Blackbaud, Inc. v Jenkins Alumona, Sugarcane Internet Nigeria Limited

WIPO Case No. D2022-0104

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Blackbaud, Inc. v. Jenkins Alumona, Sugarcane Internet Nigeria Limited

Case No. D2022-0104

1. The Parties

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

United States.

The Respondent is Jenkins Alumona, Sugarcane Internet Nigeria Limited, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <siueacademicworks.com> is registered with Cosmotown, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2022. On January 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2022, the Registrar sent an email communication to the Center. On January 19, 2022, 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 January 20, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on January 24, 2022. On January 27, 2022, the Center sent a request for amendment regarding the Mutual Jurisdiction section of the first amended Complaint. On the same day, the Complainant sent a second amended Complaint.

The Center verified that the Complaint together with the amended Complaints 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 February 1, 2022. On February 2, 2022, the Registrar sent
the Center’s Notification of Complaint emails to an alternative email address of the Respondent. In
accordance with the Rules, paragraph 5, the due date for Response was February 21, 2022. The
Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on
February 22, 2022.

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The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 28, 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 Background

AcademicWorks is the Complainant’s scholarship process and award management solutions that many educational institutions across the United States utilize. The Complainant acquired the AcademicWorks platform in April 2017.

By virtue of its acquisition of AcademicWorks, the Complainant claims rights to the United States trademark

ACADEMICWORKS (Reg. No. 4287823, registered on February 12, 2013).

The Complainant further holds the domain name <academicworks.com>, which redirects to a page on the through its main domain name.

The disputed domain name was created on December 25, 2021, and resolved to a parked website with pay-per-click content. In the meantime, the website has been deactivated.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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

6. Discussion and Findings

On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b), and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the

ACADEMICWORKS trademark.

The ACADEMICWORKS trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “siue” to the Complainant’s ACADEMICWORKS trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

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The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of
the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the
Complainant nor making any bona fide use of the disputed domain name.

The Respondent used the disputed domain name to advertise pay-per-click content. The Complainant has credibly alleged that the Respondent used the disputed domain name for generating revenue through advertisement links while taking advantage of the Complainant’s trademark notoriety. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademark and an acronym of an affiliated university, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Exercising its powers under paragraphs 10 and 12 of the Rules, the Panel notes that the acronym “siue” is affiliated with the Southern Illinois University Edwardsville, which hosts a scholarship program based on the Complainant’s platform at the website “siue.academicworks.com”.

The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the

Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name. Even if it was not aware of the Complainant’s trademark and business, the Respondent could have taken some efforts to screen the registration of the disputed domain name against readily available online databases (or conduct a mere Internet search) to avoid the registration of a trademark-abusive domain name.

The Panel finds that the reproduction of the Complainant’s trademark along with the term “siue” creates a likelihood of confusion between the Complainant’s trademark and the disputed domain name.

The evidence and allegations submitted by the Complainant support a finding that the Respondent was
engaged in an attempt to pass himself off as the Complainant by creating a likelihood of confusion with the
Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website for his own
commercial benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie

Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466).

Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) 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 <siueacademicworks.com> be transferred to the Complainant.

/Tobias Zuberbühler/
Tobias Zuberbühler
Sole Panelist
Date: March 11, 2022