The Complainant is Society for Human Resource Management, United States of America (“United States” or “USA”), represented by Gavin Law Offices, PLC, United States.
The Respondent is Miguel Jackson, The Lignan, Belgium. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 4, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 29, 2020. 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 is a human resources professional society representing over 300,000 members in 165 countries, based in the United States and counting with subsidiary offices in China, India, and the United Arab Emirates. The Complainant is the owner of the domain names - USA Trade Mark registration No. 166891 for SHRM registered on December 17, 1991, in class 42; - USA Trade Mark registration No. 2264940 for SOCIETY FOR HUMAN RESOURCE MANAGEMENT registered on July 27, 1999, in class 42; and - European Union Trade Mark registration No. 638023 for SHRM registered on March 5, 2000, in class 42. The disputed domain names were created on May 1, 2019, and were used in connection with parked pages displaying links to other websites relating to human resources management-related products and services. 5. Parties’ Contentions A. Complainant The Complainant asserts to be the world’s largest human resources professional society, which has contributed for decades with the human resources management profession and been the leading provider of goods and services for professionals in that field, having its marks become globally renowned in the human resources industry. In addition to certification, training, and membership services, the Complainant further asserts to host numerous conferences each year, specially the SHRM Annual Conference & Exposition which has been held for decades and is known in the industry as one of the largest and best human resources conferences in the world, congregating thousands of professionals from around the world to attend the conference. The disputed domain names, under the Complainant’s view, are confusingly similar to its trademark, which has a significant global reputation, because they fully incorporates it, only adding the “2020” element which does not lessen any confusion since it is a generic term that references the current calendar year and used in combination with the Complainant’s mark connotes the well-known conferences and other services that the Complainant offers under it. Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that: i. the Respondent is not in any way associated with the Complainant, the Complainant’s trademarks, or the Complainant’s conferences; not having the Complainant licensed, nor having the Respondent sought or received authorization from the Complainant to use the disputed domain names; also not being the Respondent an authorized distributor or reseller of the Complainant’s products and services, nor being the Respondent a sponsor or in any way affiliated with the Complainant or any of the Complainant’s conferences, membership, certification or training services; ii. the Respondent has not been commonly known by the disputed domain names; iii. the use made of the disputed domain names by the Respondent does not characterize a bona fide offering of goods or services under the Policy, since the Respondent is not making active use of the disputed domain names as both of them merely resolved to a webpage displaying links to other websites related to the Complainant; and iv. the use made of the disputed domain names by the Respondent characterizes a clear attempt to attract, for commercial gain, consumers by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement. The Complainant further contends that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor and has intentionally attempted to attract, for commercial gain, Internet users to websites by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain names. In addition to that, the Complainant asserts that the Respondent is the registrant of dozens of other domain names that combine other well-known trademarks with generic terms or numeric representations of calendar years (Annex 10 to the Complaint), what further indicates that the Respondent knew or should have known of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are 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 in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the SHRM trademark duly registered in several jurisdictions around the world (Annex 4 to the Complaint). Given that the disputed domain names “contain sufficiently recognizable aspects of the relevant mark” the addition of the element “2020” to the Complainant’s trademark in the disputed domain names does not prevent a finding of confusing similarity under the Policy, as recognized by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element. According to the evidence submitted, the disputed domain names were being used in connection with parked pages displaying pay-per-click (“PPC”) advertisements that may lead Internet users to services and products related to the Complainant, which clearly does not characterize a bona fide offering of goods or services under the Policy. In that sense, and also according to the evidence submitted, there is no evidence that the Respondent has been commonly known by the disputed domain names, and furthermore, the Complainant indeed states that the Respondent is not in any way associated with the Complainant, the Complainant’s trademarks, or the Complainant’s conferences; not having the Complainant licensed, nor having the Respondent sought or received authorization from the Complainant to use the disputed domain names; also not being the Respondent an authorized distributor or reseller of the Complainant’s products and services, nor being the Respondent a sponsor or in any way affiliated with the Complainant or any of the Complainant’s conferences, membership, certification or training services. Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent or the webpages relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the following factors: a. the fact that the Respondent has engaged in what appears to be a pattern of bad faith conduct, having registered dozens of disputed domain names targeting other well-known trademarks of third parties; b. by having registered dozens of disputed domain names, the Respondent has engaged in a pattern of conduct preventing owners from reflecting their marks in the domain names; c. the Respondent has been using the disputed domain names in connection with PPC advertisements, leading Internet users to products and services related to the Complainant, creating a likelihood of confusion or undue association in Internet users; d. the use of what appears to be a false address, being that the Center was unable to deliver the Written Notice to it; and e. the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. 7. 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 names Wilson Pinheiro Jabur
Sole Panelist
Date: June 12, 2020
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