DECISION

 

SchoolStatus, LLC v. Registration Private / Domains By Proxy, LLC

Claim Number: FA2401002081017

PARTIES

Complainant is SchoolStatus, LLC ("Complainant"), represented by Ashley N. Klein of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Registration Private / Domains By Proxy, LLC ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <schoolstatus.ai> ("Domain Name"), registered with 1API GmbH.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 26, 2024; Forum received payment on January 26, 2024.

 

On January 31, 2024, 1API GmbH confirmed by e-mail to Forum that the <schoolstatus.ai> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 31, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@schoolstatus.ai. Also on January 31, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, SchoolStatus, LLC, provides educational technology services including parent communication tools and student data tools for educators. Complainant has rights in the SCHOOLSTATUS mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 4,718,251, registered on April 7, 2015). Respondent's <schoolstatus.ai> domain name is identical to Complainant's SCHOOLSTATUS mark as it consists of the SCHOOLSTATUS mark and the ".ai" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <schoolstatus.ai> domain name as Respondent engages in typosquatting. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its mark in the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts a parked webpage with pay-per-click links related to Complainant's services. Respondent also created the Domain Name for phishing to defraud Complainant's customers in future.

 

Respondent registered and uses the <schoolstatus.ai> domain name in bad faith by attracting users for commercial gain and creating confusion among users. Additionally, Respondent hosts a parked webpage with pay-per-click links. Furthermore, Respondent hides its identity using a privacy service. Finally, Respondent registered the Domain Name with actual knowledge of Complainant's rights in the SCHOOLSTATUS mark and the intention to use for phishing purposes.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the SCHOOLSTATUS mark.  The Domain Name is identical to Complainant's SCHOOLSTATUS mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").  

 

In particular, the Panel notes that Complainant has asserted, upon "information and belief", that Respondent is using the Domain Name for an illegitimate phishing scheme. Complainant provides no evidence in support of this contention which is entirely unsubstantiated and speculative.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SCHOOLSTATUS mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,718,251, registered on April 7, 2015). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

The Panel finds that the <schoolstatus.ai> domain name is identical to Complainant's SCHOOLSTATUS mark as it wholly incorporates the SCHOOLSTATUS mark and adds the ".ai" gTLD. Adding a gTLD to a wholly incorporated trademark does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i).  See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SCHOOLSTATUS mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Registration Private / Domains By Proxy, LLC" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website featuring pay-per-click advertisements unrelated to the descriptive meaning of the Domain Name (while the advertisements do refer to schools, there is no reference to "school status" or any synonym or similar phrase) for which the Respondent is likely to receive revenue.  This is not a bona fide offering or a legitimate noncommercial or fair use.  See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").   

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

It is unclear on the evidence before the Panel when the Domain Name was registered, but given the Respondent's failure to provide any evidence in this matter, including evidence of registration prior to Complainant's mark rights arising (the date of first use of the SCHOOLSTATUS mark being 2012), the Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, Respondent had actual knowledge of Complainant's SCHOOLSTATUS mark as it would be unlikely for a party to acquire a domain name that is identical to the SCHOOLSTATUS mark and redirect it to a pay-per-click website with hyperlinks unrelated to the descriptive meaning of the Domain Name absent any awareness of Complainant and its SCHOOLSTATUS mark (and intention to capitalize on Complainant's reputation in its SCHOOLSTATUS mark).  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's SCHOOLSTATUS mark for commercial gain by using the Domain Name to resolve to a website containing advertisements and links to other third-party websites for commercial gain.  Use of an identical or confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv).  See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent's use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) ("Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant's competitors from which Respondent is presumed to obtain some commercial benefit.").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <schoolstatus.ai> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: February 22, 2024