Complainant is Scholly, Inc., United States of America (“United States”), represented by K&G Law LLC, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Richard Giddens Jr, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email to Complainant on December 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 15, 2021. Respondent sent to Center an informal communication on December 14, 2021.
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 Respondent of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Response was filed with the Center on January 5, 2022. Complainant submitted a Supplemental Filing on January 10, 2022.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 1, 2022. 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 BackgroundComplainant provides a service by which it assists students to find and obtain scholarships for college. Complainant’s customers enroll at Complainant’s website, located at the domain name
According to the Complaint, Complainant has been featured on Shark Tank and Good Morning America, as well as various media publications and networks, including USA Today, Fortune Magazine, Fox News, and CNN. Complainant states that SCHOLLY is the number one college scholarship mobile app in the world.
Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the mark SCHOLLY, United States Patent and Trademark Office (“USPTO”) Reg. No. 4,733,487, registered on May 5, 2015, in connection with the software services described above.
The Domain Name was registered on February 25, 2020. The Domain Name resolves to a website which states as follows:
“Scholly Bound provides High School Student Athletes and College Coaches online exposure by providing simultaneous visibility to both parties on one platform. Our mission is to provide student athletes with options regarding college placement, including opportunities for athletic scholarships, academic scholarships, financial aid, etc.”
Respondent’s site invites student athletes to enroll as a member of the site, for which a fee is charged.
Respondent sent an informal communication to the Center, the informal communication states:
“I would like this domain name renewed every year automatically. I plan to have it for the next 25 to 50 years. I would like to fully protect this domain so please let me know if there any further measures I need to take.
If an instance arises, where someone on your end is notified about dropping this domain, I would like to be
contacted immediately and have my identification verified upon phone call. Thank you.”
In his Response, Respondent states in relevant part:
“I purchased schollybound.com because it was in my legal rights to do so. Domain names are 1st come 1st served. Just because a company gets a trademark, does not mean they have legal right to any particular domain.
“It appears that the other party does have a trademark on Scholly Inc. However, this does not mean they control every domain name with the letters ‘scholly’ in it. There are other sites with the letters scholly, which have no affiliation with Scholly Inc.
“My site clearly has no affiliation, nor desires any affiliation with Scholly Inc. Plus we have two different business models and services. Our sites do not resemble each other. (…)
“Millions of people have i-phones and everyone knows of Apple, but there are many sites and trademarked businesses with the name letters ‘apple’. As per the United States Patent & Trademark Office (USPTO), there are multiple companies with the name scholly.
“Scholly is short for Scholarship and is used in most households around the United States. There is nothing unique or creative about the name scholly. Scholly Inc. has offered me $500 for the domain, while filing against me, in which I have no interest.
“In my opinion, I am being strong-armed by Scholly Inc. They want the domain because they like it and feel they can simply take it. If I had the time and excess finances, I would fight this. I am requesting that Scholly Inc. provide proof/confirmation from the USPTO, stating that if someone else or another company has a domain name with the letters ‘scholly’, it is in fact infringement. It appears there would be a few other companies who are currently infringing as well.”
In its unsolicited supplemental filing (which the Panel, in its discretion, has considered because it addressed points in the Response that could not have been reasonably anticipated), Complainant states:
“Respondent is incorrect in his assertion that the USPTO reflects ‘multiple companies with the name scholly [sic].’ In fact, there are only five active trademarks that contain the word ‘SCHOLLY’: two of them are owned by the Complainant; the third, for VOLLEY-SCHOLLY, is pending cancellation as a result of a petition to cancel filed by the Complainant; the fourth, for KIDSCHOLLY, is also pending cancellation as a result of a petition to cancel filed by Complainant; and the fifth is registration for ‘Schölly’ for optical instruments, goods far removed from the scholarship and educational goods and services offered by either Complainant or Respondent.1
“Complainant also wished to clarify that its $500 offer to Respondent was made after this proceeding was filed and the Center invited the parties to discuss settlement, in which event the Center would refund $1,000 of Complainant’s filing fee. Complainant offered to split this amount with the Respondent in order to bring these proceedings to a close.”
5. Parties’ Contentions A. ComplainantComplainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent’s position is set forth in the Factual Background section above.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the famous trademark SCHOLLY, through registration and use demonstrated in the record. The Panel finds the Domain Name to be confusingly similar to the SCHOLLY mark. The mark is entirely reproduced in the Domain Name, except for the addition of the word “bound.” In the Panel’s view, this additional word does not overcome the fact that the SCHOLLY mark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in the Domain Name. It is undisputed that Respondent has not received permission from Complainant to use register the SCHOLLY mark in a domain name or otherwise. The Panel finds it significant that, in his Response, Respondent did not deny knowledge of Complainant’s registered trademark SCHOLLY or of Complainant generally. It also seems unlikely that Respondent, whose services overlap significantly with Complainant’s (though Respondent appears to focus on student athletes and not all students), would have been unaware of Complainant’s SCHOLLY services at the time he registered the Domain Name. Respondent’s sole articulated justification for registering the Domain Name is that he got there first.
In the Panel’s view, Respondent’s offering of student scholarship services in exchange for a membership fee is not a bona fide offering of goods and services via the Domain Name, since it appears that this is a clear case of trademark infringement.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “Rights or Legitimate Interests” section. The SCHOLLY mark appears distinctive, and use of that term does not appear as widespread as Respondent suggests. In any event, SCHOLLY is a registered trademark and, as was stated above, the Panel finds it more likely than not on this record that Respondent was aware of that mark when registering the Domain Name. There is evidence that the mark enjoys some renown, Respondent operates in the same basic commercial sphere, and Respondent has not denied having knowledge of the SCHOLLY mark.
The Panel also finds bad faith use of the Domain Name. Respondent’s website is commercial, and it offers services that overlap with Complainant’s trademarked services. The Panel concludes that the above-quoted Policy paragraph 4(b)(iv) applies here.
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: February 8, 2022
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.