Blackbaud, Inc. v Privacy Protection / Domain /or Administrator

WIPO Case No. D2022-2056

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Blackbaud, Inc. v. Privacy Protection / Domain /or Administrator

Case No. D2022-2056

1. The Parties

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

United States.

The Respondent is Privacy Protection, United States of America / Domain /or Administrator, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <kvacademicworks.com> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2022. On

June 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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 June 8, 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 an amended Complaint on June 8, 2022.

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 the Respondent of the the due date for Response was June 30, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 1, 2022.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 8, 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.

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4. Factual Background

The Complainant Blackbaud, Inc. is a corporation headquartered in South Carolina, United States and is a provider of cloud computing services.

In April 2017, the Complainant acquired the whole of the outstanding share capital of a Texas, United States corporation named AcademicWorks, Inc.[1] That company was, and remains, the owner of United States trademark registration number 4287823 for the word mark ACADEMICWORKS, registered on February 12,

2013 in International Class 42. Currently the Complainant’s domain name <academicworks.com> redirects

to a page of Blackbaud’s main website located at “

together/academicworks”.

The Complainant trademark ACADEMICWORKS is used in connection with scholarship process and management solutions and has been adopted by numerous educational institutions across the United States.

The disputed domain name was registered on April 4, 2022 and resolves to a website containing pay-per- click ads.

[1] As part of the general powers of the Panel, as articulated, inter alia, in paragraph 10 of the Rules, the Panel has corroborated the

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has
rights. It states that the disputed domain name incorporates the whole of its registered trademark
ACADEMICWORKS.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has not permitted the Respondent to use its ACADEMICWORKS trademark, that the Respondent is not known by that name and that the Respondent is not making any bona fide commercial use of the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith.

The Complainant request the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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 was registered and is being used in bad faith.

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A. Identical or Confusingly Similar

The Complainant has produced a registration certificate demonstrating that, through its subsidiary, it has rights in the ACADEMICWORKS trademark. See section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.

The disputed domain name wholly incorporates that trademark, preceded by the two letters “kv”, which do

not prevent the Complainant’s trademark from being recognizable within the disputed domain name.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the

Respondent has no rights or legitimate interests in respect of the disputed domain name, and so the burden
of production has effectively been shifted to the Respondent. However, the Respondent has failed to file any
response in this proceeding and has not submitted any explanation for its registration and use of the
disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name,

whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel

therefore finds that the Respondent has not rebutted the Complainant’s prima facie case, and that the

Complainant has established the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain

name in bad faith has been considered by the Panel. These allegations have not been contested by the
Respondent because of its default.

The Panel notes that the Respondent in this case seems to be the same respondent as in case Blackbaud, Inc. v. Privacy Protection / Domain /or Administrator, WIPO Case No. D2022-2050 who registered a similar domain name only with one letter of difference (<kuacademicworks.com> instead of

<kvacademicworks.com>). The domain name of case D2022-2050 was registered on the same date as the

disputed domain name in this case, and the registrant’s contact information disclosed by the Registrar has

the same address, telephone and email as in the current case. Taking the registration time of the of the ACADEMICWORKS trademark when he registered the disputed domain name.

The Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By reproducing in its entirety the ACADEMICWORKS trademark in the disputed domain name and using it for a website displaying pay-per- click ads, the Respondent is clearly seeking to attract users for commercial gain.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of the Policy.

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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 <kvacademicworks.com> be transferred to the Complainant.

/Pablo A. Palazzi/

Pablo A. Palazzi

Sole Panelist
Date: July 22, 2022

relationship between the Complainant and AcademicWorks, Inc. through an Internet search.