Blackbaud, Inc. v Registration Private, Domains By Proxy, LLC / Carolina

WIPO Case No. D2022-0106

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Blackbaud, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina
Rodrigues, Fundacion Comercio Electronico

Case No. D2022-0106

1. The Parties

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

United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues,

Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <smaarttuition.com> is registered with GoDaddy.com, LLC (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 14, 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 17, 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 January 19, 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
Complaint, and the proceedings commenced on January 21, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 10, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 11, 2022.

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The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 23, 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

According to the Complainant’s webpage (“ management”), the Complainant provides payment processing for schools by offering billing software for thousands of private schools and higher education institutions.

The Complainant is the owner of Smart LLC (Annex 5 to the Amended Complaint) who is the owner of the 9, 2011, registered on June 5, 2012, claiming first use in commerce on July 31, 1989, in connection with “business administration services for educational institutions, namely, information collection, information processing, and information management related to tuition for educational institutions, accounting services, and customer services in the nature of responding to inquiries from students and parents on behalf of educational institutions”, in international class 35 (Annex 3 to the Amended Complaint).

The disputed domain name <smaarttuition.com> was registered on December 23, 2021, and presently resolves to a website displaying illegal content, browsers warning of the risk of being infected by viruses.

5. Parties’ Contentions
A. Complainant

Under the Complainant’s view, the disputed domain name is confusingly similar to its SMART TUITION trademark, only differing by the misspelling with a double “a”, what is sufficient to establish confusing similarity under the Policy.

Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Respondent is neither affiliated nor authorized by the Complainant to register or use the SMART TUITION trademark;

(ii)       the Respondent has neither used the disputed domain name nor provided any proof of preparations

for a bona fide offering of goods or services relating to the disputed domain name; and

(iii)      there is no indication that the Respondent is commonly known by the disputed domain name.

Lastly, the Complainant contends that the disputed domain name was registered for domain flapping or use in a phishing campaign against the Complainant’s trademark due to the confusing similarity with the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

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(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.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements are present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established rights in the registered SMART TUITION trademark.

The Panel finds that the disputed domain name only differs by one letter to the Complainant’s trademark and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively

straightforward comparison between the complainant’s trademark and the disputed domain name”. The
Panel finds that the Complainant’s SMART TUITION trademark is recognizable within the disputed domain
name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview

3.0”), sections 1.7.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the
disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide

offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the
disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the

Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that the Respondent is neither affiliated nor authorized by the
Complainant to register or use the SMART TUITION trademark.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name corroborates the absence of any rights or legitimate interests in the disputed domain name.

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Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

The second element of the Policy has therefore been established.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name
primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner
of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable
consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed
domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s website or location or of a product or service on the Respondent’s website or location.

The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the

disputed domain name;

(ii) the choice to retain a privacy protection service to conceal the Respondent’s true identity;

(iii) the present use of the disputed domain name in connection with a webpage that is potentially

disseminating malware; and

(iv) the indication of a false address in the WhoIs data and, consequently, the Center not being able to have
communications fully delivered to it.

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

The third element of the Policy has therefore been established.

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, <smaarttuition.com>, be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: March 9, 2022