Heartland Payment Systems, LLC v. Jussell Woody
Claim Number: FA2112001977754
Complainant is Heartland Payment Systems, LLC (“Complainant”), represented by Katelin Drass of Foley & Lardner LLP, District of Columbia, USA. Respondent is Jussell Woody (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myschoolbucks.us>, which is registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2021; the Forum received payment on December 20, 2021.
On December 20, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <myschoolbucks.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2022, 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@myschoolbucks.us. Also, on December 23, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a platform under the MYSCHOOLBUCKS mark that allows parents to pay for all of their student’s school expenses.
Complainant holds a registration for the MYSCHOOLBUCKS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,255,165, registered December 4, 2012.
Respondent registered the domain name on or about <myschoolbucks.us> March 11, 2019.
The domain name is substantively identical and confusingly similar to Complainant’s MYSCHOOLBUCKS mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the MYSCHOOLBUCKS mark.
Respondent does not use the domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain to pass itself off as Complainant online and to host pay-per-click hyperlinks to third-party websites operating in competition with the business of Complainant.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the MYSCHOOLBUCKS mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered or is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the MYSCHOOLBUCKS service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Ecolab USA Inc. v. (name redacted), FA 1888902 (Forum April 20, 2020):
Complainant’s ownership of a USPTO registration for … [its mark]… is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <myschoolbucks.us> domain name is substantively identical, and, therefore, confusingly similar, to Complainant’s MYSCHOOLBUCKS service mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us.” The mere addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
See also MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015):
In light of the fact that Respondent’s … domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel … finds that the disputed domain name is identical to Complainant’s … mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <myschoolbucks.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <myschoolbucks.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to pass itself off as Complainant online and to host pay-per-click hyperlinks to third-party websites operating in competition with the business of Complainant. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this employment of the domain name. Such a use is manifestly not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii). See, for example, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that a respondent failed to provide evidence of either a bona fide offering of goods or services by means of a disputed domain name where that domain name resolved to a website offering hyperlinks to other websites marketing goods competing with those of a complainant whose mark was reflected in the domain name).
We turn, then, to Complainant’s contention, which Respondent, again, does not deny, that Respondent has not been commonly known by the contested <myschoolbucks.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Jussell Woody,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.” See also Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where the pertinent WHOIS information identified “Fred Wallace” as its registrant).
Finally, under this head of the Policy, because it is evident from the record that Respondent seeks to profit from its misleading diversionary use of the domain name, it cannot be said that it is making “a legitimate noncommercial or fair use” of it as contemplated by Policy ¶ 4(c)(iv).
For all of these reasons, the Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence of record that, as alleged in the Complaint, Respondent uses the <myschoolbucks.us> domain name to pass itself off as Complainant online for the purpose of hosting pay-per-click hyperlinks to third-party websites operating in competition with the business of Complainant.
Such a use disrupts Complainant’s business, and, under Policy ¶ 4(b)(iii), it stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Health Republic Insurance Company v. Above.com Legal, FA1622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MYSCHOOLBUCKS mark when Respondent registered the offending domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Chevron Intellectual Property LLC v. Eileen Boob, FA 1861000 (Forum October 4, 2019):
Complainant shows that Respondent uses the disputed domain name to pass [itself] off as Complainant. The Panel finds that this is evidence that Respondent knew of Complainant’s rights in the … [Complainant’s] … mark when it registered the disputed domain name, and constitutes bad faith [registration] under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <myschoolbucks.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 20, 2022
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