Complainant is Blackbaud, Inc., United States of America (“United States”), represented by Soteria LLC, United States.
Respondent is ReachLocal Hostmaster, United States.
The disputed domain name <47297blackbaudhosting.com> is registered with Name.com (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 25 and November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 Complainant on November 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 8, 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on December 8, 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.
Complainant is a company based in United States. For years prior to the registration of the disputed domain name, Complainant has operated under the name “Blackbaud, Inc”. Complainant is the owner of several registrations for the BLACKBAUD mark, in the United States, where Respondent lists an address of record. Complainant’s trademark registrations including United States Registration Nos. 5,280,411 and 5,280,412 (both registered September 5, 2017). The registrations identify goods and services including computer programs and software as a service for use with database management, expense management, and other activities.
The disputed domain name appears to have been registered on October 5, 2021. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns trademark registrations for the term BLACKBAUD. Complainant further contends that its BLACKBAUD mark is “very unique” and distinctive. Complainant contends that Respondent has incorporated Complainant’s BLACKBAUD mark into the disputed domain name, with the mere addition of the “random number” 47297 and the dictionary term “hosting.” Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain, likely in order to confuse consumers in a possible phishing scheme.
Respondent did not reply to Complainant’s contentions.
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates in full Complainant’s registered BLACKBAUD mark, with the addition of the series of numbers “47297” and the dictionary term “hosting.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided prima facie evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which evidence Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a distinctive or well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not respond to the Complaint. Respondent also appears to have taken steps to conceal its identity to avoid contact with the Center and with Complainant, including providing an email address to the Registrar which returned a message from the Center with a response that “delivery failed.”
Overall, the Panel finds that Complainant has provided prima facie evidence that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) of the Policy, which evidence Respondent has not rebutted.
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 <47297blackbaudhosting.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: December 17, 2021