The domain name MySchool.com looks to be getting hit with a UDRP for a second time in four years. Back in 2010 Joseph L. Carpenter brought a UDRP against Andy Booth and his Foresight.com.

At that time Carpenter alleged the following:

The Complainant alleges that he has used MYSCHOOL® as a trademark and brand name in connection with online information and advertisements in the field of education since at least December of 2008. He operates his website in connection with the domain name <myschool411.com>. And he states that the disputed domain name is identical (in the sense of the Policy) to his MYSCHOOL trademark.

According to the Complainant, he learned some time in 2009 that the disputed domain name was being used to redirect traffic to competing web sites and sent a cease and desist letter to the previous owner of the disputed domain name. In the fall of 2009, that previous owner offered to sell the disputed domain name to the Complainant for US$ 25,000, later reduced to US$ 15,500. In December 2009, the disputed domain name was sold to the Respondent.

The Complainant states that the disputed domain name is being used solely for the purpose of serving sponsored links and generating click through advertising revenue. Consequently, the Respondent has no rights or legitimate interests in the disputed domain name as it is set up solely to run an advertising service through use of an advertisement service, possibly Google Adsense or DomainSponsor.

According to the Complainant, the Respondent registered and is using the disputed domain name in bad faith because it was registered after the Complainant’s mark; because it was transferred to the Respondent after the Complainant sent a cease and desist letter; because the Respondent registered and is using the domain name primarily for the purpose of disrupting the Complainant’s business; and because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or the advertisements thereon.

Further, says the Complainant, confusion arises because the site connected to the disputed domain name displays a “Myschool.com” logo in the upper left corner.

Mr Booth replied:

The Respondent states that the MYSCHOOL.COM mark has been used in conjunction with educational information and resources services since April 4, 1994, until December 2009 when it was purchased, assigned, and transferred to the Respondent, along with the goodwill of the business, for the sum of US$ 12,700. The mark has achieved acquired distinctiveness and, therefore, has obtained substantial common law rights. An application for registration has been filed in 2010.

Alternatively, says the Respondent, the phrase “MY SCHOOL” is consists of common generic terms and the Respondent has fairly used the terms to describe the services that it offers. The Complainant has offered no evidence to support its assertions that the Respondent does not have rights in the disputed domain name, or that it registered and is using the disputed domain name in bad faith.

Indeed, continues the Respondent, the Respondent was not aware of the Complainant when it acquired the disputed domain name and the mark MYSCHOOL.COM.

The Respondent is in the business of locating generic domain names the reflect projects that the Respondent is interested in developing and does not engage in cybersquatting, is not a domain name aggregator and has not been a party to any other Policy proceedings.

The Respondent alleges that, in April 1996, the previous owner of the disputed domain name created a web site for educational services, specifically for teaching children about the Internet. In June 2008 the domain name was redirected to an advertising platform that contained links associated with educational institutions and services. This is a legitimate use of the disputed domain name, which is generic in nature.

According to the Respondent, it is well established under the Policy that domain names containing common dictionary words may be registered in good faith and, per se, establish the Respondent’s legitimate interest. A person may register such a common, generic, word on a first come, first served basis. The Respondent cites precedents to this effect.

The complaint was denied

MySchool.com had been registered since 1996, Mr. Booth acquired the domain in 2009. The panel noted: “When the Respondent purchased the disputed domain name from its predecessor in interest in December 2009, the Respondent also acquired all rights, title and interest, goodwill associated with the disputed domain name and the service mark MYSCHOOL.COM. The Panel finds that these facts are evidence of Respondent’s concurrent rights in the disputed domain name.”

This part is very important because not all panelist adopt this line of thinking, now back in 2010 Michael Berkens pointed out:

I think its important to note first and foremost that there was a purchase agreement for the domain, rather than just an escrow.com transaction or a transaction through an aftermarket company.

In the agreement you can have the owner selling you all of the goodwill, trademarks etc associated with the domain that he had in the domain name.”

This is why it is important to have a sales agreement on a valuable domain

The Panel also notes that a national court would be a more appropriate venue than the present proceedings to consider and resolve the Complainant’s allegations regarding the reliability of the evidence presented by the Respondent.

Mr. Booth requested the panel find that the complainant engaged in Reverse Domain Name Hijacking, that was denied.

In July of 2012 the domain looks like it changed hands, left Go Daddy and moved to EuroDNS under privacy. In March of 2013 the name came out of privacy and Viagem Group out of Belize owned the domain. A couple days later the whois was Sedo Transfer so the domain was sold again. The domain was purchased by the current owner Original Web Ventures out of Canada.

The new UDRP does not currently state who the complainant is, we will be watching to see who filed the UDRP.