Project Management Institute, Inc. v. Roy Degan III / Consumer First
Claim Number: FA2007001904070
Complainant is Project Management Institute, Inc. (“Complainant”), represented by Meaghan H. Kent of Venable LLP, United States of America. Respondent is Roy Degan III / Consumer First (“Respondent”), Tennessee, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pmi-memphis.com> and <pmimemphis.com>, registered with Wild West Domains, Llc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2020; the Forum received payment on July 14, 2020.
On July 15, 2020, Wild West Domains, Llc confirmed by e-mail to the Forum that the <pmi-memphis.com> and <pmimemphis.com> domain names are registered with Wild West Domains, Llc and that Respondent is the current registrant of the domain names. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, Llc 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 July 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2020 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@pmi-memphis.com, postmaster@pmimemphis.com. Also on July 22, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Project Management Institute, Inc., is a not-for-profit professional membership association. Complainant asserts rights in the PMI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,152,599, registered April 21, 1998). See Compl. Annex E. Respondent’s <pmi-memphis.com> and <pmimemphis.com> domain names are confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and merely add the term “memphis” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <pmi-memphis.com> and <pmimemphis.com> domain names. Respondent is not commonly known by the domain names nor has Complainant authorized Respondent’s use of the PMI mark. Additionally, Respondent does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to direct Internet users looking for Complainant to Respondent’s website which criticizes Complainant’s business.
Respondent registered and uses the <pmi-memphis.com> and <pmimemphis.com> domain names in bad faith. Respondent intentionally targeted the PMI trademark to direct Internet users to its website. Additionally, Respondent’s use of a disclaimer is not enough to save Respondent from a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States not-for-profit professional membership association.
2. Complainant has established its trademark rights in the PMI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,152,599, registered April 21, 1998).
3. Respondent registered the disputed domain names on March 14, 2020.
4. Respondent uses the disputed domain names to direct Internet users looking for Complainant to Respondent’s website which criticizes Complainant’s business.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PMI mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,152,599, registered April 21, 1998). See Compl. Annex E. Therefore, the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s PMI mark. Complainant argues that Respondent’s <pmi-memphis.com> and <pmimemphis.com> domain names are confusingly similar to Complainant’s mark because the disputed domain names incorporate the PMI mark in its entirety and merely add the geographical term “memphis” and the “.com” gTLD. The addition of a generic or descriptive term, a gTLD and in one case a hyphen, is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited 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”).
(a) Respondent has chosen to take Complainant’s PMI trademark and to use it in its domain names, adding the word “memphis” which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names on March 14, 2020;
(c) Respondent uses the domain names to direct Internet users looking for Complainant to Respondent’s website which criticizes Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interest in the <pmi-memphis.com> and <pmimemphis.com> domain names, as Respondent is not commonly known by either disputed domain name nor has Complainant authorized Respondent’s use of the PMI mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names shows that the registrant’s name is “Roy Degan III / Consumer First” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain names. See Compl. Annex A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to use the <pmi-memphis.com> and <pmimemphis.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to divert Internet users to Respondent’s websites. Use of a domain name intentionally to divert Internet users is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant claims that Respondent uses the domain names to criticize Complainant’s business. See Compl. Annex G. While Complainant acknowledges Respondent’s right to free speech, it argues that Respondent’s use of the confusingly similar domain names to criticize Complainant is not a legitimate interest in the domain names. As the Panel agrees with Complainant’s argument on this issue it finds Respondent has no right or legitimate interest in the domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <pmi-memphis.com> and <pmimemphis.com> domain names in bad faith because Respondent’s use of Complainant’s well known mark signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As previously noted, Complainant claims that Respondent uses the domain names to criticize Complainant’s business. See Compl. Annex G. Complainant claims that such use is evidence of bad faith as Respondent uses Complainant’s mark to deceive Internet users and attract them to Respondent’s websites. The Panel agrees and finds such use is in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant claims that Respondent’s use of a disclaimer on the infringing website does not save Respondent from a finding of bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Complainant provides evidence of a disclaimer through screenshots of the infringing website. See Compl. Annex G. The panel finds the disclaimer irrelevant and finds Respondent is acting in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pmi-memphis.com> and <pmimemphis.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 20, 2020
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