Complainant is Society for Human Resource Management, United States of America (“United States”), represented by Gavin Law Offices, PLC, United States.
Respondent is Anonymize, Inc., United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2021. The Center appointed Colin T. O’Brien as the sole panelist in this matter on March 22, 2021. 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 Complainant is the world’s largest human resources professional society, representing over 300,000 members in over 165 countries. Complainant has 575 affiliated chapters within the United States, and subsidiary offices in China, India, and United Arab Emirates. Complainant has the following trademarked certification programs, Shrm Certified Professional/SHRM-CP and Shrm Senior Certified Professional/SHRM-SCP. Over 100,000 human resources professionals have been certified by Complainant. Complainant owns numerous United States trademark registrations which incorporate SHRM including: SHRM, Reg. No. 1668891, in connection with “association services; namely, promoting the interests of the human resource management profession and the interests of members of the human resource management profession”registered on December 17, 1991, with a first use date of September 1, 1989;and SHRM SOCIETY FOR HUMAN RESOURCE MANAGEMENT, Reg. No. 3669687, in connection with “accreditation services, namely, developing, evaluating, setting and providing standards, and testing standards, for human resources” registered on August 18, 2009, with a first use date of May 8, 2009. (“Complainant’s Marks”). Complainant has registered dozens of domain names that incorporate Complainant’s Marks, including: The Disputed Domain Names were registered on May 5, 2020, and resolve to pay-per-click (“PPC”) websites with links associated to the Complainant’s field of business. 5. Parties’ Contentions A. Complainant Complainant’s Marks are renowned in the human resources industry. Furthermore, Complainant’s Marks are distinctive. Complainant’s SHRM mark is an acronym of Complainant’s full name, “the Society for Human Resource Management”. “shrm” is an arbitrary term that has no dictionary meaning in relationship to the human resources industry, other than as a name referring to Complainant. SHRM has been used continuously as a mark by Complainant for three decades and is highly recognizable in the human resources industry. The Disputed Domain Names are identical to Complainant’s registered domain name The Disputed Domain Name Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent is not in any way associated with Complainant, its brand, or its certification credentials. Respondent has not been known by or linked to the trademark SHRM in any way. Respondent has not licensed, nor has Respondent sought or received authorization from Complainant, to use the Disputed Domain Names, either express or implied, or any variations thereof, either at the time Respondent registered and began using the Disputed Domain Names or at any time thereafter. Respondent is not an authorized distributor or reseller of Complainant’s products. No other connection exists between Complainant and Respondent. Respondent has not made any bona fide offering of goods or services using the Disputed Domain Names under paragraph 4(c)(i). The Disputed Domain Names divert Internet users to parked pages with links to human resources-related goods and services offered by direct competitors of Complainant. The parked pages at both Disputed Domain Names include a “SHRM HR Certification” link which links not to Complainant’s website, but to ads for Complainant’s competitors. Respondent’s use of the Disputed Domain Names solely for parked pages to generate income from advertisements clearly indicates that Respondent’s purpose in using the Disputed Domain Names is to yield financial gain through deceptively diverting Internet users. Respondent’s use of the Disputed Domain Names in this manner does not confer legitimate rights or interests that arise from a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent is not currently and never was commonly known by the name reflected in the Disputed Domain Names as to establish a legitimate interest in the Disputed Domain Names. The Disputed Domain Names incorporate Complainant’s distinctive marks as a whole, and the websites connected to the Disputed Domain Names are comprised merely of parked pages with advertisements for Complainant’s competitors. Respondent’s registration and use of not just one, but two, domain names incorporating Complainant’s distinctive marks to target and divert Complainant’s customers, and to generate revenue by doing so, demonstrates bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated that it owns registered trademark rights in the SHRM and SHRM SOCIETY FOR HUMAN RESOURCE MANAGEMENT marks, and has shown that no other entity has rights in or uses Complainant’s Marks. Complainant has also demonstrated that the public associates its services in connection with certification programs. The addition of “certifications” to the Disputed Domain Name Complainant has presented a prima facie case in repetitive terms that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; has not at any time been generally known by the Disputed Domain Names; and, is not making a legitimate noncommercial of fair use of the Disputed Domain Names, rather Respondent used the Disputed Domain Names to offer services that were identical to Complainant’s own, including a counterfeit application to access Complainant’s services. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name. Rather, the evidence clearly suggests the Disputed Domain Names were registered to make an undue profit based on the Complainant’s rights (See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556). Furthermore, the nature of the Disputed Domain Names, comprising Complainant’s trademark in its entirety in combination with “certifications” or a misspelling of “certification”, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Names, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Disputed Domain Names were registered many years after Complainant first registered and used its famous SHRM mark. The evidence provided by Complainant makes it clear Respondent undoubtedly knew of Complainant’s SHRM mark and knew that it had no rights or legitimate interests in the Disputed Domain Names. There is no benign reason for Respondent to have registered the Disputed Domain Names confusingly similar to the Complainant’s famous mark. Further, the use of the Disputed Domain Names by Respondent is clearly in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location. Complainant has submitted evidence that Respondent has used the Disputed Domain Names in order to direct Internet users to third party websites which offer services competing with Complainant. Given the fame of Complainant’s SHRM mark, the obvious inference is that Respondent hoped to trick either customers or potential customers of Complainant to visit the websites at the Disputed Domain Names to direct Internet users to a competitors’ website. This is a textbook example of bad faith use on the part of Respondent. The Panel finds that the only plausible basis for registering and using the Disputed Domain Names has been for illegitimate and bad faith purposes. 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 Colin T. O’Brien
Sole Panelist
Date: April 5, 2021
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