The Ohio State University v aaron brooks

WIPO Case No. D2025-2140

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Ohio State University v. aaron brooks

Case No. D2025-2140

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.club> 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 May 30, 2025. On June 2, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2025, 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 June 6, 2025.

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 June 12, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2025.

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The Center appointed David Stone as the sole panelist in this matter on July 8, 2025. 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 Complainant is an institution of higher learning established in Ohio in 1870, which provides college and graduate level educational courses, collegiate sporting events and recreation programs, as well as dramatic and musical entertainment events. The Complainant’s athletic programs are well established. It is among only five universities in the United States with National Collegiate Athletic Association (“NCAA”)

championships in baseball, basketball, and football. The Complainant’s school mascot is Brutus Buckeye.

The Complainant owns trademarks and service marks in connection with its athletic teams, including the following (the “Marks”):

- BUCKEYES: United States trademark registration no. 1,152,683 registered on April 28, 1981, in

International Class 41; and

- BUCKEYES: United States trademark registration no. 1,267,035 registered on February 14, 1984, in International Classes 11, 14, 16, 18, 20, 21, 24, 25, 28, and 41.

The Complainant owns domain names, including <ohiostatebuckeyes.com> and <gobuckeyes.com>, which host websites providing information sources for the Complainant’s athletic programs and transacting direct- to-consumer purchases of the Complainant’s branded products.

On December 14, 2021, in The Ohio State University v. Aaron Brooks, WIPO Case No. D2021-3674, a panel ordered that a domain name then held by the Respondent, <buckeyesfootballjersey.info>, be transferred to the Complainant.

On January 15, 2022, the Respondent registered the disputed domain name <buckeyesfootballjersey.club>. The Complainant has provided evidence that the Respondent previously hosted a website at the disputed domain name that purported to be the “Official Ohio State Buckeyes Jerseys Store” and to sell merchandise under the Complainant’s Marks. At the date of this decision, no website is hosted at the disputed domain name.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant contends that, under the first element, the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Under the second element, the Complainant contends that the Respondent is neither a licensee nor an authorized reseller of goods under the Marks, and the Respondent is not affiliated with the Complainant in any way. The Complainant further contends that the Respondent’s use of the disputed domain name to capture customers of the Complainant who are seeking clothing and accessories featuring the Marks (or other trademarks of the Complainant) is neither a legitimate nor good faith use of the disputed domain name.

Under the third element, the Complainant contends that the Respondent intended to capitalize on the Marks by registering a domain that included the well-known Marks with the intent to profit from the resulting traffic misdirected to the domains. The Complainant further contends that the addition of the term “football jersey”

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to the Complainant’s Marks in the disputed domain name that is registered for and used in connection with the promotion of competitive clothing only increases confusion to those consumers looking for clothing and accessories branded with the Marks on the Internet. The Respondent is a repeat offender and previously found to have violated the Complainant’s rights under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Marks are reproduced within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms, here, “football” and “jersey”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The website to which the disputed domain name resolves does not fall under the

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safeguards of fair use envisioned under section 2.8 of the WIPO Overview 3.0, as it does not accurately and
prominently disclose the Respondent’s relationship with the Complainant. To the contrary, the website
claims falsely to be an official website of the Complainant.

Further, panels have held that the use of a domain name for illegal activity here, claimed sale of counterfeit goods and impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent: (i) registered the confusingly similar disputed domain name <buckeyesfootballjersey.club> about a month after the transfer of the Respondent’s previous domain <buckeyesfootballjersey.info> was ordered by a previous panel, the respective domain names

differing only by their generic Top-Level Domains; and (ii) previously hosted at the disputed domain name a website that purported to be the “Official Ohio State Buckeyes Jerseys Store” and to sell merchandise under the Complainant’s Marks.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Panels have moreover found that evidence of a respondent seeking to cause confusion supports a finding that a respondent has registered a domain name to attract, for

commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s
mark. WIPO Overview 3.0, section 3.1.4.

Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a domain name incorporating the complainant’s mark plus an additional descriptive term, or one that corresponds to the complainant’s area of activity), (ii) the chosen Top-Level Domain (e.g., particularly where corresponding to the

complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration, (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers or geographic location, and (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the
domain name.

The Respondent has a clear absence of rights or legitimate interests for the reasons already given, and the Panel finds that the Respondent has no credible explanation for its choice of the disputed domain name, which appears to target the Complainant. The Panel also notes the Respondent’s previous targeting of the Complainant and the timing of the Respondent’s registration of the disputed domain name.

Further, panels have held that the use of a domain name for illegal activity here, claimed sale of counterfeit goods and impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4.

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Furthermore, the Respondent has not attempted to refute any of the Complainant’s contentions, which casts additional doubt on the nature of its conduct. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. The current non-use of the disputed domain name by the Respondent does nothing to negate the above findings of bad faith.

Having reviewed the record, the Panel concludes that the actions of the Respondent in choosing the disputed domain name were aimed at attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Marks. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buckeyesfootballjersey.club> be transferred to the Complainant.

/David Stone/ David Stone Sole Panelist Date: July 16, 2025