The Complainant is Blackbaud, Inc., United States of America (“United States”), represented by Soteria LLC, United States.
The Respondent is Privacy Protection, United States / PremiumDomainSeller, United States.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 1, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 2021, 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 amendment to the Complaint on November 2, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 6, 2021. 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 BackgroundThe Complainant is a cloud software company that provides cloud software, software services, expertise, and data intelligence for the intersection of technology and the social good. The Complainant’s clients include nonprofits, foundations, corporations, education institutions, healthcare institutions, and individual change agents who support them.
The Complainant owns the following trademarks through the United States Patent and Trademark Office, among others: BLACKBAUD, United States Reg. No. 5,280,411, registered on September 5, 2017 in international class 42, with a date of first use and a date of first use in commerce of 1982; and BLACKBAUD, United States Reg. No. 5,280,412, registered on September 5, 2017 in international class 9, with a date of first use and a date of first use in commerce of 1982 (hereinafter collectively referred to as “the BLACKBAUD Mark”).
The Complainant registered the domain name
The Disputed Domain Name was registered on October 21, 2021 and redirects to “www.dan.com/buy-domain/blackbaud.xyz”, where
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s BLACKBAUD Mark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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.
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the BLACKBAUD Mark.
It is uncontroverted that the Complainant has established rights in the BLACKBAUD Mark based on its years of use as well as its registered trademarks for the BLACKBAUD Mark in the United States. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the BLACKBAUD Mark.
The Disputed Domain Name consists of the BLACKBAUD Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.xyz”. The addition of a gTLD such as “.xyz” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Thus, the Disputed Domain Name is identical to the Complainant’s BLACKBAUD Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BLACKBAUD Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a website that offers the Disputed Domain Name for sale likely in excess of the Respondent’s out-of-pocket costs, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See Turner Network Television, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot,WIPO Case No. D2018-1036 (“The offering of the Domain Name for sale does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use”).
Finally, the composition of the Disputed Domain Name, comprising the entirety of the BLACKBAUD Mark, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BLACKBAUD Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use have been done for the specific purpose of trading on the name and reputation of the Complainant and its BLACKBAUD Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Finally, the Respondent’s offer to sell the Disputed Domain Name for USD 650 is likely in excess of its out-of-pocket costs directly related to the Disputed Domain Name. Such conduct is also evidence of the Respondent’s bad faith registration and use under paragraph 4(b) of the Policy.
7. DecisionFor 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
Lynda M. Braun
Sole Panelist
Date: December 13, 2021
1 Although the Registrar’s verification response lists the Respondent as located in “Huaian, Jiangsu, US”, that is inaccurate. Huaian, Jiangsu is a city in the central Jiangsu province of Eastern China.