Project Management Institute, Inc. v. Mehdi Moein / Pishro Modiriat Piran Consulting
Claim Number: FA1901001826653
Complainant is Project Management Institute, Inc. ("Complainant"), represented by Meaghan H. Kent of Venable LLP, USA. Respondent is Mehdi Moein / Pishro Modiriat Piran Consulting ("Respondent"), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pmpiran.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on January 23, 2019.
On January 24, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <pmpiran.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pmpiran.com. Also on January 28, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 18, 2019.
A timely Additional Submission from Complainant was received and determined to be complete on February 25, 2019. Also, a timely Additional Submission was received from Respondent and determined to be complete on March 2, 2019.
On February 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Founded in 1969, Complainant is the world's leading not-for-profit professional membership association for the project, program, and portfolio management profession. Complainant uses the PMP service mark in connection with the most important industry-recognized certification for project managers.
- Complainant's PMP and PMI service marks are registered with the United States Patent and Trademark Office ("USPTO").
- The disputed domain name, <pmpiran.com>, is confusingly similar to Complainant's PMP mark, as the name fully incorporates the mark. The addition of the geographical term, "iran," does not distinguish the name from the mark because that term may simply lead internet users to assume wrongly that the disputed domain name represents an authorized extension of Complainant's services in the country of Iran.
- Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or otherwise permitted to use Complainant's mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name illegitimately to directly compete with Complainant.
- Respondent registered and is using the disputed domain name in bad faith. Respondent registered the name with actual knowledge of Complainant's rights in the PMP mark. Moreover, Respondent attempts to attract, for commercial gain, internet users to the disputed domain name to directly compete with Complainant’s operations.
B. Respondent
- The disputed domain name is not confusingly similar to Complainant's PMP mark because Respondent's potential customers have a high degree of knowledge and they can easily distinguish the name from the mark. Also, Respondent uses the disputed domain name for an entirely different class of services than those offered by Complainant.
- Respondent has rights or legitimate interests in the disputed domain name. Respondent’s services connected with the name are not unauthorized, as Respondent has been licensed by a certain third party that can authorize Respondent to provide training in Iran for Complainant's PMP courses.
- Respondent is commonly known by the disputed domain name, since it is an acronym for “Pishro Modiriat Piran Consulting,” Respondent's business name. Additionally, Respondent is using the disputed domain name for a bona fide offering of services. Specifically, Respondent has used the disputed domain name since 2006 to offer consulting and training services, without the intent to compete with or disrupt Complainant’s business. Further, Complainant has previously issued certificates to those who have completed Respondent's courses.
- Respondent did not register or use the disputed domain name in bad faith. The disputed domain name was not registered with the purpose to sell, rent or otherwise transfer it for commercial gain. Respondent has neither intended to disrupt Complainant's business nor divert users away from its website for commercial gain. Respondent also attempts to mitigate user confusion through the use of a disclaimer placed upon the disputed domain name’s resolving website.
C. Complainant's Additional Submission
- Respondent's argument that the disputed domain name is not confusingly similar to Complainant's PMP mark, because sophisticated internet users will be able to easily distinguish between the two, is wholly unpersuasive. The witnesses cited by Respondent to support this flawed contention are simply self-serving, hand-selected individuals.
- Complainant has established a prima facie case that Respondent has no rights or interests in the disputed domain name, shifting the burden to Respondent to show that it does.
- Respondent's contention that the disputed domain name reflects an acronym of Respondent's company name fails because Respondent had actual or constructive knowledge of Complainant's mark prior to selecting that company name.
- Respondent's claim to be engaged since 2006 in a bona fide offering of services through the disputed domain name is false, as those services are consistent only with its attempt to associate itself with Complainant's offerings while providing services that actually infringe upon Complainant's mark.
- Contrary to Respondent's representations, Complainant has never authorized in any manner Respondent's use of Complainant's PMP mark. Respondent's reference to a third party in this regard is completely misleading, since evidence indicates clearly that said third party had no authority to issue any sort of sublicense to Respondent with respect to Complainant's mark, its services in Iran or otherwise.
- Respondent's placement of disclaimers on its website, regarding disassociation with Complainant and its mark, do not reduce Respondent's bad faith in registering and using the name. Moreover, Respondent's use of a stylized letter "M," which resembles the stylized letter "M "used within Complainant's PMI service mark, in captioning on that website provides further evidence of that bad faith.
D. Respondent's Additional Submission
- The disputed domain name and Complainant's mark are not confusingly similar, since the PMP mark is used only for certification services while Respondent uses the name in connection with consulting and training services. Moreover, professional, not general, internet users will access the disputed domain name and, given the clear labeling on the corresponding website, will be able to distinguish easily between the mark and name.
- Respondent's company name had been registered before registration of the disputed domain name. Respondent had no actual or constructive knowledge of Complainant's rights in its mark, as Respondent's company was engaged in consulting and not certification.
- Though Respondent never intended to associate itself with Complainant, Complainant's long practice of accepting Respondent's graduates for certification implies that Complainant was aware of and consented to Respondent's fair and legitimate use of the disputed domain name.
- It is a worldwide practice, and particularly so in Iran, that entities register domain names based upon company name acronyms, as is the case with the disputed domain name.
- Respondent has never intended to disrupt Complainant's operations. On the contrary, Complainant, aware of Respondent's decade-long investment in the disputed domain name, is now attempting to disrupt Respondent's business.
Complainant is an established United States organization that provides membership services related to project management, including the issuance of certification for project managers, on a worldwide basis. Complainant conducts some of its operations under the PMP service mark, for which it has obtained registration with the USPTO (e.g., Reg. No. 2,180,481, registered Aug. 11, 1998; and Reg. No. 3,748,623, registered Feb. 16, 2010).
The disputed domain name, <pmpiran.com>, is owned by Respondent, who registered the name on March 8, 2006. The name resolves to Respondent's website, which offers project management consulting and training services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant's presentation of sufficient evidence of its registration with the USPTO for the PMP service mark convinces the Panel that Complainant has the requisite rights in that mark to satisfy Policy ¶ 4(a)(i). See Home Depot Prod. Auth., LLC v. Samy Yosef, FA 1738124 (Forum July 28, 2017) ("Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy."); see also Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) ("Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office.").
The disputed domain name, <pmpiran.com>, is not identical to the PMP mark in the Panel's opinion. However, the Panel concludes that the differences between the two, the addition of the descriptive geographical term, "iran," and the gTLD, ".com," do not prevent confusing similarity. As Complainant contends, the "iran" term might reasonably be interpreted by internet users as reflecting erroneously a subsidiary of Complainant based in the county of Iran. Also, the addition of the gTLD is of no moment at all, as all domain names must include this sort of suffix. Thus, the Panel finds the disputed domain name to be confusingly similar to Complainant's service mark. See Avaya Inc. v. Esmaeil Sedaghat., FA 1658322 (Forum Mar. 7, 2017 ) finding <avayairan.com> to be confusingly similar to the AVAYA mark); see also Geberit Holding AG v. Reza Chavoshan, D2016-2137 (Wipo Dec. 20, 2016) finding <geberitiran.com> to be confusingly similar to the mark, GEBERIT); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007), "For purposes of making the comparison, generic top-level domains are not relevant...".
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Though Complainant bears the ultimate burden with respect to this element required under the Policy, the consensus of prior UDRP decisions is that a complainant need present only a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name before the onus shifts to that respondent to come forward with evidence that it does have those rights or interests. See Neal & Massey Holdings Ltd. v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Advanced International Marketing Corp. v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Complainant has established that the disputed domain name is confusingly similar to its mark and asserts that it has not authorized or licensed Respondent to use that mark for any purpose. Thus, the Panel finds that Complainant has set forth a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, to which Respondent must offer rebuttal evidence.
Policy ¶ 4(c) indicates three alternative ways in which a respondent may assert successfully its rights or interests in a disputed domain name, thusly:
(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 (as an individual, business, or other organization) has been commonly known by the domain name, even if it 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.
Respondent, Pishro Modiriat Piran Consulting, contends that it has been commonly known as the disputed domain name, <pmpiran.com>, for some time. In viewing Respondent's name, the Panel notes that the first initials of the first three terms in that name would form the acronym, "PMP." That acronym is consistent with the disputed domain name (as well as with Complainant's service mark). Also, if the remainder of the third term of Respondent' name, "iran," is added to said acronym, the result, "PMPiran," would be identical to the disputed domain name, less the inconsequential gTLD. Moreover, it is not in dispute that Respondent does business primarily (if not completely) within the country of Iran, which gives even more credence to Respondent's claim that it is commonly known as <pmpiran.com>. All of these circumstances lead the Panel to believe that it is entirely possible that Respondent has been commonly known as the disputed domain name.
Furthermore, Respondent contends that, in connection with the disputed domain name, it engages in a bona fide offering of services, i.e., consulting with and training people regarding project management. Respondent contends further that some of those people have ultimately received certificates from Complainant, and that, as a result, Complainant has been well aware of Respondent's existence and its disputed domain name ownership for years without complaint. Moreover, while Complainant contends that Respondent is a direct competitor of Complainant, Respondent counters that its services may be related but do not directly compete with those of Complainant.
The Panel concludes that Respondent's contentions, particularly with respect to being commonly known as the disputed domain name, are sufficiently creditable as to answer Complainant's prima facie case, shifting the burden of proof with respect to the issue of rights and legitimate interests back onto Complainant.
As the Panel has found above that Complainant has failed to prove that Respondent has no rights or legitimate interests in the disputed domain name, the Panel need not consider whether the disputed domain name was registered and is being used in bad faith. See Immuno-Biological Labs, Inc. v. Dirk Boettcher, FA 1611423 (Forum May 12, 2015) ("Since Complainant fails to show Respondent lacks rights and interests in respect of the domain name, the Panel need not consider Respondent's bad faith under Policy ¶ 4(a)(iii).").
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pmpiran.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: March 7, 2019
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