WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blackbaud, Inc. v. Steven Dale, ElevenCloud Solutions
Case No. D2021-4211
1. The Parties
The Complainant is Blackbaud, Inc., United States of America (“United States”), represented by Soteria LLC, United States.
The Respondent is Steven Dale, ElevenCloud Solutions, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <yourcause.finance> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2021, 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 December 16, 2021 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 amendment to the Complaint on December 16, 2021. The Center received two email communications and an online submission from the Respondent on December 16, 2021.
The Center verified that the Complaint together with the amendment to the 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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any further response. The Center notified the commencement of Panel appointment process on January 12, 2022.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 27, 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.
On February 16, 2022, the Panel issued Procedural Order No. 1 seeking clarification of an aspect of the Respondent’s online submission. The Respondent provided a further written statement in response later on February 16, 2022.
4. Factual Background
According to its website at “https://solutions.yourcause.com/about/”, the Complainant provides software, services, expertise, and data intelligence to facilitate its customers’ employee engagement in the customers’ social responsibility programs and grantmaking. The website indicates that the Complainant has offices in North America, Canada, Europe, and Asia Pacific. According to the Complaint, the Complainant has been in operation for 40 years but acquired Your Cause Holdings LLC and its business in 2019.
The Complaint includes evidence that the Complainant’s subsidiary, YourCause LLC, owns United States Registered Trademark No. 5665166, YOURCAUSE, in respect of software as a service (SAAS) services, namely, hosting corporate social responsibility services software for use by others that enables employees to donate to their charities of choice in International Class 42. The application was filed on March 21, 2018 and registered on January 29, 2019. It claims first use in commerce in February 2008.
The WhoIs Record for the disputed domain name included in Annex 1 to the Complaint states the disputed domain name was registered on November 22, 2021.
To date, the disputed domain name has not resolved to a website.
According to the online Response submitted by the Respondent, it registered the disputed domain name to build a “charity crypto blockchain DeFi [decentralized finance] project”.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 online submission made by the Respondent appeared to consent to transfer but also appeared to be incomplete. Accordingly, the Panel issued Procedural Order No. 1. In the Respondent’s supplemental filing received in response, the Respondent disputes the Complainant’s title to the claimed trademark. The Panel considers it appropriate, therefore, to proceed on the basis that the Respondent has not consented to transfer and so will proceed to a decision on the merits.
Accordingly, paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark for YOURCAUSE in the United States identified in section 4.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (TLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.finance” TLD, the disputed domain name consists of the Complainant’s registered trademark solely. The disputed domain name, therefore, is identical to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, even if [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name several years after the Complainant had registered its trademark and also after the Complainant began using the trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
So far as the material before the Panel discloses, the Respondent has not made any use of the disputed domain name.
These circumstances are typically sufficient to raise a prima facie case of lack of rights or legitimate interests in the disputed domain name.
In response, the Respondent has not disputed the matters raised by the Complainant. Rather, as noted above, it claims it registered the disputed domain name to build a “charity crypto blockchain DeFi [decentralized finance] project”. Further, in its supplemental filing the Respondent submitted:
“The name is “yourcause.finance” but we do not agree that it is any dispute since the wording “your cause” can’t be owned by any entity and we dismiss hereby any claims to infringe on any copyright law since we do not violate any law by using a common wording “your cause”.”
First, as there is no evidence of any use of the disputed domain name, the Respondent must necessarily rely on demonstrable preparations for its use in connection with the claimed purposes. This requires some evidence, not just mere assertion. See e.g.,WIPO Overview 3.0, section 2.2. The Respondent, however, has not provided any evidence of any kind to support the claim. Accordingly, the Panel is not in a position to accept it.
Secondly, the Respondent is undoubtedly correct that the expression “your cause” is an ordinary English expression. That, however, does not automatically preclude the Complainant having rights, nor would it necessarily entitle the Respondent to its registration and use as a domain name. See e.g., WIPO Overview 3.0, section 2.10.
In the present case, the expression “your cause” does have some aptness for use in connection with the Complainant’s services and those which the Respondent claims it intends to provide. However, it is at least arguably not wholly and directly descriptive of those services. Contrary to the Respondent’s contention this is supported by the fact that the trademark is in fact registered as a trademark for the relevant services in the United States.
The Complainant has not provided evidence that it owns registered trademarks in Europe or Switzerland in particular. However, the Complainant does operate on a global scale. Moreover, the Respondent’s claimed business, if it were to operate, would be accessible from anywhere in the world. The services which it claims to be intending to provide are, if not the same as the Complainant’s, very closely analogous. Furthermore, they appear to be directed to, or used by, a public which operates online and from anywhere in the world including the public in the United States.
Given both parties use, or claim they seek to use, the expression “your cause” in largely the same or closely related charity space, therefore, the Panel finds that use of the disputed domain name would be likely to conflict with the Complainant’s trademark rights.
In these circumstances, the Panel considers that the Respondent has not rebutted the prima facie case established by the Complainant. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Complainant appears to be operating a substantial business on a global scale under or by reference to the trademark YOUR CAUSE. While it does have some aptness for the services in question, it does not appear to be directly descriptive of the particular services offered by the Complainant or which the Respondent claims to be intending to provide. There is no evidence before the Panel that, before it registered the disputed domain name, the Respondent was operating in, or particularly in, the charitable space. All that can be gleaned from the very limited information available about the Respondent through a Google search, apart from its location in Switzerland, is that it is in the business of IT Engineering and Consulting.
Against this background, an inference is available that the Respondent adopted the disputed domain name because of its use by the Complainant and some explanation or justification is required. In section 5.B. above, however, the Panel rejected the Respondent’s claimed reasons for registering the disputed domain name on the basis that no evidence had been provided to support it. Moreover, the Respondent has not denied the Complainant’s allegations of knowledge.
Given the failure of the Respondent’s claimed entitlement to the disputed domain name on the very limited evidence advanced against the background in this case, therefore, the Panel finds that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark and use and, accordingly, in bad faith under the Policy. The passive holding of the disputed domain name, in the absence of any acceptable explanation of its intended use or obstacles to using it, qualifies as use in bad faith under the Policy. All the more so if the Respondent’s intended use were in fact implemented as it would appear there would be potential overlap between the services of the respective parties noting that both aim to provide services related to charity.
Accordingly, the Panel finds the Complainant has established all three requirements under the Policy.
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, <yourcause.finance>, be transferred to the Complainant.
Warwick A. Rothnie
Date: February 23, 2022