The Complainant is Society for Human Resource Management, United States of America (“United States”), represented by Gavin Law Offices, PLC, United States.
The Respondent is Gaurav Kumar, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2021, 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 March 17, 2021. 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 March 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021. The Center appointed Jeremy Speres as the sole panelist in this matter on May 6, 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 The uncontested facts are as follows. The Complainant is one of the world’s largest human resources professional society, representing over 300,000 members in over 165 countries. The Complainant has 575 affiliated chapters within the United States, and subsidiary offices in China, India (the Respondent’s country of residence), and the United Arab Emirates. The Complainant offers a wide variety of human resources management products and services, including association services, training courses and materials, certification programs, conferences and meetings, and, importantly for this matter, extensive resources regarding compliance with human resources related laws and industry standards. The Complainant has used its SHRM mark since 1989. Importantly, the Complainant has actively offered its goods and services and had a presence in India for over fifteen years. The Complainant owns trade mark registrations for marks consisting of and incorporating SHRM in over 30 countries, the most relevant of which are: - United States registration No. 1668891 SHRM in class 42, registered on December 17, 1991; - India registration No. 1486481 SHRM INDIA in class 41, registered on September 12, 2006 The Domain Name was registered on October 2, 2020 by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, resolved to a parked page exhibiting click-through advertisements for businesses that compete with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name stands to be transferred to it under the Policy given that the Domain Name takes advantage of the Complainant’s well-known trade mark to divert consumers to competitors using click-through advertisements and is used for email impersonating the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name is confusingly similar to the Complainant’s registered SHRM mark, which the Complainant’s evidence establishes was well-known prior to registration of the Domain Name. It is well-established that where the domain name incorporates the entirety of the trade mark which is recognisable within the domain name (as in this case), the addition of other terms would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Here the trade mark is the first and most prominent element of the Domain Name. The remainder of the Domain Name, apart from the generic Top-Level Domain (“gTLD”) “.com”, consists of the dictionary term “compliance” which does not serve to render the Complainant’s mark unrecognisable within the Domain Name. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, there is a prima facie case which the Respondent has failed to rebut. The Domain Name is confusingly similar to the Complainant’s well-known, registered mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the name “shrmcompliance.com” for the purposes of paragraph 4(c)(ii) of the Policy. Without the benefit of a Response, the Panel is not aware of any trade marks in the name of the Respondent, and therefore assumes there are none or else the Respondent would have put those forward. The Panel has nevertheless independently searched for any relevant trade marks in the name of the Respondent using the WIPO Global Brand Database and found none. The Panel has also searched the Internet Archive, which contains no historical evidence of use of the Domain Name that might confer rights or legitimate interests upon the Respondent. UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The only evidence of use of the Domain Name is that of redirection to parked pages comprising advertisements linked to third-party commercial pay-per-click (“PPC”) websites offering services which compete with the Complainant, in addition to use of the Domain Name to send an email imitating the Complainant. The Panel has independently viewed the Hypertext Markup Language (“HTML”) code for the advertising page to which the Domain Name resolves and has established that the page serves advertisements utilising the Google AdSense program on a PPC basis. UDRP panels have found that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the complainant’s mark (WIPO Overview 3.0 at section 2.9). Additionally, UDRP panels have categorically held that the use of a domain name for impersonation or passing off can never confer rights or legitimate interests on a respondent mark (WIPO Overview 3.0 at section 2.13). The Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s evidence establishes that the Complainant’s SHRM mark was registered, used extensively and enjoyed considerable goodwill in many territories, including India, prior to registration of the Domain Name. The Complainant’s trade mark is well-known and highly specific to the Complainant and the Domain Name incorporates a term that is descriptive of some of the Complainant’s services. It is thus not possible to conceive of any use of the Domain Name by the Respondent that would not be illegitimate. The Panel has independently established that the Complainant has succeeded in various UDRP proceedings that involved the addition to SHRM trade mark of words that are descriptive of the Complainant’s goods or services, as in this case, including the recent decisions Society for Human Resource Management v. Domains By Proxy, LLC / Admin Conferences,WIPO Case No. D2020-0443 concerning the domain name The Domain Name has been used to advertise competitors of the Complainant with PPC advertisements, which is a clear indicator of targeting for commercial gain. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. A respondent cannot disclaim responsibility for programmatically generated PPC content. See WIPO Overview 3.0 at section 3.5. Additionally the Panel addresses the email imitating the Complainant. The Panel independently followed the links that recipients are encouraged to follow in the email, which all resolve to “www.audiocompliance.com”. That website appears to be for a competitor of the Complainant in the compliance services industry. The Panel visited that website and found numerous references to the Complainant under its SHRM mark. The Panel also independently ran a reverse WhoIs search on the Respondent’s email address using a public reverse WhoIs database. The search revealed that the Respondent is also the registrant for the domain name Paragraph 4(b)(iv) of the Policy is thus eminently applicable in this case. Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0). The Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name Jeremy Speres
Sole Panelist
Date: May 20, 2021
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