Blue Prism Limited and SS&C Technologies, Inc. v Jim Khan, Ms. Mertie Hill

WIPO Case No. D2025-1764

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Blue Prism Limited and SS&C Technologies, Inc. v. Jim Khan, Ms. Mertie Hill
DDS, Alex Will, and Edward Walsh

Case No. D2025-1764

1. The Parties

The Complainants are Blue Prism Limited, United Kingdom (“UK”), and SS&C Technologies, Inc., United

States of America (“United States” or “U.S.”), represented by Arnold & Porter Kaye Scholer (UK) LLP, UK.

The Respondents are Jim Khan, UK, Ms. Mertie Hill DDS, United States, Alex Will, United States, and

Edward Walsh, UK.

2. The Domain Names and Registrars

The disputed domain names <blue-prismpro.com>, <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net>, <blueprismpro.xyz>, <theblueprism.cc>, <the-blueprism.com>, <theblueprism.com>,
<the-blueprism.net>, <theblueprism.net>, and <the-blueprisms.com> are registered with Dominet (HK)

Limited.

The disputed domain name <the-blueprism.cc> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(collectively, the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2025. On May 2, 2025, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On May 3 and May 7, 2025, the Registrars transmitted by email to the Center their verification responses, disclosing registrant and contact information for the disputed domain names which partly differed from the named Respondents (JIM KHAN, MS. MERTIE HILL DDS, EDWARD WALSH, and UNKNOWN ENTITY) and contact information in the Complaint. The Center sent an email communication to the Complainants on May 12, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainants filed an amended Complaint on May 15, 2025, confirming the request for consolidation of the disputed domain names and providing further supporting arguments.

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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 Respondents of the Complaint, and the proceedings commenced on May 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 10, 2025.

The Center appointed Luca Barbero as the sole panelist in this matter on June 20, 2025. 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

The Complainants operate a software platform that allows businesses to create software robots (also known as digital workers) that can automate certain rule-based tasks such as data entry and customer service.

In particular, the Complainants’ offering includes intelligent automation capabilities, allowing for the integration of Artificial Intelligence (“AI”) into automation processes. The Complainants’ services are used across various industries, including finance, healthcare, retail, and government, to automate a wide range of business processes.

The first Complainant Blue Prism Limited is the owner of several trademark registrations consisting of, or
including, BLUE PRISM, including the following, as per trademark registration certificates submitted in Annex

10 to the Complaint:

- Australian trademark registration No. 2007985 for BLUE PRISM (word mark), registered on May 9, 2019, in

classes 9, 16, 35, 38, 41, and 42;

- The Chinese trademark registration No. 38407113 for BLUE PRISM (word mark), registered on March 7,

2020, in international classes 9, 16, 35, 38, 41, and 42;

- European Union trademark registration No. 018064213 for BLUE PRISM (word mark), registered on

January 17, 2020, in classes 9, 16, 35, 38, 41, and 42;

- United Kingdom trademark registration No. UK00003358091 for BLUE PRISM (word mark), registered on

March 8, 2019, in classes 9, 16, 35, 38, 41, and 42;

- United Kingdom trademark registration No. UK00003144686 for BLUE PRISM (word mark), registered on

May 27, 2016, in classes 9, 35, 41, and 42;

- United States trademark registration No. 6156288 for BLUE PRISM (word mark), registered on September

22, 2020, in international classes 9, 16, 35, 38, 41, and 42;

- International Trademark Registration No. 1491738 for BLUE PRISM (word mark), registered on May 10,

2019, in international classes 9, 16, 35, 38, 41, and 42;

- European Union trademark registration No. 018753246 for SS&C BLUE PRISM (word mark), registered on

January 10, 2023, in classes 9, 16, 35, 38, 41, and 42;

- United Kingdom trademark registration No. UK00003823995 for SS&C BLUE PRISM (word mark),
registered on December 02, 2022, in classes 9, 16, 35, 38, 41, and 42;

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- United States trademark registration No. 7350583 for SS&C BLUE PRISM (word mark), registered on April

9, 2024, in international classes 9, 16, 35, 38, 41, and 42; and

- International Trademark Registration No.1722743 for SS&C BLUE PRISM (word mark), registered on
December 06, 2022, in classes 9, 16, 35, 38, 41, and 42.

The second Complainant SS&C Technologies, Inc. is the parent company of the first Complainant and is the owner of the International Trademark Registration No. 1722743A for SS&C BLUE PRISM (word mark), designating Canada, registered on December 6, 2022, in international classes 9, 16, 35, 38, 41, and 42.

The first Complainant is also the owner of the domain name <blueprism.com>, which was registered in 1999, and, according to the Complaint, was acquired by the Complainants and subsequently used since around the mid to late 2000s. The domain name is being used in connection with the Complainants’ official website,

promoting the Complainants’ products and services.

The disputed domain names <the-blueprism.com>, <theblueprism.com>, <the-blueprism.net>,

<theblueprism.net>, <theblueprism.cc> and <the-blueprism.cc> were all registered on October 14, 2024.

The disputed domain names <blue-prismpro.com>, <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net> and <blueprismpro.xyz> instead, were all registered on December 5, 2024, whilst the

disputed domain name <the-blueprisms.com> was registered on March 9, 2025.

At the time of drafting of this Decision, none of the disputed domain names resolves to an active website.
However, according to the screenshots submitted as Annex 4 to the Complaint – which have not been
contested by the Respondents, prior to the filing of the present Complaint, the disputed domain names:
<the-blueprism.com>, <the-blueprism.net>, <theblueprism.net>, <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net> and <the-blueprisms.com> all resolved to identical websites publishing the
Complainants’ BLUE PRISM and SS&C BLUE PRISM marks in multiple places within each website and
offering for sale purported luxury branded shoes and apparel as well as electronics, accessories, jewelry,
watches and furniture. Moreover, all websites published a copyright notice referencing to “Blue Prism
Limited”, whilst the Privacy Policies on each website cited a company called “Blue Prism” in the United

States.

The disputed domain name <the-blueprism.cc> was used in the contact email address published on the website, with a background image that periodically changed.

The disputed domain names <blueprismpro.xyz>, <theblueprism.com> and <theblueprism.cc> do not appear to have been used in connection with active websites, whilst according to consumer reports received by the Complainants, the disputed domain name <blue-prismpro.com> was being used in a crypto investment scam where the fraudster falsely represented itself as being affiliated or working with the Complainants.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainants state that the disputed domain names are identical or at least confusingly similar to the Complainants’ BLUE PRISM and SS&C BLUE PRISM marks, as they reproduce the BLUE PRISM trademark in its entirety and the SS&C BLUE PRISM mark partially, with the mere addition of the terms “the” and “pro” before and after the words “blue prism”.

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The Complainants claim that the Respondents have no rights or legitimate interests in the disputed domain names since: i) the Respondents are in no way affiliated with the Complainants and have never been authorized by the Complainants to use any of the Complainants’ trademarks in any way including to register disputed domain names; ii) the registration date of the Complainants’ trademarks long predate that of the registration of the disputed domain names; and iii) a trademark search for the words “the blue prism” and “blue prism pro” conducted on behalf of the Complainants failed to identify any third party registered rights.

Moreover, the Complainants contend that they have failed to identify a bona fide, legitimate, or fair use of the disputed domain names or of the name “blue prism” since: i) between December 2024 and January 2025, the Complainants found out through several customer communications, that the Respondents were making fraudulent and illegitimate use of the disputed domain names to scam customers into believing that the disputed domain names were somewhat endorsed or affiliated with the Complainants, whilst offering professional opportunities and a cryptocurrency investment opportunity, both conducted through the <blue-prismpro.com> disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainants indicate that the Respondents registered and are using the disputed domain names in bad faith since: i) the disputed domain names are almost identical to the Complainants’ BLUE PRISM domain name <blueprism.com> and the Complainants’ trademarks; ii) BLUE PRISM is a unique syntactical juxtaposition which is not commonly used in the English

language, being distinctive of - and associated solely with - the Complainants; iii) considering the above
mentioned use of the disputed domain names, it is highly unlikely that the Respondents registered the
disputed domain names without knowledge of the Complainants; iv) the Respondents not only used the
Complainants’ marks in the disputed domain names, but also on the active websites to which most of the
disputed domain names resolved, and v) the Respondents used the disputed domain names to scam the
Complainants’ customers whilst attempting to pass off as the Complainants or someone associated with the

Complainants.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainants allege that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainants request the consolidation of the disputes against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainants’ request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainants’ request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the Complainants asserted that the disputed domain names, although registered in the name of different entities, are under common control since:

a) eleven out of the twelve disputed domain names have the same Registrar, Dominet (HK) Limited;

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b) five disputed domain names (<the-blueprism.com>, <theblueprism.com>, <the-blueprism.net>,
<theblueprism.net> and <theblueprism.cc>) were registered on October 14, 2024, with a mailing address
purportedly in Missouri, U.S. under the registrant organization “Ms. Mertie Hill DDS”. The Complainants note
that the city indicated in the registration details of the disputed domain names does not exist in the U.S. State

of Missouri, and that the postal code provided is invalid zip code in Missouri;

c) five other disputed domain names (<blue-prismpro.com>, <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net> and <blueprismpro.xyz>) were registered on December 5, 2024 with a mailing address
purportedly in the UK under the registrant organization: “Jim Khan”.

The Complainants note that the address provided does not exist as a valid address in the UK when searching on the Royal Mail address finder at “ Moreover, the postal code provided corresponds to a different area;

d) the disputed domain name <the-blueprisms.com> has been identified by the Complainants as having
been registered on March 9, 2025, using Dominet (HK) Limited as the registrar with a mailing address
purportedly in the UK under the registrant organization “Edward Walsh”. The Complainants note that the
address provided does not exist as a valid address in the UK when searching on the Royal Mail address

finder. Moreover, the postal code provided corresponds to a different area;

e) the disputed domain name <the-blueprism.cc> was registered on October 14, 2024, the same day as the
first tranche of the disputed domain names. The registrant, as revealed by the information provided by the
Registrar to the Center, is reported to be Alex Will with a mailing address purportedly in the U.S. The

Complainants note that, according to Google Maps, the street, town and zip code point to a different area;

f) the information provided by the registrants of the disputed domain names is intended to mask the true
identity of the Respondents in circumstances in which the Complainants have reasonable grounds to believe

that the disputed domain names are subject to common control by the same party;

g) the first ten domain names were registered in two tranches, on October 14, 2024, and December 5, 2024,
with each tranche of domain name registrations providing identical details and with all but one disputed

domain name using the same registrar;

h) the websites corresponding to the disputed domain names <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net>, <the-blueprism.com>, <the-blueprism.net>, <theblueprism.net> and

<the-blueprisms.com>, when active, were identical;

i) the disputed domain name <the-blueprism.cc> was registered using a different Registrar (PDR Ltd d/b/a
PublicDomainRegistry.com), but it was registered on October 14, 2024 like the disputed domain names <the-
blueprism.com>, <theblueprism.com>, <the-blueprism.net>, <theblueprism.net> and <theblueprism.cc> and
used for a contact email address which was displayed on the websites to which seven of the disputed

domain names previously resolved (“[…]@the-blueprism.cc”);

j) according to the Registrar-disclosed registrant information, eleven of the disputed domain names are

registered with email addresses based on the domain name <21cn.com>;

k) as outlined above, all four Respondents have non-existent or inaccurate mailing addresses with a pattern
emerging amongst “Ms. Mertie Hill DDS”, “Jim Khan” and “Edward Walsh” all of which have provided a
similar city/province name which do not correspond to an existing province or city in the area specified.

The Panel finds that the elements highlighted by the Complainants and referenced above demonstrate a common control of the disputed domain names. Indeed, the disputed domain names all reproduce the BLUE PRISM mark of the Complainants alone or in combination with the non-distinctive elements “the”, “pro”, a letter “s” and/or a hyphen. Moreover, according to the records, seven of the disputed domain names have

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been pointed to identical websites and the other five disputed domain names have commonalities in the
registration details which suggest common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain
name registrants in a single proceeding. The Respondents are hereinafter collectively referred to as the

“Respondent”.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain names;

and
(iii)	that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trademarks and the disputed domain names. WIPO Overview 3.0, section 1.7.

The Complainants have shown rights in respect of a trademark or service mark for the purposes of the of valid trademark registrations for BLUE PRISM.

The Panel finds that the BLUE PRISM mark is entirely reproduced, and is thus recognizable, in the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The mere addition of the elements “the” and “pro” before and after the words “blue prism”, of a single letter
“s” and/or of a hyphen does not prevent a finding of confusing similarity under the first element confusing

similarity test. WIPO Overview 3.0, section 1.8.

As to the generic Top-Level Domains “.com”, “.net” and “.xyz” and the country-code Top-Level Domain “.cc”,
they can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section

1.11.1.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain names.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

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that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes 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 domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the
Policy or otherwise.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not affiliate or licensee of the Complainants, nor has the Respondent obtained authorization to use the Complainants’ trademarks or to register the disputed domain names.

Moreover, there is no element from which the Panel could infer the Respondent’s rights over the disputed domain names, or that the Respondent might be commonly known by the disputed domain names.

The Panel also finds that there is no evidence of use of the disputed domain names by the Respondent in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants’ trademarks.

As mentioned above, prior to the filing of the present Complaint, the disputed domain names
<the-blueprism.com>, <the-blueprism.net>, <theblueprism.net>, <blueprismpro.com>, <blue-prismpro.net>,
<blueprismpro.net> and <the-blueprisms.com> all resolved to identical websites publishing the
Complainants’ BLUE PRISM and SS&C BLUE PRISM marks in multiple places within each website and
offering for sale luxury branded shoes and apparel as well as electronics, accessories, jewelry, watches and
furniture. Moreover, all websites published a copyright notice referencing “Blue Prism Limited” (the first
Complainant’s company name), whilst the Privacy Policies on each website mentioned a company called
Blue Prism purportedly headquartered in the United States.

The disputed domain name <theblueprism.cc> instead, was used in connection with an email address published on the above-referenced websites and was redirected to a login page requesting credentials to access the website.

The Panel notes that the Respondent’s use of the above-listed disputed domain names suggests that the Respondent intended to attract users to its websites for commercial gain, passing off as the Complainants and/or suggesting an affiliation with them, and finds that such use does not amount to a bona fide offering of

goods or services or a legitimate noncommercial or fair use.

In addition, the Complainants submitted that, according to consumer reports received by the Complainants, the disputed domain name <blue-prismpro.com> was being used in a crypto investment scam where the fraudster falsely represent itself as being affiliated or working with the Complainants.

Panels have held that the use of a domain name for illegal activity such as impersonation/passing off or committing fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The disputed domain names <blueprismpro.xyz>, <theblueprism.com> and <theblueprism.cc>, instead, have not been used in connection with active websites. In view of the Respondent’s default, and noting the

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composition of these disputed domain names, the Panel is of the view that passive holding of these domain
names does not confer rights or legitimate interests on the Respondent.

The Panel further notes that the disputed domain names, reproducing the Complainants’ BLUE PRISM mark in its entirety, coupled with the use of some of the disputed domain names to resolve to websites in which the Respondent tries to pass off as the Complainants, affirm the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the disputed domain names and the Complainants as to the origin or affiliation of the websites at the dispute domain names.

Therefore, the Panel finds the second element of the Policy has also been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In view of the prior registration and use of the trademarks BLUE PRISM and SS&C BLUE PRISM in
connection with the Complainants’ products and services, promoted online via the website
“ the Panel finds that the Respondent was or should have been aware of the
Complainants’ trademarks at the time of the registration of the disputed domain names.

According to the screenshots submitted by the Complainants, seven of the disputed domain names resolved prior to this proceeding to a website displaying the Complainants’ trademarks and promoting the online sale of shoes and apparel as well as electronics, accessories, jewelry, watches and furniture. In addition, all

websites published an email address based on the disputed domain name <the-blueprism.cc> and a
copyright notice referencing to Blue Prism Limited, whilst the Privacy Policies on each website referenced to
a company called Blue Prism in the United States. The Complainants also stated that the disputed domain
name <blue-prismpro.com> was used to attempt to pass off as the Complainants or someone associated
with the Complainants whilst offering customers professional and cryptocurrency investment opportunities.

In view of the use of the above-mentioned disputed domain names in connection with the websites described above, the Panel finds that the Respondent was clearly aware of the Complainants and their trademarks at the time of registration, and used the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of its websites and the services promoted therein according to paragraph 4(b)(iv) of the Policy.

As indicated above, at the time of drafting the Decision, none of the twelve disputed domain names resolves to an active website, whilst the disputed domain names <theblueprism.com>, <theblueprism.cc>, <blueprismpro.xyz> apparently never pointed to active websites since their registration. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s BLUE PRISM and SS&C BLUE PRISM marks in their sector and, considering the composition of the disputed domain names, the Respondent’s failure to provide any evidence of actual or contemplated good-faith use and the prior use made by the Respondent of most of the disputed domain names, finds that, under the circumstances, the current passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainants have established the third element of the Policy as well.

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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 names <blue-prismpro.com>, <blueprismpro.com>, <blue-prismpro.net>, <blueprismpro.net>, <blueprismpro.xyz>, <the-blueprism.cc>, <theblueprism.cc>, <the-blueprism.com>,

<theblueprism.com>, <the-blueprism.net>, <theblueprism.net>, and <the-blueprisms.com> be transferred to

the Complainants.

/Luca Barbero/
Luca Barbero
Sole Panelist
Date: July 4, 2025