WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blackbaud, Inc. v. Privacy Administrator, Anonymize, Inc.

Case No. D2021-4153

1. The Parties

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

Respondent is Privacy Administrator, Anonymize, Inc., United States.

2. The Domain Name and Registrar

The disputed domain name <blackbuad.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the then registrar Alibaba Cloud Computing (Beijing) Co., Ltd. (“Alibaba”) a request for registrar verification in connection with the Domain Name. On December 14, 2021, Alibaba transmitted by email to the Center its verification response indicating that the Domain Name could not be locked as it was pending transfer. On January 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On January 13, 2022, the Center sent an email to Complainant informing it that the Domain Name is no longer registered with Alibaba but with the Registrar, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 13, 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2022.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 9, 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

Complainant “provides software for fundraising, non-profits, educational institutes, etc.” under the trademark BLACKBAUD. Complainant operates a commercial website at the domain name <blackbaud.com>.

Complainant holds a number of registered trademarks for BLACKBAUD, including United States Reg. No. 5,280,412, filed on February 2, 2017 and registered on September 5, 2017 in International Class 9.

The first use in commerce of the BLACKBAUD trademark is 1982.

The Domain Name was registered on February 6, 2017. The Domain Name resolves to a parking page containing various hyperlinks, including “Nonprofit Software” and “Online Fundraising”. Complainant states that these hyperlinks lead to sites which offer services similar to those offered by Complainant under the BLACKBAUD mark. Complainant asserts that Respondent might be deriving pay-per-click (“PPC”) revenue from these hyperlinks. Respondent has not denied this.

According to Complainant, it has no relationship with Respondent and has never authorized Respondent to use its BLACKBAUD mark in a domain name or otherwise. Respondent has not denied this.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark BLACKBAUD, through registration demonstrated in the record. The Panel finds the Domain Name to be confusingly similar to the BLACKBAUD mark. The mark is entirely reproduced in the Domain Name, except for the inversion of the letters “a” and “u”. In the Panel’s view, this slight alteration of the mark does not overcome the fact that the BLACKBAUD mark is clearly recognizable within the Domain Name.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not come forward to articulate or prove any legitimate reason why it registered the Domain Name. It is undisputed that Respondent has not received permission from Complainant to use or register the BLACKBAUD mark in a domain name or otherwise. The record also shows that the website to which the Domain Name resolves contains hyperlinks to websites purporting to offer services which overlap significantly with Complainant’s services. Such conduct is plainly not legitimate.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

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

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

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

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “Rights or Legitimate Interests” section. The BLACKBAUD mark appears inherently distinctive, as it does not correspond to any dictionary word of which the Panel is aware. The Domain Name, which closely resembles the BLACKBAUD mark, features hyperlinks to sites offering services in apparent competition with Complainant. This fact indicates that, on a balance of probabilities and under this undisputed record, Respondent more likely than not had Complainant’s trademark in mind when registering the Domain Name. Further, the Panel notes that Domain Name was registered before the formal registration of Complainant’s BLACKBAUD mark. However, the claimed first use of such mark was in 1982, and the Panel finds that the registration of the Domain Name four days after the filing of the Complainant’s trademark application points to a clear knowledge of and intent to unfairly capitalize upon the Complainant’s nascent trademark rights in bad faith.

The use to which the Domain Name is put also indicates bad faith use under the above-quoted Policy paragraph 4(b)(iv). It is plausibly alleged, and not disputed, that Respondent derives PPC revenue from the hyperlinks to sites which offer services similar to those offered by Complainant featured at the website to which the Domain Name resolves.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <blackbuad.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: February 9, 2022