Back on 9/13 we wrote about MySchool.com getting hit with a UDRP for the second time in four years. We published the article as soon as the UDRP was filed, so we had no clue to who was filing the UDRP this time around. Well it was the same person as the first time, Joseph L. Carpenter. The first UDRP was brought against Andy Booth who owned the domain at the time.

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 of 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. In the UDRP filing Original says they won the name at auction for $42,000

Respondent urges that it obtained the disputed domain name following a public auction where it won the bid at $42,000.00.

So with the change of ownership it looks like Mr. Carpenter stepped into the batter’s box for a second at bat.

1. Complainant’s Assertions. Complainant has rights in the MYSCHOOL mark through a United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 3,568,160 registered Jan. 27, 2009, filed March 22, 2007). Complainant uses the MYSCHOOL mark in connection with advertising and communications services, and promotes the service online through the website. The <myschool.com> domain name is identical to the MYSCHOOL mark.

Respondent has no rights or legitimate interests in the <myschool.com> domain name. Complainant has not authorized Respondent’s use of the mark, and there is no indication that Respondent has been commonly known by the name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The domain name resolves to promote pay-per-click advertisements and links. In addition, Respondent’s offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.

Respondent is using the domain name to redirect Internet users and to extort money from Complainant to purchase the domain name. Respondent’s willingness to sell the <myschool.com> domain name indicates bad faith. Respondent is using the disputed domain name to mislead Internet users into believing Complainant has some association with the disputed domain name and resolving content, which enables Respondent to generate click-through revenue. Respondent acquired the disputed domain name after Complainant registered the MYSCHOOL mark with the USPTO, and therefore Respondent had at least constructive notice of Complainant’s rights.

 

1.  Respondent’s Assertions. The Complaint is a misleading attempt to obtain the disputed domain name. In fact, this is Respondent’s second bite at the UDRP. Respondent cites the previous UDRP case Joseph L. Carpenter v. Foresight.com and Andy Booth, FA 1319483 (Nat. Arb. Forum June 2, 2010), in which Complainant sought the transfer of this <myschool.com> domain name to no avail. The <myschool.com> domain was initially registered April 4, 1996 (almost four years before the UDRP), and purchased by Respondent in March 2013.

 

The <myschool.com> domain name is composed of common, generic terms. A   Google search for “my school” shows at least 112 million results, none of which    is associated with Complainant.

 

Respondent obtained the disputed domain name on or about March 1, 2013, following a public auction where Respondent was the successful bidder in the amount of $42,000.00. Respondent was attracted to the domain name purely as a result of its value as a generic or descriptive common term. Respondent has bid on and purchased numerous other generic and descriptive domain names. Selling domain names comprised of generic terms is a recognized and legitimate practice.

 

Respondent has legitimately used the domain name for advertising related to the descriptive nature of the domain name itself. Respondent’s use of the domain            name for advertising related to schools is an obvious and natural use to follow from the <myschool.com> domain name. Such use evinces legitimate interest in the domain name.

 

As to bad faith, actual knowledge is required, not simply constructive knowledge. Because there is no significant value or reputation in the MYSCHOOL mark as        purportedly used by Complainant, the accusation that Respondent acquired the domain name to target Complainant’s business does not hold water.

 

Complaint is trying to hijack the domain name to which he was never entitled. Complainant attempted to mislead the Panel as to the scope of Complainant’s business. Further, Complainant tried to gloss over the fact that he had filed a UDRP claim previously, which proved unsuccessful.

DECISION

The Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.Accordingly, it is Ordered that the <myschool.com> domain name REMAIN WITH Respondent.

In other UDRP news Cofra Holdings AG has filed a UDRP for the domain name C-A.com. The domain registered since 2001 is parked at Sedo.