WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blackboard Inc. v. Cupcake Patrol
Case No. D2000-0811
1. The Parties
1.1. Complainant is Blackboard Inc. a corporation organized under the laws of the State of Delaware, U.S.A. Respondent is Cupcake Patrol, an entity with a place of business in Andalusia, Pennsylvania, U.S.A. Complainant is represented by counsel, Greenberg Traurig, LLP.
2. The Domain Name and Registrar
2.1. The domain name which is the subject of this proceeding is "blackboad.com" owned by Cupcake Patrol. The domain name is registered with Core Internet Council of Registrars ("CORE"), Geneva, Switzerland, through one of CORE ís domain name resellers, CSL GmbH, Dusseldorf, Germany.
3. Procedural History
3.1. Complaint was received by e-mail on July 17, 2000.
3.2. Complaint was received in hard copy on July 18, 2000.
3.3. Receipt of Complaint was acknowledged on August 15, 2000.
3.4. URL printout was submitted on July 20, 2000.
3.5. Formal Requirements Compliance Checklist was submitted on July 21, 2000.
3.6. CORE Registrarís Verification Response to Request for Verification of July 20, 2000 submitted on July 20, 2000.
3.7. Registrarís notice of hold status was submitted on July 25, 2000.
3.8. Notification of Complaint and Commencement of Administrative Proceeding was submitted on August 8, 2000.
3.9. Notification of Respondent Default was submitted on September 11, 2000.
3.10. Appointment of Administrative Panel and Transmission of Case File documents was made on September 27, 2000.
4. Factual Background
4.1. This Complaint is based upon the trademark BLACKBOARD which is owned by Complainant, Blackboard Inc., and which was registered by the United States Patent and Trademark Office on February 8, 2000 as Registration No. 2,315,293. The registration is valid, subsisting and in full force and effect. In addition, Blackboard has trademark applications for the marks BB BLACKBOARD (and Design)(Serial No. 75-864057), BLACKBOARD.COM (Serial No. 75-862857), MY BLACKBOARD (Serial No. 75-862859) and POWERED BY BLACKBOARD (Serial No. 75-864063) that are pending with the PTO.
4.2. Complainant has also filed trademark applications for the aforementioned marks in Australia, Belgium, Canada, China, the European Union, India, Israel, Japan, Luxembourg, Netherlands, Russia and South Africa.
4.3. Since 1997, Blackboard has expended considerable resources in developing and marketing a software platform, which enables a Web distributed learning system currently used by over 3,000 educational institutions and other entities. Blackboard makes its software platform available through its Web property and as separate software products.
4.4. Blackboard is also the owner of a federal trademark registration (Registration No. 2,315,293) for the mark BLACKBOARD in connection with "computer consultation in the field of instructional management systems" (International Class 42).
4.5. On April 7, 2000, the domain name in issue was requested.
5. Partiesí Contentions
5.1. The second-level domain "blackboad" in the domain name "blackboad.com", adopted by Respondent, is confusingly similar to Complainantís famous registered BLACKBOARD mark.
5.2 The Respondent has no legitimate interests in the domain name. Respondent cannot demonstrate any legitimate interests in the domain name. Upon information and belief, Respondent has not used or made any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of its own goods or services.
5.3. Upon information and belief, Respondent is not making any legitimate noncommercial or fair use of the domain name, and intended to misleadingly divert consumers.
5.4. Respondent has no trademark or service mark rights in the BLACKBOARD mark.
5.5. The domain name was registered and is being used in bad faith. Respondent, who has no affiliation with the Complainant, has registered the domain name in a blatant attempt to capitalize unfairly on the goodwill of the BLACKBOARD mark and to force individuals that misspell BLACKBOARD by mistakenly leaving out the letter "r", to open a series of "pop-up" windows containing several web sites registered to Respondent or, upon information and belief, its affiliated companies.
5.6. Individuals who type "blackboad.com" into their Internet browser are taken to a web site, owned by Respondent, that displays third party banner advertisements, and are subsequently re-directed to other distinct web sties, all owned or registered by Respondent, containing, upon information and belief, unauthorized lyrics to copyrighted music as well as unauthorized access to music and video game downloads. Additional windows are generated when the user is re-directed, each displaying banner advertisements. Upon information and belief, Respondent earns revenue for each of the windows that contain such third party advertisements.
5.7. Ultimately, after closing a series of windows depicting Respondentís web sites, an end-user typing in "blackboad.com" is lead to Complainantís home page located at "blackboard.com". A copy of the publicly-available source code for blackboad.com, as of June 19, 2000, demonstrating Respondentís use of Complainantís BLACKBOARD mark in its own metatag.
5.8. Paragraph 4 (b)(iv) of Policy, evidence of registration and use in bad faith may be established by:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís marks as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
5.9. On June 21, 2000, Complainantís counsel sent to Respondent via Federal Express a "cease-and-desist" letter advising Respondent, inter alia, of Complainantís rights in the BLACKBOARD marks. Complainant has not received any response to its "cease-and-desist" letter.
5.10. Upon information and belief, Respondent registered the domain name "blackboad.com" for the purpose of diverting individuals seeking Complainantís web site who mistakenly type in "blackboad.com," by failing to insert the letter "r" prior to the final "d", to Respondentís web sites for its own commercial gain, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its own web sites and thus has violated Paragraph 4 (b)(iv) of the Policy. Respondent should not be permitted to profit from its bad faith registration.
5.11. Additionally, the fact that Respondentís web site ultimately links to Complainantís web site demonstrates not only the fact that Respondent was aware of Complainantís goodwill and reputation and its intention to misdirect Complainantís customers for its own commercial gain, but also the Respondentís willful disregard of Complainantís intellectual property rights in the BLACKBOARD marks.
5.12. The evidence in this dispute is similar to that presented in Case No. D2000-0326 involving GeoCities, in which the Panel found that Respondent had used the domain name "geociities.com" in bad faith. In that decision, the Panel found that:
"The evidence provided by the Complainant demonstrates without any question that the Respondent registered a domain name that represents a simple one letter misspelling of the Complainantís registered trademark and that this resulted in actual confusion of users. The evidence further shows that the use of the Domain Name by Respondent was an intentional plan to commercially capitalize on the fame and goodwill of the Complainantís mark "GEOCITIES" as well as the GeoCities site."
GeoCities v. Geociities.com, Case No. D2000-0326, p. 4. (June 19, 2000). The Panel also found that the apparent purpose of the misdirection was to create commercial opportunities for the Respondent through sales of products offered for sale on those web sites owned by the Respondent. Similarly, in this case, the purpose of misdirecting individuals is to create commercial opportunities for the Respondent through advertising revenue on those web sites owned by the Respondent.
5.13. Respondent is in default and has not filed a Response.
6. Discussion and Findings
6.1. Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2. The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark BLACKBOARD and is satisfied that the Complainant has proven trademark rights in such term. Furthermore, the Panel finds that the domain name "blackboad.com" is confusingly similar to the trademark in which the Complainant has rights.
6.3. The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.
6.4. Finally, the Panel needs to examine the issue of bad faith. The record has evidence of Respondentís bad faith under Policy 4(b)(iv) due to the misdirection of web traffic to Respondentís other websites. Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.
7.1. The Panel decides that the domain name "blackboad.com" is identical or confusingly similar to the trademark of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.
7.2 The Panel hereby orders that the registration of the domain name "blackboad.com" be transferred to Complainant.
Clark W. Lackert
Dated: October 17, 2000