The Ohio State University v meijuan zhang and michael vick
WIPO Case No. D2025-1482
•03-06-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
The Ohio State University v. meijuan zhang and michael vick
Case No. D2025-1482
1. The Parties
The Complainant is The Ohio State University, United States of America (“United States”), represented by
Frost Brown Todd LLP, United States.
The First Respondent is meijuan zhang, China.
The Second Respondent is michael vick, China.
2. The Domain Names and Registrars
The disputed domain names <buckeyesproshop.com> and <ohiostateprostore.com> are registered with
Dynadot Inc.
The disputed domain name <ohiostatebuckeyesprostore.com> is registered with GoDaddy.com, LLC
(collectively, the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2025. connection with the disputed domain names. On April 13 and April 14, 2025, the Registrars transmitted by email to the Center their respective verification responses, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Registration Private, Domains By Proxy, LLC / Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on April 18, 2025.
page 2
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 Respondents of the Complaint, and the proceedings commenced on April 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 14, 2025.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 20, 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 was established in 1870 and provides college and graduate level educational courses, collegiate sporting events and recreation programs, and dramatic and musical entertainment events since then. The Complainant has further evidenced that it runs an e-commerce platform under <gobuckeyes.com> for selling merchandising items connected to its sports teams and featuring prominently its trademarks.
It results from the Complainant’s documented allegations that it owns a portfolio of trademarks and bases the present Complaint – amongst others – on the following United States Federal registrations, which have duly been renewed and are in force:
(1) OHIO STATE (verbal) registered on April 28, 1981 (filing date January 29, 1975) with no. 1152682 for services in class 41; and
(2) BUCKEYES (verbal) registered on April 28, 1981 (filing date January 29, 1975) with no. 1152683 for services in class 41.
According to the WhoIs extracts before this Panel and the information provided by the Registrars, the relevant data for the disputed domain names are the following:
| - | <ohiostatebuckeyesprostore.com> registered on August 31, 2020 by meijuan zhang, China |
(Registrar: GoDaddy.com, LLC);
| - | <ohiostateprostore.com> registered on September 17, 2021 by michael vick, China |
(Registrar: Dynadot Inc.); and
| - | <buckeyesproshop.com> registered on September 17, 2021 by michael vick, China |
(Registrar: Dynadot Inc.).
All the disputed domain names resolve to highly similar active websites (<ohiostateprostore.com> and
<buckeyesproshop.com> even appearing to be identical websites), prominently featuring the Complainant’s
trademarks in the respective headers and purporting to sell merchandise branded with the Complainant’s
trademarks at allegedly highly discounted prices. No identifying information as to the source of the clothing
is given on the website at the domain name <ohiostatebuckeyesprostore.com> ; however, the websites at
<ohiostateprostore.com> and <buckeyesproshop.com> both indicate that they are “the Official Team Shop of
Buckeye Nation.”
page 3
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 names.
Notably, the Complainant contends that:
(1) the Complaint for the three disputed domain names should be consolidated. The evidence suggests that the disputed domain names are under common control and have been used in an identical manner;
(2) the disputed domain names are identical or confusingly similar to a trademark or service mark in which
that mark despite the addition of other words. The addition of the terms “pro shop” and “pro store” to the
the Complainant has rights. If a domain name incorporates a mark in its entirety, it is confusingly similar to promotion of competitive clothing only increases confusion to those consumers looking for the original branded clothing and accessories on the Internet;
(3) the Respondents are not affiliated with the Complainant in any way and do not have the consent of the Complainant, whether express or implied, to use the disputed domain names to sell branded products of the Complainant; and
| (4) | the Respondents have registered and are using the disputed domain names in bad faith to benefit |
| legitimate, authorized, and licensed merchandise by the Complainant. In addition, both Respondents are | from misdirected traffic from confused consumers in search of information and options to purchase juan zhang WIPO Case No. D2024-1455). |
| B. Respondents | |
| The Respondents did not reply to the Complainant’s contentions. | |
| 6. Discussion and Findings | |
| Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that disputed domain name be transferred or cancelled: | |
| (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and | |
| (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and | |
| (iii) the disputed domain name has been registered and is being used in bad faith. | |
| The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. Before doing so, the Panel will address the consolidation. |
page 4
Consolidation: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the disputed domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the disputes against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As set forth in section 4.11.2 of WIPO Overview 3.0: “Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’
contact information including email address(es), postal address(es), or phone number(s), including any
pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of
websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a
registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-
country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly
where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the
above items following communications regarding the disputed domain name(s), (ix) any evidence of
respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern
of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the
respondent(s).”
As regards common control, the Panel notes the following factors:
| (1) | the three disputed domain names follow the same naming pattern by identically placing the |
Complainant’s trademark OHIO STATE and/or BUCKEYES at the beginning of the domain names, followed by the terms “prostore” or “proshop”;
(2) the three disputed domain names have been registered through a privacy service, with two of them
registered on the same day and with the same Registrar. Additionally, the Registrar Verification Responses
showed that the Respondents claim to be located in China; and
(3) the three disputed domain names resolve to highly similar active websites, prominently featuring the
Complainant’s trademarks in the respective headers and purporting to sell merchandise branded with the
Complainant’s trademarks at allegedly highly discounted prices.
In the light of these facts, this Panel finds that it is more likely than not that all the disputed domain names are subject to common control. Therefore, the Panel does not see any reasons why a consolidation should not be fair and equitable.
In particular, the Respondents were given the opportunity to object to the consolidation and to respond to both the Complaint and the Complainant’s request for consolidation; however, they opted not to respond.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
page 5
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 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service marks for the purposes of the Policy,
WIPO Overview 3.0, section 1.2.1.
The entirety of one (<ohiostateprostore.com> and <buckeyesproshop.com>) or even both
(<ohiostatebuckeyesprostore.com>) of these marks is reproduced within each the disputed domain name.
Accordingly, the disputed domain names are 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, “pro”, “store” and/or “shop”, may bear on the 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 names and the marks for the purposes of the Policy, WIPO Overview 3.0, section 1.8.
Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain names may be disregarded under the first element confusing similarity test, WIPO Overview 3.0 at section 1.11.1.
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 names. 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 names such as those enumerated in the Policy or otherwise.
As detailed above, the disputed domain names resolve to highly similar active commercial websites, prominently featuring the Complainant’s trademarks in the respective headers and purporting to sell merchandise branded with the Complainant’s trademarks at allegedly highly discounted prices. No identifying information as to the source of the clothing is given on the website at the domain name <ohiostatebuckeyesprostore.com>. Furthermore, there is no accurate and prominent disclaimer regarding the Respondent’s (non-existing) relationship with the Complainant on the websites at the disputed domain names. On the contrary, the websites at <ohiostateprostore.com> and <buckeyesproshop.com> both falsely indicate that they are “the Official Team Shop of Buckeye Nation.”.
page 6
Moreover, the Panel notes that the disputed domain names contain the Complainant’s registered trademarks combined with the terms “prostore” and “proshop” which are inherently descriptive for the Complainant’s field of commerce as a professional online shop/store. It is acknowledged amongst previous UDRP panels that
certain additional terms within the trademark owner’s field of commerce may or may not by themselves feel as the Complainant’s website, allegedly selling the Complainant’s products at highly discounted prices and reproducing without authorization the Complainant’s trademarks and logos and without any disclaimer as to the lack of relationship with the Complainant, the Panel sees the disputed domain names as tending to suggest sponsorship or endorsement by the trademark owner. This is further reinforced by a false indication on the two of the websites that they are “the Official Team Shop of Buckeye Nation.”
trigger an inference of affiliation, and would normally require a further examination by the panel of the
broader facts and circumstances of the case – particularly including the associated website content – to
assess potential respondent’s rights or legitimate interests, WIPO Overview 3.0 at section 2.5.1. In the
present case, the disputed domain names incorporate terms descriptive of the Complainant’s field of activity.
As such, the disputed domain names cannot constitute fair use.
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. One of these circumstances is that the Respondent by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). This is the case here.
According to the Complainant’s documented allegations, which remained undisputed, the disputed domain names resolve to active websites that imitate the Complainant’s main operating website, without authorization and makes them appear as if they were the Complainant’s websites. In particular, the Respondent’s websites under the disputed domain names:
(i) prominently display the Complainant’s trademarks and logos;
(ii) these trademarks largely predate the disputed domain names’ registration by many decades;
(iii) allegedly offered the Complainant’s products at steeply discounted prices; and
(iv) contain no disclaimer as to the lack of relationship with the Complainant, rather, instead, two of the
websites falsely state that they are “the Official Team Shop of Buckeye Nation.”
In addition, this finding of bad faith registration and use is further supported by further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated
good faith use;
(ii) the fact that the address data provided by the Respondent in the registration details of the disputed
domain names does not appear to be accurate, taking into account the courier’s inability to deliver the
Center’s written communication due to bad address to any of the addresses; and
(iii) the Respondents having been involved previously in other UDRP proceedings, involving the
trademarks of the Complainant at issue in the case at hand, where the transfer of the respective disputed
domain names has been ordered and bad faith has been found.
page 7
Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the
Respondent also knew that the disputed domain names included the Complainant’s trademarks when it
registered the disputed domain names and tried to pass itself off as the Complainant.
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 names <buckeyesproshop.com>, <ohiostatebuckeyesprostore.com>, and <ohiostateprostore.com> be transferred to the Complainant.
/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: June 3, 2025
0
0
0