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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Ohio State University v. Ray Owens

Case No. D2018-0416

1. The Parties

Complainant is The Ohio State University of Columbus, Ohio, United States of America (“United States”), represented by Dreitler True LLC, United States.

Respondent is Ray Owens of Piedmont, South Carolina, United States.

2. The Domain Names and Registrar

The disputed domain names <ohiojerseystore.com> and <ohioteamstore.com> (the “Disputed Domain Names”) are registered with GoDaddy, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2018.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 12, 2018. 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.

4. Factual Background

The Complaint concerns the following domain names:

<OHIOTEAMSTORE.COM>, registered by Respondent on November 26, 2016; and,

<OHIOJERSEYSTORE.COM>, registered by Respondent on January 29, 2018.

These domains are registered with GoDaddy, LLC, The registration agreement and the domain dispute policy that applies is annexed as Exhibit B to the Complaint.

Currently, the Disputed Domain Names resolve to websites appearing to sell products bearing Complainant’s trademarks.

The Complainant is a university providing undergraduate and graduate level educational courses and a broad array of programming and events. Complainant owns the following federal registrations on, among other items, clothing and branded merchandise relevant to this proceeding:

- BUCKEYES registration number 1,267,035, registered on February 14, 1984;

- OHIO STATE and DESIGN O, registration number 2,094,602, registered on September 9, 1997;

- OHIO, registration number 4,971,894, registered on June 7, 2016;

- Specific color designs for jerseys, registration number 5,117,747, registered on January 10, 2017, and registration number 5435839, registered April 3, 2018.

Respondent has defaulted in this proceeding.

5. Parties’ Contentions

A. Complainant

Complainant is The Ohio State University (“OHIO STATE”), one of the most famous universities in the United States and, particularly, for these proceedings, one of the most important varsity sports universities in the United States, having had significant success for its football prowess for decades. During that time it has had one of the premiere football programs in the country and known throughout the world. It has won seven national football championships. Only five other universities in the history of collegiate football have won more. OHIO STATE has won 36 Big Ten Championships. As a result of these successes OHIO STATE has had sizeable commercial success with its merchandising and branding programs utilizing the above trademark registrations and related intellectual property rights in its name and jerseys. In the last five years the consumer demand for replica jerseys is over 75,000 replica jerseys, with retail sales over USD 7 Million.

This success has led to substantial counterfeiting. OHIO STATE has put strict control over the sale of its jerseys, including national retailers such as Kohl’s, J.C Penney, Modell’s Sporting Goods, Sports Depot, Dick’s Sporting Goods, Barnes and Noble and at Nike.com. Purchasers are very familiar with these products as they are mostly supporters of OHIO STATE football program.

In May 2016 OHIO STATE learned that counterfeit jerseys were being sold at the website <osuteamstore.com> with the headings “Buckeyes FanShop”. A screen capture of this website and its products shows multiple counterfeit products (Complaint paragraph 11(p) and (q)), which have been verified as counterfeit by its personnel. A cease and desist letter was sent on June 1, 2016 to the WhoIs registrant, Respondent, to which there was no response and that website domain expired on December 13, 2016 and was not renewed.

On November 26, 2016, Respondent created one of the disputed domains in this case, <ohioteamstore.com> and the counterfeit content of the <osuteamstore.com> was transferred

to the “www.osuteamstore.com” website and sold under the heading “Buckeyes FanShop”.

Around August 11, 2017, OHIO STATE through its investigators contacted Respondent who claimed he knew nothing about the “www.ohioteamstore.com” website and that the use of his contact information “was some sort of scam”. Respondent then created the other disputed domain name in this case, <ohiojerseystore.com> on January 29, 2018, a site that directly resolves to “www.ohioteamstore.com” when purchasers go to that site.

OHIO STATE contends the registrations for the Disputed Domain Names are confusingly similar to its trademarks and were done in bad faith solely for pecuniary gain and confusingly similar to the well-known trademarks and related protected designs of OHIO STATE. It further contends that there is no legitimate or good faith use of the disputed domains and Respondent has no legitimate interest in such domains.

Complainant further requests that the two domains be transferred to Complainant.

B. Respondent

Respondent defaulted and did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

With the history presented, the trademarks and related intellectual property rights of OHIO STATE are clearly demonstrated for purposes of this proceeding. Such trademarks are clearly well-known and indeed famous in the United States with OHIO STATE as their only source.

The Disputed Domain Names incorporate the term “ohio” with additional generic terms. In the circumstances of this case, the Panel finds the Disputed Domains to be confusingly similar to Complainant’s registered trademarks.

B. Rights or Legitimate Interests

The facts presented in the Complaint and the supporting factual information in its annexes clearly delineate substantial and properly considered famous trademark rights belonging to OHIO STATE. Nothing in the record indicates Respondent has any rights in the Disputed Domain Names, particularly as it is using those domains intentionally to violate the rights of OHIO STATE, for illegal gains, by intentionally confusing a large number of the consuming public by its use on the websites at the Disputed Domain Names of the Complainant’s trademarks in a deceptive manner which does not accurately disclose the Respondent’s true relationship (or lack thereof) with the Complainant. Philip Morris USA Inc v. Domain Administrator, see Privacyguardian.org / Mario LawrenceDiggsites, WIPO Case No. D2016-2078.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domains.

C. Registered and Used in Bad Faith

The above activity of Respondent has no redeeming purpose. It was an attempt to steal the hard work and developed intellectual property rights of OHIO STATE over decades of deliberate development of a successful branding program, one which is also financially highly successful in its broad marketplace. Research in Motion Limited v Dustin Picov, WIPO Case No. D2001-0492.

Accordingly, the Panel finds the Respondent has registered and is using the Disputed Domains in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(j) of the Policy and Rule 15 of the Rules, the Panel orders that the Disputed Domain Names <ohiojerseystore.com> and <ohioteamstore.com> be transferred to Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: April 26, 2018

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