The Complainant is Project Management Institute of Newtown Square, Pennsylvania, United States of America, represented by Roche Pia LLC, United States of America.
The Respondent is CMN.com of Houston, Texas, United States of America, represented by DuBois, Bryant, Campbell & Schwartz LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 6, 2013.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 10, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 30, 2013. The Response was filed with the Center on December 20, 2013.
The Center appointed William R. Towns and Charles A. Kuechenmeister as panelists in this matter on January 17, 2014, and Luis H. de Larramendi as a panelist on January 24, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant is a project management trade association, with over 440,000 members in more than 150 countries around the world. The Complainant offers certification programs for project management practitioners, which includes certification and credentials for project management professionals. The Complainant has applied for and registered PMP with the United States Patent and Trademark Office (USPTO) as a certification mark. The Complainant’s application was filed on June 30, 1987, and the registration issued on August 11, 1988.1 Subsequently, the Complainant applied for and registered PMP with the USPTO as a service mark covering testing and evaluating, credentialing, verifying and monitoring the credentials of project management professionals. The application was filed on March 2, 2009, and the registration issued on February 16, 2010.2 The registration certificates for both marks reflect use in commerce as early as December 1984.
The disputed domain name was created on January 26, 2006, according to relevant WhoIs records maintained by the concerned Registrar. The Respondent is the current registrant of the disputed domain name,3 which resolves to a website (“www.”) providing information about the Complainant’s project management certification and credentialing programs, degree programs offered by accredited colleges and universities in project management, and third-party providers of PMP exam preparation courses. Links to websites of colleges and universities and to third-party providers of PMP exam preparation courses are also provided on the “www.” site.
The Respondent’s business, as described on its “” website, is building web properties that drive high-converting, high-intent traffic, and its product is expertise in organic search marketing. The Respondent further explains on the “” website that it leverages this expertise on its own portfolio of sites. In the Response, the Respondent also characterizes the “www.” website as commercial in nature.
At the time the Complainant became aware of the disputed domain name, the registrant identified in the concerned Registrar’s WhoIs database was Domains By Proxy. The Complainant acting through its legal counsel sent a notice letter to the Domains By Proxy on October 24, 2013, asserting inter alia rights in the PMP mark, alleging that the registration and use of the disputed domain name violated the Policy, and demanding the immediate transfer of the disputed domain name to the Complainant.
The Respondent through its legal counsel replied in a letter dated November 6, 2013, asserting inter alia that the sole trademark registration relied on by the Complainant in its notice letter consisted of a design mark that had lapsed in 2008;4 that the Respondent was entitled to advertise the services of schools that provide instruction enabling students to pass the Complainant’s certification exams; that the Respondent was entitled to use the Complainant’s PMP certification mark in offering such services; and that such use would be considered a nominative fair use.
At some time following this exchange, the Respondent added the following disclaimer to the website at the disputed domain name: “This site does not conduct tests, or provides [sic] educational preparatory services for tests, provided by PMI or any other entity.”5 5. Supplemental Submissions
The Complainant on January 9, 2014, lodged with the Center an unsolicited Supplemental Brief (“Complainant’s Supplemental Brief”). The Complainant maintains that its Supplemental Brief is offered to address inaccurate factual statements and new legal issues in the Response that the Complainant could not reasonably have anticipated. Reacting to the Respondent’s denial of any communications with the Complainant prior to October 24, 2013, the Complainant proffers documentation of purported communications between the Parties in August and September 2013.6 The Complainant’s Supplemental Brief also addresses at length the Respondent’s arguments and authorities regarding nominative fair use and the treatment under U.S. trademark law of the Complainant’s dual registration of PMP as a certificate mark and a service mark. The Complainant’s Supplemental Brief is accompanied by a lengthy appendix.
The Respondent in turn submitted an unsolicited Supplemental Response (“Respondent’s Supplemental Response”) to the Center on January 15, 2014. The Respondent objects to the Complainant’s Supplemental Brief, contending that the Complainant’s discussion of purported communications with the Respondent prior to October 24, 2013 (which the Respondent disputes), should have been included in the Complaint; that the Complainant had prior knowledge of the Respondent’s reliance on nominative fair use and should have anticipated and addressed this issue in the Complaint; and that the Complainant’s argument and briefing relative to the Complainant’s dual registration of PMP is “irrelevant”, given the Respondent’s concession the a UDRP administrative proceeding “is not the proper venue for a dispute over the validity of a trademark registration.” Beyond this, the Respondent’s Supplemental Response is largely cumulative of arguments presented in the Response concerning the Complainant’s dual registration of the PMP mark and the Respondent’s nominative fair use defense. The Respondent’s Supplemental Response also is accompanied by a lengthy appendix.
The Policy and Rules envision the submission of a single complaint and a single response. No express provision is made for the submission of supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either party. In making such a determination, the Panel considers the need for procedural efficiency, and the Panel’s obligation to ensure that each Party is afforded a fair opportunity to present its case and is treated with equality.7
In the Panel’s judgment, any evidence and arguments the Complainant wished to offer regarding communications between the Parties should have been presented in the Complaint; however, the Panel does not consider that the Complainant reasonably should have anticipated that the Respondent would raise U.S. trademark law issues regarding the dual registration of the PMP mark. And while the Respondent made reference to nominative fair use in its January 15, 2014 letter, it did so without elaboration. In the circumstances at hand, it would be unreasonable, in the Panel’s view, to require the Complainant to have anticipated and responded to nominative fair use arguments before they were first presented in the Response.
In light of the foregoing, the Panel has determined to accept the Complainant’s Supplemental Brief for purposes of the record in this case. With a view to equality of treatment and providing each Party a fair opportunity to present its case, the Panel will also accept the Respondent’s Supplemental Response for purposes of the record. In reaching a decision in this case, the Panel will afford the Parties’ supplemental submissions such weight as the Panel in its sole discretion deems appropriate. 6. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to its registered PMP marks. The Complainant submits that the disputed domain name incorporates the Complainants PMP mark in its entirety, and that the addition of the word “certification” serves only to call to mind the certification and related services provided by the Complainant under its marks. The Complainant further asserts that its PMP marks, in use since 1983, have acquired secondary meaning and recognition, and are well-known in the relevant industry. The Complainant explains that its dual registration of PMP as a certification mark and a service mark is consonant with established U.S. trademark law, which permits the registration of a mark identical to a certification mark when used for services related to the certification program, and proscribes only the use of an identical mark with goods and services for which certification is provided to third parties.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent is not licensed or otherwise authorized to use the Complainant’s mark, that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not using the disputed domain in connection with a bona fide offering of goods or services, or otherwise making a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent’s use of the disputed domain name does not constitute a nominative fair use under U.S. trademark law or under relevant panel decisions under the Policy.
To the contrary, the Complainant submits that because the disputed domain name is comprised of the Complainant’s well-known PMP mark and an additional term denoting the certification services offered exclusively by the Complainant under the mark, Internet consumers are misled into believing that the website to which the disputed domain name resolves is an official website of the Complainant, or that the website otherwise is affiliated with or enjoys the sponsorship or endorsement of the Complainant. According to the Complainant, the Respondent’s business is search engine optimization (SEO), and the Complainant argues that the Respondent registered the disputed domain name fully aware of the Complainant’s mark, in order to profit from driving Internet traffic to the “www.” website or to third-party sites unrelated to the Complainant’s PMP certification program and exam. The Complainant characterizes the nature of the Respondent’s activity as the equivalent of selling links to sites which, in turn, sell products and services related to other entities.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, in an attempt to attract Internet users to the “www.” website for commercial gain, by creating a likelihood of confusion with the Complainant’s PMP mark as to source, sponsorship or affiliation. The Complainant observes that its PMP certification mark was federally registered in 1988, and that both PMP certification and service marks have been in use since 1983 – long before the disputed domain name was created in 2006. The Complainant asserts that the Respondent’s appropriation of a domain name comprised of the Complainant’s PMP mark and the certification services provided thereunder confirms the Respondent’s appreciation of the Complainant’s rights when registering the disputed domain name. The Complainant further submits that the Respondent’s use of the disputed domain name makes clear that the Respondent understood the value of the Complainant’s PMP mark in driving Internet traffic to the “” website, which the Respondent concedes is a commercial, for-profit site. The Complainant submits that the Respondent’s bad faith registration and use of the disputed domain name cannot be cured by the Respondent’s recent inclusion of a disclaimer on the “www.” website, which the Complainant maintains was not added until after the filing of the Complaint. B. Respondent
The Respondent initially questions the extent, if any, of the Complainant’s asserted rights in its PMP certification mark and PMP service mark. The Respondent submits that it is a fundamental tenant of U.S. trademark law that certification marks and service marks are “mutually exclusive.” The Respondent explains that the federal Lanham Act prohibits registration of a certification mark if the registrant engages in the marketing or production of any goods or services to which the certification mark applies.8 Thus, according to the Respondent, a designation used as a certification mark cannot be used as a service mark under the “anti-use by owner” rule.
The Respondent asserts that the Complainant by its own admission has engaged in, and continues to engage in marketing, under the identical PMP mark the services that it certifies. The Respondent contends that the Complainant’s continued use of the PMP mark in this manner has, at a minimum, severely damaged and, more likely eviscerated, any rights the Complainant may have established in the PMP mark. The Respondent further observes that the Lanham Act provides for cancelation of the registration of a certification mark so used, but acknowledges that a UDRP administrative proceeding is “not the venue for such a cancellation proceeding.” Nonetheless, the Respondent urges that because the Lanham Act intends to preclude the owner of a certification mark from producing or selling goods or services in connection with which the certification mark is used, the value and strength of the PMP certification mark is diminished, and the validity of the PMP mark as a service mark is also called into question.
Even if the Complainant were found to have rights in the PMP mark, the Respondent maintains that the disputed domain name is not confusingly similar to the Complainant’s mark because the use of the disputed domain name qualifies as a nominative fair use under U.S. trademark law. The Respondent asserts rights or legitimate interests in the disputed domain name on this basis. The Respondent submits that the nominative fair use doctrine allows for a straightforward, obvious, and truthful use of another’s mark to describe a product or service. According to the Respondent, the nominative fair use concept has been applied extensively in decisions under the UDRP, in recognition that a party permissibly may use another’s mark to identify the mark owner’s products or services, provided (1) the product or service is not readily identifiable without use of the mark; (2) only so much of the mark is used that is necessary to identify the product or service; and (3) the use does not suggest sponsorship or endorsement by the mark owner.9
The Respondent explains that it uses the disputed domain name in order to provide “valuable information tied to all sorts of project management,” including admissions criteria, financial aid resources, course outlines, career statistics, and other information regarding project management courses of interest to persons wishing to take the Complainant’s certification exam. The Respondent asserts that its use of the disputed domain name satisfies the three-prong test for nominative fair use under the U.S. Ninth Circuit Court of Appeals’ New Kids on the Block case. First, the Respondent asserts there is no other readily available means of identifying the test for which it is offering resources to students, maintaining that the Complainant’s project management professional certification exam has become widely known by the acronym “PMP”. Second, the Respondent submits that it has used no more of the Complainant’s PMP mark than is necessary to identify the certifications offered by the Complainant, and that such use does not suggest that the Respondent provides such certifications, or even that the Respondent provides courses to prepare students for those certifications. Third, the Respondent contends that the “www.” website does not suggest any type of sponsorship, affiliation, or endorsement with the Complainant. The Respondent maintains that it is not seeking to mislead or confuse consumers and that to this end the website does not use the Complainant’s logo, color scheme or look-and-feel, pass itself off as the Complainant, or take any other action suggesting sponsorship, endorsement or affiliation.
The Respondent thus asserts that it is making a nominative fair use of the Complainant’s PMP mark – namely, providing information to third parties interested in PMP certification – and that as such the Respondent has established rights or legitimate interests through use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent further submits that, since the nominative fair use doctrine allows the use of a mark so long as it is unlikely to cause confusion as to sponsorship or endorsement, domain name owners are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech. The Respondent submits it was under no obligation to post a disclaimer on the “www.” website, but that it did so after receiving the Complainant’s demand letter. According to the Respondent, this constitutes further evidence of the Respondent’s rights and legitimate interests in the disputed domain name, and the Respondent asserts that “the fact that the disclaimer was added after the commencement of the UDRP proceeding should not weigh against the Respondent.”
The Respondent denies any bad faith, asserting that it did not register the disputed domain name to create confusion as to any affiliation with the Complainant, and that the Respondent’s use of the disputed domain name does not create a likelihood of confusion. The Respondent further argues that no finding of bad faith registration or use can be made where the Respondent is making a nominative fair use of the Complainant’s mark. The Respondent concludes that under the circumstances of this case the Complainant could establish bad faith only by specific findings that the Respondent intentionally created a likelihood of confusion with the Complainant’s claimed mark for the express purpose of diverting Internet users to the Respondent’s website for commercial gain. The Respondent submits that the Complainant has not met its burden of proof, and requests that the Complaint be denied. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s PMP mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.10 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s PMP mark in its entirety. The addition of the word “certification” in the Panel’s judgment does not dispel the resulting confusing similarity, and in all likelihood creates a strong association with the Complainant’s project management professional certification program, particularly insofar as the record reflects that such certification is available only from the Complainant. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
The Panel finds unpersuasive the Respondent’s claim that the Complainant’s registration of PMP as a certification mark and as a service mark for testing, evaluation, and credentialing in connection with the Complainant’s PMP certification program violates the “anti-use by owner” rule of U.S. trademark law. Under U.S. trademark law, a certification mark cannot be registered as a trademark or service mark – that is, as an indicator of source – for goods or services that are the subject of the certification. The rule promotes the integrity of the certification mark and protects consumers from confusion or deception. See In re 88Open Consortium Ltd., 28 U.S.P.Q.2d 1314, 1993 TTAB LEXIS 20 (Aug. 6, 1993); In re Monsanto Company, 201 U.S.P.Q. 864, 1978 TTAB LEXIS 155 (May 26, 1978) (certification mark owner’s use of mark to certify its own goods or services would be misleading). As clarified by the USPTO in Section 1306.05(a) of its Trademark Manual of Examining Procedure (TMEP), the owner of a certification mark may seek registration of the same mark for goods or services that are not the subject of the certification mark. In this instance, the Complainant’s PMP service mark clearly does not function as an indicator of source for the project management services that are the subject of the PMP certification mark, but rather applies to services that are related to the Complainant’s certification program.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The disputed domain name, however, incorporates the Complainant’s PMP mark in its entirety, and seems calculated to call to mind the Complainant and its PMP certification program. The Respondent is using used the disputed domain name with what appears to be a commercial website with links to third-party sites.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent maintains that it has established rights or legitimate interests in the disputed domain name based on the contention that the domain name is being used in connection with a bona fide offering of goods are services – namely, providing information to third parties interested in PMP certification. As noted earlier, the Respondent asserts that it is entitled to and is making a nominative fair use of the Complainant’s PMP mark under U.S. trademark law, relying largely on the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc.11 and Toyota Motor Sales, U.S.A., Inc. v. Tabari.12
In New Kids, two newspapers conducted a readers’ poll regarding the popular band New Kids. The newspapers used the band’s name and trademark “New Kids” in the polls. The Ninth Circuit held the referential use of another’s trademark is permissible where (1) the trademark owner’s product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner.13
In Tabari, the plaintiffs were auto brokers, who registered and used the domain names and . The Ninth Circuit reasoned that where a domain name making a nominative use of a mark does not suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find.14 The Tabari court concluded that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business,15 but on the other hand observed that consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or “more” of a mark than necessary.16 The Ninth Circuit also noted that the Tabaris had placed a disclaimer at the top of their website, which stated prominently and in large font: “We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker.” The Tabari court reasoned that consumers arriving at the Tabaris’ site “would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris’ website is sponsored by Toyota.17
As articulated in these Ninth Circuit decisions, the nominative fair use doctrine rests on a fundamental principle that trademark law “does not prevent the truthful use of trademarks.”18 Conversely, it is axiomatic under U.S. trademark law that the referential use of another’s mark is permissible only to the extent necessary and that such use must not suggest a false affiliation or endorsement by the plaintiff.19 These principles have been applied by panels in UDRP decisions, initially in respect of resellers or distributors of trademarked goods or services that registered domain names containing the owner’s mark.20
The leading decision is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”).
In Oki Data, the respondent was a reseller of the complainant’s OKIDATA branded products, and registered the domain name . The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
While the instant case does not involve a reseller or distributor of a manufacturer’s trademarked products, several panels have concluded that consideration of the Oki Data criteria may be appropriate under the Policy in other contexts, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”); BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, No. D2010-1038.
As was noted by the panels in Starwood Hotels & Resorts and BlackRock Institutional Trust Company, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that have been applied under U.S. trademark law of the United States, which is relevant here given that both parties are from the United States. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the respondent’s use of the complainant’s mark in a domain name.
In the Panel’s view, the Respondent is making a less than truthful use of the disputed domain name . In Tabari the plaintiffs were auto brokers, and the domain names at issue accurately conveyed to Internet consumers that the plaintiffs sold or leased Lexus vehicles. Any momentary confusion that Internet users might experience as to the endorsement or sponsorship of the Tabaris’ website by Toyota was quickly dispelled by the disclaimer prominently displayed on the home page of the website. Similarly, the panel in National Association for Stock Car Auto Racing, applying Oki Data criteriain determining that the respondent had demonstrated legitimate interests by using the disputed domain name in connection with a bona fide offering of goods and services, observed:
“[T]he Panel finds that the Respondent is actually offering tours of NASCAR events, and only tours of NASCAR events, on the website associated with the Domain Name... The Respondent’s business is NASCAR tours, just as the Domain Name implies... The Respondent’s website accurately and prominently explains that the Respondent is a reseller and is not affiliated with the Complainant.”
In comparison, the disputed domain name does not in the Panel’s judgment accurately convey the nature of the Respondent’s business but conveys instead the impression that the Respondent offers PMP certification, falsely suggesting to Internet users that the website to which the disputed domain name resolves is either an official website of the Complainant, or otherwise is affiliated with, sponsored or endorsed in some manner by the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Prior to the Respondent’s receipt of the Complainant’s demand letter, the “www.” website did not affirmatively indicate otherwise – not by the name chosen by the Respondent for the website, or by the content on the home page of the Respondent’s website, and in particular the large font heading “Earn Your Project Management Certification.” The Panel also is unconvinced that the Respondent could not effectively provide online information to third parties interested in the Complainant’s certification program without using the Complainant’s mark in its domain name.
As noted earlier, it is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the Respondent take steps to avoid using of the Complainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement. Having regard to all of the relevant circumstances in this case, the record in this proceeding does not in the Panel’s view support the Respondent’s claim of nominative fair use, and in the absence of such a finding, it has not been demonstrated that the Respondent, before any notice to it of this dispute, was using or making demonstrable preparations to use the disputed domain name in connection in connection a bona fide offering of goods or services. The Respondent has not otherwise demonstrated rights or legitimate interests in the disputed domain name. In the Panel’s view, the disclaimer now present on the Respondent’s website that appeared only after the Respondent’s receipt of the Complainant’s demand letter, and apparently not until the filing of the Complaint, is not consistent with fair use principles. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, supra.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is readily apparent that the Respondent was aware of the Complainant and the Complainant’s rights in the PMP marks when registering the domain name, and yet the Respondent made absolutely no effort to inform Internet visitors to the “” website of the lack of affiliation with, sponsorship or endorsement by the Complainant, at least not before the Respondent’s receipt of the Complainant’s demand letter. The record thus reflects the Respondent’s less than truthful use of the Complainant’s mark, as the disputed domain name would be very likely to confuse Internet users whether the website to which the domain name resolves is affiliated with, sponsored or endorsed by the Complainant.
The Respondent’s business, as noted on its “” website, is building web properties that drive high-converting, high-intent traffic, and its product is expertise in organic search marketing. According to the Respondent, it leverages this expertise on its own portfolio of sites. The Respondent describes the “www.” as commercial site from which it seeks to profit. Given the nature of the Respondent’s business, one would expect the Respondent to appreciate that the most valuable domain names often are those capable of driving a high volume of Internet traffic.
It is a reasonable inference in the circumstances of this case that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s PMP mark, obviously well known in the project management services industry, in order to drive traffic to the Respondent’s website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Presiding Panelist
Luis H. de Larramendi
Panelist
Charles A. Kuechenmeister
Panelist
Date: February 13, 2014
1 U.S. Reg. No. 2,180,481.
2 U.S. Reg. No. 3,748,623.
3 At the time the Complaint herein was filed, the concerned Registrar’s WhoIs records for the disputed domain name identified the registrant as Domains By Proxy. The Panel notes that Domains By Proxy is privacy protection provider. In response to the Center’s request for registrar verification, the Registrar disclosed that the Respondent was the underlying registrant of the disputed domain name. The Respondent has not indicated when it first acquired the disputed domain name, but it would appear that the “www.” website was launched sometime in 2013.
4 According to information publicly available on the USPTO’s website, based on a search of the USPTO Trademark Electronic Search System (TESS), U.S. Reg. No. 1,470,239 is a word plus design mark, PMP PROJECT MANAGEMENT PROFESSIONAL, issued on December 22, 1987 and cancelled on September 26, 2008.
5 The Complainant contends that the disclaimer was added only after service of the Complaint.
6 The Complainant was the recipient of an email on August 28, 2013, by an individual who announced the launching of the “” website, and suggested that the Complainant might wish to link this website with the Complainant’s website. The Complainant responded with two emails in September 2013, the second of which raised objections to the use of the Complainant’s PMP mark. It is not apparent on the face of the August 28, 2013 email whether the individual who sent the email was associated with the Respondent, although the Panel views such an association as likely. Regardless, in its Supplemental Response, the Respondent denies any knowledge of these emails communications.
7 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.
8 The Respondent cites to the Lanham Act, 15 U.S.C. §1064(5)(B) and (C).
9 The Panel notes parenthetically that this is the “nominative fair use” test fashioned by the U.S. Ninth Circuit Court of Appeals in 1992, in v. News American Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). The Ninth Circuit determined that the referential use of another’s trademark is permissible where (1) the trademark owner’s product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the trademark owner. Id. at 308.
10 See WIPO Overview 2.0, paragraph 1.2.
11 971 F.2d 302 (9th Cir. 1992).
12 610 F.3d 1171 (9th Cir. 2010).
13 971F.2d. at 308.
14 610 F.3d at 1179.
15 Id.
16 Id. at 1176.
17 Id. at 1181-82.
18 Id. at 1176-77. This principle was recognized long before the Ninth Circuit coined the term “nominative fair use.” See Prestonettes, Inc. v. Coty, 264 U.S. 359, 368-69 (1924) (“When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”). See, e.g., Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750 F.2d 903, 916 (Fed. Cir. 1984) (independent tire dealer may use tire manufacturer’s mark “to truthfully convey to consumers” that it sells refurbished products); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1959) (independent service station that repaired Volkswagen cars). See also Nitro Leisure Products, L.L.C. v. Acushnet Co., 341 F.3d 1356, 1362 (Fed. Cir. 2003).
19 See Tabari, 610 F.3d at 1171.
20 See WIPO Overview 2.0, paragraph 2.3.
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