The Complainant is Project Management Institute, Inc. of Newtown Square, Pennsylvania, United States of America, represented by Roche Pia LLC, United States of America.
The Respondent is david david / song yy of Aortola, Virgin Islands, United States of America also known as Yushan Jiang / Huaya International Consulting Co. of Taipei, Taiwan, Province of China. 2. The Domain Names and Registrar
The disputed domain name is registered with FastDomain, Inc., and the disputed domain name is registered with Web Commerce Communications Limited dba WebN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by email to Web Commerce Communications Limited dba WebN a request for registrar verification in connection with the disputed domain names. On July 29, 2010, Web Commerce Communications Limited dba WebN transmitted by email to the Center its verification response, confirming that the Respondent david david / song yy is listed as the registrant of the disputed domain name and providing the contact details. Web Commerce Communications Limited dba WebN also informed the Center that the disputed domain name is registered with FastDomain, Inc. On July 30, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name . On August 2, 2010, FastDomain, Inc. transmitted by email to the Center its verification response, confirming that the Respondent Yushan Jiang / Huaya International Consulting Co. is listed as the registrant of the disputed domain name and providing the contact details. On August 3, 2010, the Complainant filed an amendment to the Complaint, modifying its submission to the mutual jurisdiction.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2010. The Center's notifications were sent to the Respondent's address, provided by the registrars. Nevertheless, it appears that the contact information provided by the Respondent was false and inaccurate. According with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, Project Management Institute Inc., is a non-profit corporation, organized under Pennsylvania law. The Complainant operates as an international project management membership association that comprises of over 300,000 members in more than 150 countries around the world.
The Complainant has been using the PMI trademark since 1969 in connection with the certification of individuals for competency and various disciplines in the Project Management industry.
The Complainant owns multiple trademark registrations for the mark PMI in many countries around the world. For example: United States (hereinafter: "US") trademark registration No. 2,152,599 – PMI, with the registration date of April 21, 1998; US trademark registration No. 2,281,186 – PMI logo, with the registration date of September 28, 1999; Community trademark registration No. 002500403 – PMI logo, with the registration date of November 23, 2005; International trademark registration No. 977235 – PMI Scheduling PROFESSIONAL (PMI-SP), designated for Australia, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, Norway, Russian Federation, etc., with the registration date of July 16, 2008; International trademark registration No. 984707 – PMI RISK MANAGEMENT PROFESSIONAL (PMI-RMP), designated for Australia, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, Norway, Russia n Federation, etc., with the registration date of October 28, 2008; International trademark registration No. 1040007 – PMI logo, designated for Australia, Bulgaria, Bahrain, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, etc., with the registration date of August 26, 2009; and others.
The Complainant has also developed a presence on the Internet and is the owner of several domain names, which contain the term “pmi”. For example: , , , and others. The Complainant is using these domain names in connection with its activities.
The disputed domain name was registered on January 17, 2009;
The disputed domain name was registered on February 5, 2010.
The disputed domain name resolves to a parking web-page, which contains pay-per-click advertising pages that offers links to various educational websites.
The disputed domain name resolves to a web-page that offers information and admission for the Chinese International Project Management Institute.
The evidence presented by the Complainant shows that the website “www.” has displayed in the past content that was substantially similar to what is now displayed at . 5. Parties’ Contentions A. Complainant
The Complainant argues that the registrant for both domain names is one and the same.
The Complainant also argues that the disputed domain names are identical or confusingly similar to the PMI trademarks, owned by the Complainant, seeing that they incorporate the trademarks as a whole. The Complainant further argues that the additional letters in the disputed domain names are insufficient to avoid confusing similarity between the PMI trademark and the disputed domain names.
The Complainant further argues that it has exclusive rights to the PMI trademarks as this trademark is widely recognized with the Complainant and with its operation. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the PMI marks.
The Complainant further argues that the Respondent did not make legitimate use in the disputed domain names.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant further argues that the Respondent distributes counterfeit products that infringe upon the Complainant's Intellectual Property rights, namely upon the Complainant's trademarks and certificates. The Complainant argues that this is evidence to the Respondent's bad faith use of the disputed domain names.
The Complainant further argues that the Respondent advertises related products and/or services that compete with and/or counterfeits the Complainant's PMI trademarks and products. The Complainant argues that this is further evidence to the Respondent's bad faith.
The Complainant further argues that the Respondent submitted false/incomplete contact information to the registrars is a further indication of bad faith.
The Complainant further argues that the Respondent engages in typo-squatting by providing links to websites that are identified as "attack sites". The Complainant argues that this also evidence the Respondent's bad faith.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the PMI trademark and products at the time it registered the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Multiple Respondents
In accordance with paragraph 3(c) of the Rules, a complaint can relate to more than one domain name provided that the domain names are registered with the same domain name holder.
The Complaint was filed in connection with two domain names that appear to be registered by two different registrants.
The Complainant argues that the registrant for both domain names is one and the same, and that the different names are merely aliases for the same individual or company. The Complainant finds support to this claim in the fact that the websites associated to each domain name have displayed in the past substantially similar content. In addition, the Complainant performed an extensive Internet search, through which further similarities between the owners of the disputed domain names and between the sites operated under the disputed domain names have been established. By way of background, there is a third interrelated domain name, , that is not subject to this proceeding. Facts contained in the Complaint concerning are relevant, however, to the domain name registrant inquiry. Indeed, the fact that the websites associated with the domain names and appear to be identical and that currently displays registrant information that has also been associated to (both of these domain names appear to have in the recent past referenced Huaya International Consulting), are of particular importance in assessing the question of registrant identity.
Previous UDRP panels have found in similar cases, that a sufficient evidence provided by the complainant, which show, among others, that: a) the domain names resolve to websites with substantially similar contents and appearance; and b) the Registrant details share substantially similar content, is adequate to satisfy the requirements of paragraph 3(c) of the Rules (See E, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc.,WIPO Case No. D2006-1380).
In this case, the Panel is satisfied by the circumstances that both disputed domain names are registered in reality to the same single person or entity. Accordingly, the Panel finds that the Complaint complies with paragraph 3(c) of the Rules. B. Inaccurate contact information provided by the Respondent
The Respondent provided the registrars with false contact information and thus made it impossible for the Complainant and the Center to communicate with it. The Panel notes that the Center was unable to contact the Respondent using the postal address in the WhoIs databases. Consequently, the Respondent did not reply to the Complaint and did not provide any explanations as to its choice to register and use the disputed domain names.
Previous UDRP panels have ruled that providing false contact information can, in itself, be an indication of bad faith and thus should not prevent the proceedings from continuing (See Schering AG v. SmartBuy Corporation,WIPO Case No. D2004-1037; AT&T Corp. v. Damian Macafee,WIPO Case No. D2001-1159; Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352).
The Panel concurs and rules that the Respondent's deficiency will not prevent this proceeding from continuing. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark PMI. For example: US trademark registration No. 2,152,599 – PMI, with the registration date of April 21, 1998; US trademark registration No. 2,281,186 – PMI logo, with the registration date of September 28, 1999; Community trademark registration No. 002500403 – PMI logo, with the registration date of November 23, 2005; International trademark registration No. 977235 – PMI SCHEDULING PROFESSIONAL (PMI-SP), designated for Australia, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, Norway, Russia n Federation, etc., with the registration date of July 16, 2008; International trademark registration No. 984707 – PMI RISK MANAGEMENT PROFESSIONAL (PMI-RMP), designated for Australia, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, Norway, Russian Federation, etc., with the registration date of October 28, 2008; International trademark registration No. 1040007 – PMI logo, designated for Australia, Bulgaria, Bahrain, Switzerland, People’s Republic of China, European Union, Japan, Republic of Korea, etc., with the registration date of August 26, 2009; and others.
The disputed domain name differs from the registered PMI trademark by the additional prefix "ai" and the additional gTLD “.org”.
The disputed domain name differs from the registered PMI trademark by the additional prefix "i", the additional suffix "i" and the additional gTLD “.org”.
The disputed domain names integrate the Complainant’s trademark PMI in its entirety, as a dominant element.
The additional "i's" and "ai" do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s PMI trademark. This is especially true as this addition does not create meaning to the disputed domain names.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The addition of the gTLD ".org" to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".org” is without legal significance since the use of a gTLD is technically required to operate the domain names.
The result is that the Complainant has shown that the above disputed domain names are confusingly similar to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names.
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PMI trademark, or a variation thereof. The Respondent has not submitted a Response and did not provided any evidence to show any rights or legitimate interests in the disputed domain names that are sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. E. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the PMI trademark at least since the year 1998. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain names, it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain names resolve to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations, or of a product or service on the websites or locations, to which the domain names resolve to.
The disputed domain name resolves to a web-page that offers information and admission for the Chinese International Project Management Institute.
The Respondent’s use of the PMI mark to promote goods and services that are regularly sold by the Complainant clearly indicates that the Respondent registered this disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the PMI mark and subsequent intent to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent has made of this disputed domain name for quasi-identical goods to the ones the Complainant manufactures and markets (as well as the apparent counterfeit goods) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450). Furthermore, the only information available to the Panel in relation to the Respondent's activity is what is contained on the website “www.”. The Panel notes that the Respondent has failed to produce any documentary evidence of its corporate status or identity. In the Panel’s view, and given the circumstances of this case, the content of such website does not provide a basis for the Panel to conclude otherwise.
The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
The disputed domain name currently resolves to a parking web-page, which contains pay-per-click advertising pages that offers links to various educational websites. A previous UDRP panel has asserted the following: "It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of “domain name parking” or “pay per click” services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of “domain name parking” or “pay per click” service pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name … The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page" (Classmates Online, Inc. v. Mary Lamb,WIPO Case No. D2009-0715).
The Panel also notes, as discussed before, that the disputed domain names are confusingly similar to the Complainant’s trademark. A previous UDRP panel has ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In addition, the Panel notes the Respondent has engaged in typo-squatting. Indeed, “domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” (Dell Computer Corp .v. Clinical Evaluation,WIPO Case No. D2002-0423). Previous UDRP panels have ruled that "It is generally held that typo-squatting per se is sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy and the Panel considers the disputed domain name to be a typical example of typo-squatting" (SurePayroll, Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0470).
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the entire reproduction of the PMI trademark in the disputed domain names and the Respondent’s typo-squatting behavior, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: September 19, 2010
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