DECISION

 

PRM Group, Inc. v. Raju Mahajan / Norah Talent

Claim Number: FA2505002153614

 

PARTIES

Complainant is PRM Group, Inc. ("Complainant"), represented by Lauren Caverly Pratt of Holland & Knight LLP, District of Columbia, USA. Respondent is Raju Mahajan / Norah Talent ("Respondent"), West Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <paralegalbootcamp.us>, registered with Squarespace Domains II LLC.

 

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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 1, 2025; Forum received payment on May 1, 2025.

 

On May 2, 2025, Squarespace Domains II LLC confirmed by e-mail to Forum that the <paralegalbootcamp.us> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On May 5, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2025 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@paralegalbootcamp.us. Also on May 5, 2025, 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 May 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 states that, since 2011, it has provided educational and training services, including live and online courses, seminars, workshops, and conferences, for paralegals and other legal professionals under the trademark PARALEGAL BOOTCAMP. It owned a United States registration for this mark (Reg. No. 4595407) but this was inadvertently cancelled on March 14, 2025 due to an unintentional failure to timely file required maintenance and renewal documents under Sections 8 and 9 of the United States Trademark Act. From July 28, 2020, until its expiration on March 3, 2025, the Registration was incontestable. Nevertheless, Complainant claims common law trademark rights based on its longstanding and widespread use of the mark.

 

It goes on to state that "Respondent sells and provides online training programs, including live classes and homework assignments, that are designed to equip participants with the knowledge and skills necessary to work as a paralegal in the United States (the 'Respondent's Services'), and sells and distributes recordings of and materials from past iterations of such programs" through its website at the disputed domain name. It claims that these products and services compete directly with those provided by Complainant.

 

With respect to the three elements of Policy ¶ 4(a), Complainant asserts that:

 

The disputed domain name, <paralegalbootcamp.us>, is identical to Complainant's mark, as it incorporates the mark verbatim, modifying it only by adding the ".us" ccTLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where its use is unauthorized and it competes directly with Complainant's business in violation of Complainant's trademark rights.

 

The disputed domain name is used in bad faith as Respondent's services directly compete with Complainant, disrupt Complainant's business, and have continued despite Respondent's receipt of multiple notices from Complainant concerning its mark and a demand to transfer the disputed domain name to Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

PRELIMINARY ISSUE: CONCURRENT COURT LITIGATION

Complainant notes that it has commenced litigation against Respondent claiming trademark infringement and cybersquatting under U.S. trademark law, including the Anticybersquatting Consumer Protection Act ("ACPA"). Rule 18 provides, in pertinent part: "(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." Panels have often rendered a decision despite concurrent court litigation when the domain name issues are ancillary to other issues in those proceedings and the domain name issues can be resolved without reference to the remedies at issue in the court case. The WIPO Overview of WIPO Panel Views on Selected UDRP¹ Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") at ¶ 4.14.2, states that "Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding."

 

While Panels have proceeded to render decisions despite the concurrency of litigation between the parties, the court cases in those disputes often involve a variety of issues beyond those in the proceedings under the Policy and where the disputed domain name is either not contested or is at least ancillary to such issues. In RENU MEDISPA, L.L.C. v. Angela Sattler / Aesthetics, FA 2143814 (Forum Apr. 28, 2025), the three-member Panel proceeded with the case despite the existence of pending litigation between the parties. It was specifically noted that "[a]lthough the Idaho Litigation involves issues of trademark validity and infringement, which are relevant to the questions presented here, including whether Complainant has trademark rights and whether Respondent is making a bona fide offering of services in connection with the disputed domain name, the Panel notes that, in the documents submitted to Forum, the disputed domain name is not mentioned or referenced in the litigation." See also Creative Paradox LLC v. Talk America a/k/a Vital Basics, Inc., FA 155175 (Forum June 23, 2003) (ownership of the asserted trademark is the subject of litigation and the UDRP claim is rejected based on a finding of no bad faith registration by Respondent).

 

Other Panels have expressly deferred to the courts where the disputed domain name is central to the pending litigation. In Sun Ray Chinese School, Inc. v. Hui Chiu / MEI HSU, FA 1668860 (Forum May 16, 2016), the Panel noted that "Complainant clearly states that 'on December 17, 2015, it initiated legal proceedings in the District Court for Tarrant County, Texas, against Respondent and others alleging numerous state and federal causes of action based on Respondent's use of SUN RAY, including its use and registration of domain names that incorporate SUN RAY'." It went on to dismiss the case, without prejudice, stating that:

 

After analyzing the facts as well as the evidences brought by the parties, the Panel finds that it seems more reasonable to defer to the concurrent court case. The rationale for this decision is that a panel should not enter a decision when there is a court proceeding pending because no purpose is served by the panel rendering a decision on the merits, whether to transfer the disputed domain names, or otherwise. In fact, in the present situation it is hard to properly adjudicate a dispute where two parties claim to be entitled to the disputed domain names and rights over the SUN RAY trademark and where little opportunity is given in a forum such as this to adequately test and assess the wide-ranging and conflicting assertions made by the parties.

 

Furthermore, the Panel finds that the case seems to present a legitimate trademark dispute.

 

Id.

 

Here, Complainant discloses that on April 1, 2025 it commenced legal proceedings against Respondent in the United States District Court for the District of Maryland (Civil Action No. 8:25-cv-1077-TDC) (the "Maryland Litigation"). While its annexes do not include copies of any pleadings or other documents related to this litigation, it does state that the Maryland case "alleges trademark infringement and unfair competition under federal and state law, Complainant also alleges cybersquatting under the Landham Act (15 U.S.C. § 1125(d)(1)(A)) [, i.e., the ACPA] based on Respondent's registration and use of the Disputed Domain Name." Complainant commenced this proceeding under the Policy with full knowledge of the prior pending litigation and the Policy is directed solely at the question of domain name transfer or cancellation which is identical to a portion of the relief sought by Complainant in its ACPA claim against Respondent (i.e., "the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark" under 15 U.S.C. § 1125(d)(1)(C)). Thus, the present proceedings are duplicative to a portion of the Maryland Litigation.

 

Furthermore, although Respondent has not participated in these proceedings, its reply to a demand letter sent by Complainant's Representative, states, in full, that "'Paralegal Bootcamp' is a generic term & may be used by anyone including yourself. I respectfully disagree with your claims. If you have anything else to say, (without wasting my time) you may take appropriate action based on state law and the U.S. Trademark Act. I will defend myself there."

 

There is also the question of the scope of Complainant's rights in its claimed trademark and thus its ability to assert it against the disputed domain name. Complainant notes that it formerly owned a United States registration of the PARALEGAL BOOTCAMP trademark (Reg. No. 4595407, with the word "paralegal" disclaimed apart from the mark) and that this registration was incontestable under U.S. law. However, it states that "[t]he Registration was inadvertently cancelled on March 14, 2025, due to an unintentional failure to timely file required maintenance and renewal documents under Sections 8 and 9 of the United States Trademark Act." While it asserts rights to the trademark at common law, it has lost the benefit of the incontestable status of its prior trademark registration. In any event, incontestability is primarily a shield (e.g., against cancellation actions based on descriptiveness).

 

The Maryland Litigation, including its ACPA claim against the disputed domain name, provides the parties with an opportunity to fully flesh out all aspects of the present dispute in a manner that is not available under the Policy with its very limited evidentiary tools. Fact issues such as the status and scope of Complainant's trademark rights, accepted definitions of the word "bootcamp" and its distinctiveness in relation to paralegal training services, and whether Respondent knew of and targeted Complainant's mark can be developed through discovery, witness testimony, and cross-examination.

 

In sum, there is a near identity of issues between the present proceedings and some of those in the Maryland Litigation and any decision reached by this Panel regarding the disputed domain name would be effectively moot as all of the issues attendant to an ACPA action would be considered de novo by the Maryland District Court.

 

To avoid interference with the pending litigation, the Panel declines to consider the dispute under the Policy at this time though it dismisses these proceedings without prejudice to Complainant's ability to refile in the event that the Maryland Litigation does not fully address Complainant's claims with respect to the disputed domain name.

 

FINDINGS

-       The proceedings are dismissed without prejudice due to the pendency of Complainant's ACPA action against Respondent which concerns issues and relief that are identical to those at issue in the present case.

 

DECISION

Having concluded that the ongoing litigation between the parties should take precedence in the present dispute, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

 

Accordingly, it is Ordered that the <paralegalbootcamp.us> domain name REMAIN WITH Respondent.

 

__________________________________________________________________

 

 

Steven M. Levy, Esq., Panelist

Dated: June 3, 2025