The Ohio State University v Mary Siegel

WIPO Case No. D2025-2149

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Ohio State University v. Mary Siegel

Case No. D2025-2149

1. The Parties

1.1 The Complainant is The Ohio State University, United States of America (“United States”),

represented by Frost Brown Todd LLC, United States.

1.2 The Respondent is Mary Siegel, China.

2. The Domain Names and Registrar

2.1 The disputed domain names <buckeyesonlineshop.com> and <buckeyesonlinestore.com> (the

“Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1,

2025. On June 2, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Names. On June 3, 2025, the Registrar transmitted by email to the Center its
verification response confirming that the Respondent is listed as the registrant and providing the contact
details.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2025.

3.4 The Center appointed Matthew S. Harris 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

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4. Factual Background

4.1 The Complainant is a university founded in the United States in 1870. Alumni of the Complainant are

often referred to as “Buckeyes”. The Complainant also operates a college American football team that is
also often referred to as “the Buckeyes”. That team has achieved some success and in January 2025 won
its ninth NCAA American football championship.

4.2 The Complainant is the owner of various United States federal trade mark registrations including:

(i) Registration no. 1152683 filed on January 29, 1975 and registered on April 28, 1981 for BUCKEYES as a standard character mark in class 41; and

(ii)       Registration no. 1267035 filed on September 29, 1982 and registered on February 14, 1984 for

BUCKEYES as a standard character mark in classes 11, 14, 16, 18, 20, 21, 24, 25, 28 and 41.

4.3 The Complainant has used the term “Buckeyes” in connection with its educational, entertainment, and

athletic programs, for approximately 100 years. It licenses the use of its BUCKEYES marks on various
merchandise including clothing apparel and accessories. Such products are also sold from its e-commerce
platform that operates from the domain name <gobuckeyes.com>.

4.4 The Domain Name <buckeyesonlineshop.com> was registered on June 26, 2017, and at the time of filing the Complaint last updated on June 3, 2024, and the Domain Name <buckeyesonlinestore.com> was registered on April 17, 2017 and at the time of filing the Complaint last updated on April 16, 2025.

4.5 The Domain Names have been used since registration for websites that offer for sell merchandise

branded with the Complainant’s trade marks and in particular related to the Complainant’s American football
team. The websites do not identify their operator and display the uninformative copyright notices “© 2017

buckeyesonlineshop.com” and “© 2017 buckeyesonlinestore.com”.

4.6 At least one of the addresses given by the Respondent in the WhoIs details for the Domain Names

appears to be in Cincinnati Ohio, but in the case of both of the Domain Names the country details provided
are for China and the contact telephone number provided has a Chinese calling code. The contact email

addresses provided in respect of one of the Domain Names also use a Hungarian free email service.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a

transfer of the Domain Names. In this respect having described its activities, business and marks, it activities do not involve a bona fide offering of goods and in this respect contends that the Respondent does not satisfy the “Oki Data” requirements in that the websites operating from the Domain Names do not disclose the Respondent’s lack of relationship with the Complainant.

contends, inter alia, that the way that the Domain Names are being used show an intent on the part of the

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally 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 trade mark and the domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

6.2 The Complainant has shown that it has rights in registered trade marks for BUCKEYES.

WIPO Overview 3.0, section 1.2.1.

6.3 The most sensible reading of the Domain Names is as the term “buckeyes” combined with the words “online”, “store” or “shop”, and the “.com” generic Top-Level Domain (“gTLD”). Accordingly, the entirety of the Complainant’s mark is reproduced within each of the Domain Names and as a consequence that mark is

clearly recognisable within each of the Domain Names.

6.4 It follows that the Domain Names are confusingly similar to the Complainant’s marks for the purposes

of the Policy. WIPO Overview 3.0, section 1.7. Further, the addition of the words “online” and “store” or
“shop” does not prevent a finding of confusing similarity between each of the Domain Names and the marks
for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues

together. WIPO Overview 3.0, section 2.15.

6.7 The Domain Names inherently and falsely represent that they are controlled by the Complainant.

Even taking into account the possibility that the term “buckeyes” alone might conceivably be used in a way that does not reference the Complainant,[1] the extent of the use of that term by the Complainant and in particular its use in connection with its alumni and American football team and the sale of merchandise in respect of that team, all mean that the combination of that term with the words “online” and “store” or “shop” is most likely to be understood by Internet users as referring to an online store or shop from which the Complainant’s licensed products were being offered.

[1] In this respect the Panel understands that Buckeye is the name of a North American tree, from which the term now used by the

6.8 The Panel is also satisfied that the Respondent intended the Domain Names would be understood this

way. This is reasonably clear not only from the combination of words used in the Domain Names, but the
fact that the Respondent provided in respect of one of the Domain Names an address in Ohio.

6.9 Further and in any event, any doubt as to the Respondent’s intentions is laid to rest by the content of the websites operating from the Domain Names, which offer for sale products which relate to the operated or authorised by the Complainant. Further, the Panel is satisfied that at least a significant portion of Internet users visiting those websites will falsely conclude that they are purchasing products from a store authorised or operated by the Complainant when they are not.

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6.10 In these circumstances, the Panel accepts the Complainant’s contentions that the Respondent’s

activities do not involve a bona fide offering of goods or services for the purposes of demonstrating rights
and interests. In this respect, the Panel also accepts the Complainant’s contention that the Respondent has
failed to comply with the Oki Data requirements (i.e., the conditions set out in Oki Data Americas, Inc. v.
ASD, Inc., WIPO Case No. D2001-0903, and recorded in section 2.8 of the Overview) in that the Respondent
has failed to accurately and prominently disclose the registrant’s relationship (and in particular any lack of
relationship) with the trade mark holder. Further, the Panel is of the view that the way in which the Domain
Names have been used is positive evidence of a lack of rights or legitimate interests on the part of the

Respondent.

6.11 Further, the Panel is satisfied that the Respondent has intentionally attempted to attract, for

commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of those websites. It follows that the Respondent’s activities fall within the scope of the evidence of registration and use of a domain

name in bad faith set out in paragraph 4(b)(iv) of the Policy. Accordingly, the Panel also finds that the

Domain Names have been both registered and used in bad faith.

6.12 The Panel, therefore, finds that the first and second elements of the Policy have been established in

the case of each of the Domain Names.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel orders that the Domain Names <buckeyesonlineshop.com> and <buckeyesonlinestore.com> be transferred to the Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: July 9, 2025

Complainant has been derived.