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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blackbaud, Inc. v. Whois Privacy Protection Service by onamae.com / Yan Zhang

Case No. D2021-2344

1. The Parties

The Complainant is Blackbaud, Inc., United States of America (“United States” or “US”), represented by Soteria LLC, United States.

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Yan Zhang, China.

2. The Domain Name and Registrar

The disputed domain name <blackbaudcrm.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 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 July 24, 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 in English on July 28, 2021.

On July 24, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On July 26, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on August 2, 2021. In accordance with paragraph 5 of the Rules, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2021.

The Center appointed Yuji Yamaguchi as the sole panelist in this matter on September 15, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a cloud software company based in the United States and registered the BLACKBAUD trademark in the United States, including Registration No. 2397946, registered on October 24, 2000, Registration No. 2473006, registered on July 31, 2001, Registration No. 5280411 and Registration No. 5280412, the latter two were registered on September 5, 2017.

The Respondent is an individual located in China using privacy services provided by Whois Privacy Protection Service by onamae.com, Japan. The disputed domain name was registered on June 28, 2021 and resolves to a website showing pay-per-click links.

5. Parties’ Contentions

A. Complainant

First, once the generic Top-Level Domain (“gTLD”) “.com” is ignored, the disputed domain name consists of the whole of the Complainant’s registered trademark BLACKBAUD with the addition of “crm” at the end. The term “CRM” can be interpreted as “Customer Relationship Management” and is a blatant copy of the Complainant’s product offering found at “www.blackbaud.com/products/blackbaud-crm”. The Complainant is known mainly as “Blackbaud”, and their website is located at “www.blackbaud.com”. The disputed domain name is identical or is confusingly similar to the BLACKBAUD trademark, trade name, product, and / or the domain name <blackbaud.com>. In addition, the disputed domain name is misleading and provides false impressions against the Blackbaud brand name.

Second, regarding paragraphs 4(c)(i) and (iii) of the Policy, the Respondent is neither affiliated nor authorized by the Complainant to register or use the BLACKBAUD trademark. In addition, the Respondent has neither used the disputed domain name nor provided any proof of preparations for a bona fide offering of goods or services as the website is parked on the default related-links landing page. As for paragraph 4(c)(ii) of the Policy, the WhoIs record shows that the Respondent is “Whois Privacy Protection Service by onamae.com”, not “Blackbaud”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name due to the anonymity of the WhoIs record. The Respondent cannot provide any prior rights in the BLACKBAUD trademark which would be the only arguable basis for a claim that the disputed domain name reflects a legitimate interest. In addition, the Respondent is likely “domain-flipping”, or purchasing domain names in order to sell for a profit. Once the Complainant contacted of the trademark infringement, the Respondent demands a “manual cost” of USD 589 in order to transfer the disputed domain name over to the Complainant. In addition, the Respondent proceeds to claim to take the Complainant to the Respondent’s “local court”, in an attempt to persuade the Complainant to pay his “manual cost”. This shows that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Third, the disputed domain name was registered knowing the existence of the Complainant. This is evident as the term “Blackbaud” is very unique and is not a dictionary word. The disputed domain name was registered in order to make a profit for the Respondent, and the Respondent proceeds to threaten the Complainant to court in order to persuade the Complainant to pay the “manual cost” of USD 589.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

Paragraph 11(a) of the Rules provides, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. As the Registrar confirmed, Japanese is the language of the Registration Agreement. Although the Complainant refers to the web pages that link from the website “www.onamae.com/agreement” on which the three agreements (“.ceo” Registrant Agreement, “.jp.net” Domain Name Registration Policies, and ResalePartner - Terms and conditions) are written in English, these agreements cannot be said the Registration Agreement of the disputed domain name.

However, the Complainant submitted a request for English to be the language of the administrative proceeding and showed the evidence that the Respondent and the Complainant have communicated in English. Considering the circumstances of the administrative proceeding, including the prior correspondence between the parties, the Respondent’s communicative competence in the English language, and the Respondent’s failure to object to the Complainant’s request, the Panel determines to proceed and render its decision in English.

6.2 Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, the Complainant must assert and prove the following three elements are present:

(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 Similar

The Complainant owns the US trademark registrations of BLACKBAUD. The disputed domain name incorporates the BLACKBAUD trademark in its entirety with the addition of the letters “crm” and the “gTLD” “.com”.

The letters “crm” is commonly used as the acronym of “consumer relationship management” (see L’Oréal v. Ana Ring, WIPO Case No. D2013-1826 (<kerastasecrm.com>)) especially as a category of software. Therefore, the disputed domain name which combines the Complainant’s BLACKBAUD trademark in its entirety with the acronym “crm” is considered to be confusingly similar to the Complainant’s trademark under the first element in paragraph 4(a) of the Policy. The gTLD “.com” may be disregarded for the purpose of assessment of confusing similarity under the first element. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant asserted that the Respondent is neither affiliated nor authorized by the Complainant to register or use the BLACKBAUD trademark, the Respondent has neither used the disputed domain name nor provided any proof of preparations for a bona fide offering of goods or services as the website is parked on the default related-links landing page, and there is no evidence indicating that the Respondent has been commonly known by the disputed domain name.

The disputed domain name contains pay-per-click links to third-party websites featuring software products. Such use of the disputed domain name cannot be regarded as a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. See sections 2.9 and 2.13 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Complainant has made 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 disputed domain name. See section 2.1 of the WIPO Overview 3.0.

As the Respondent failed to submit a Response in this proceeding and there is no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The term “Blackbaud” does not appear to be a dictionary word. Taking into account the uniqueness and distinctiveness of the term “Blackbaud”, the Respondent must have registered and used the disputed domain name knowing the existence of the Complainant.

Although the Respondent offered the transfer of the disputed domain name for free when the Complainant contacted the Respondent, the Respondent requested the Complainant to pay a manual cost of USD 589. The Respondent further mentioned, “I will go to my local court. It will take you 2 years because of my country rules. It will take you lots of time and money.” and called upon the Complainant to accept the payment of a manual cost. Even though the Respondent is able to submit the dispute to a court of competent jurisdiction for independent resolution, the Respondent seems to indicate the possibility of filing a lawsuit to the local court as a bargaining lever in negotiations with the Complainant. The Respondent’s indication raises serious questions about the adequacy of paying a manual cost of USD 589, which appears to exceed out-of-pocket costs directly related to the disputed domain name.

Furthermore, the pay-per-click links to third-party websites also support a finding of bad faith.

Consequently, the Panel finds that the requirement of registration and use in bad faith is satisfied as described under paragraphs 4(b)(i) and (iv) 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 name <blackbaudcrm.com> be transferred to the Complainant.

Yuji Yamaguchi
Sole Panelist
Date: September 28, 2021

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