses what they want. The rules don't seem to be presented evenly. If you go to baylorfans.com, it's a site that receives money through ad revenue and Baylor doesn't shut it down."

At A&M, officials said there is no standard university or corporate protocol for domain names.

"It's basically up to a university to regulate its domain names," Moore said. "As far as I know, we have never been involved in a dispute involving domain names, but it's a growing issue everywhere, especially with the low registration costs for names. If we found one we wanted, we would go to the owner and propose an appropriate deal."

From here, the panel will review both the University's claim to the domain names, and the responses sent in by Stipe.

"We hope to have the issue resolved by next month," Fogleman said.