National Arbitration Forum

 

DECISION

 

RMC Publications, Inc. v. Jocob Steve

Claim Number: FA0710001095188

 

PARTIES

Complainant is RMC Publications, Inc. (“Complainant”), represented by Rita O'Keeffe, of Leonard, Street and Deinard Professional Association, 150 South Fifth Street, Suite 2300, Minneapolis, MN 55402.  Respondent is Jocob Steve (“Respondent”), 12B Fifth St., Wilmington, DE 19831.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <rmcprojects.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry, created on August 2, 2007 (the “Disputed Domain Name”).

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2007.

 

On October 19, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <rmcprojects.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that the Respondent is the current registrant of the name.  Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@rmcprojects.com by e-mail.

 

A timely Response was received and determined to be complete on November 19, 2007.

 

On November 27, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is the assignee of "all right, title, and interest in and to..." a number of United States trademark registrations, including the following:

1.  "RMC PROJECT MANAGEMENT” in International Class 41 for: "Educational services, namely, conducting classes, workshops, and conferences in the field of project management and distributing course materials in connection therewith" (registered November 30, 2004);

2.  "RMC PROJECT MANAGEMENT" in International Class 16 for: "Educational publications, namely, instructional material in a training manuals in the field of project management" (registered November 30, 2004); and

3.  “RMC PROJECT MANAGEMENT" in International Class 9 for: "Educational software and manuals sold therewith featuring instruction and training in the field of project management” (registered December 7, 2004) (hereinafter individually and collectively “Complainant's Trademarks”).

 

Copies of relevant reports from the United States Patent and Trademark Office Trademark Electronic Searched System are provided as exhibits, and a copy of the assignment agreement is attached as an exhibit. 

 

The Complainant is the owner of the following domain name: <rmcproject.com>.  This domain name has been used in association with the complainant's website since 2002.

 

The Complainant's website describes Complainant's business as follows:

 

"About RMC Project Management: Founded in 1991 by Rita Mulcahy, RMC Project Management is the innovator in project management training and professional development.  Over the last 15 years, tens of thousands of project managers in over 40 countries have utilized one of our professional resources, classes or e-Learning courses to expand their project management knowledge and further their careers.  Today we offer a wide range of innovative classes and products for beginning and advanced project managers -- as well as those seeking a project management certification.

 

‘When people ask what makes RMC different than other companies, our answer is threefold: 1) we minimize the number of hours needed to learn, 2) we maximize knowledge delivery and retention in everything we do, and 3) we communicate knowledge that is immediately comparable by project managers in the real-world, a simple, yet powerful philosophy.”

 

A copy of a page from the Complainant’s website is attached as an exhibit. 

 

The Disputed Domain Name directs to a website, and copy of a page from that website is attached as an exhibit.  Some of the links appearing on this page are:

 

"Are you interested in:

Project Management Publications

Project Management Workshop

Pmp Project Management

Project management tips

 

‘Rmc Project Management

Pmp Classes

Pmp Courses

Pmp Training

Pmp Exam

Pmp Prep

Project Management Solutions

Project Management Tools

 

‘Pmp Certification Courses

Pmp Certification Training

Pmp Exam Sample Questions

Project Management Books

 

‘About us: We empower individuals, organizations and businesses by providing unique up to date information.  Our dedicated team of professionals strives to gather the most relevant content for our users.

 

‘We specialize in Rmc Project Management, Pmp Classes, Pmp Courses, Pmp Training, PMP exam and an array of other products and services.

 

‘Pmp Study

Rita Pmp

Capm

PMP exam prep Rita Mulcahy

Flash Cards”

 

This website is nothing more than a landing page populated with links to other websites related to the field of project management.  Clicking to these links leads to additional pages of links many of which are actually to project management goods and services which are competitive with Complainant’s goods and services.  Respondent offers no project management goods and services of its own.

 

Confusing Similarity:

 

The Disputed Domain Name consists of the dominant portion of the Complainant's trademarks, “RMC Project,” which constitutes similarity for purposes of the Policy.  Further, the Disputed Domain Name also includes a typographical error in the inclusion of an “s,” which constitutes typosquatting.

 

Rights or Legitimate Interests:

 

Respondent has no trademark rights in or license to use Complainant's Trademarks, and as such Respondent has no rights or legitimate interest in the Disputed Domain Name, which includes Complainant’s Trademarks.

 

Respondent is not commonly known by the expression “RMC Projects,” and as such Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

Furthermore, there is no evidence that demonstrates Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the Disputed Domain Name.  "Respondent's sole purpose in operating its website is to use complainant's trademarks to misleadingly divert Internet traffic to its website."

 

Further still, it may be inferred that Respondent has gained profit from Internet users being directed to websites that are listed on its website, and this type of income generating scheme has been found not to be a legitimate or fair use or bona fide offering of goods or services.

 

Registration and use in bad faith:

 

"The Disputed Domain Name should be considered as having been registered and used by Respondent in bad faith because Respondent attracts Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant's Trademarks as to the source, sponsorship or affiliation of Respondent’s website."

 

Respondents had actual knowledge of complainant trademarks, and registration with such knowledge constitutes bad faith.  This knowledge can be inferred from several of the links appearing on Respondent’s website such as, "Rmc Project Management," Rita PMP", and “Pmp Exam Prep Rita Mulcahy.”

 

B. Respondent:

Respondent's response consists of the following two sentences: "We register[ed] <rmcprojects.com> for Regional MCP Projects as we are doing software development.  Currently we are Microsoft Certified Gold Partner."

 

FINDINGS

Complainant is the owner of the following trademarks:

1.  "RMC PROJECT MANAGEMENT” in International Class 41 for: "Educational services, namely, conducting classes, workshops, and conferences in the field of project management and distributing course materials in connection therewith" (registered November 30, 2004);

2.  "RMC PROJECT MANAGEMENT" in International Class 16 for: "Educational publications, namely, instructional material in a training manuals in the field of project management" (registered November 30, 2004); and

3.  “RMC PROJECT MANAGEMENT" in International Class 9 for: "Educational software and manuals sold therewith featuring instruction and training in the field of project management” (registered December 7, 2004).

 

                  The Complainant is the owner of the following domain name: <rmcproject.com>

 

Respondent registered the Disputed Domain Name, <rmcprojects.com>, on August 2, 2007.

 

The Disputed Domain Name directs traffic to a website operated by Respondent and on which appears the following link: “Pmp Exam Prep Rita Mulcahy,” among other links.

     

Rita Mulcahy was the founder of Complainant and original owner of Complainant’s Trademarks.

 

Complainant's is in the business of training and professional development with respect to the subject of project management.

 

The Disputed Domain Name is confusingly similar to Complainant's Trademarks.

 

Respondent does not have rights or legitimate interests in the the Disputed Domain Name.

 

The Disputed Domain Name was registered and is being used in bad faith.

 

     

 

     

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

This element is a threshold consideration which includes a requirement that a complainant have had trademark rights, whether registered or common law, prior to a respondent having created a disputed domain name, and that the disputed domain name be confusingly similar to the trademarks. 

 

In making this comparison, top-level domains, such as ".com,” are ignored.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Minor variations are also to be ignored.  Such minor variations can be as simple as a single letter. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). 

Further, such minor variations can include entire words.  See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), where the Panel said:

“Complainant has had exclusive rights to use the mark ‘WESTJET’ for air transportation services and related services for over twenty years.

‘Respondent registered the domain name "westjets.com." This domain name differs from Complainant’s WESTJET AIR CENTER mark by deleting the words "air" and "center" and adding the ".com" suffix at the end. UDRP Panels have held that a domain name that is composed by deleting one or more words from ‘Complainant’s trademark and adding a top level suffix meets the confusing similarity test set forth under Policy 4(a)(i). [Citations omitted]

‘Thus, the Panel concludes that the domain name is confusingly similar to a mark in which Complainant has rights.”

 

See also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK);

 

This Panel agrees with these cited panels in that a disputed domain name can be confusingly similar to a trademark even where the domain name does not include all of the words contained within the trademark.  The matter is one of practical application and whether a panel believes that an Internet user, at the point in time when the user is inputting a domain name, would likely be confused.  The panel focuses primarily on the degree of similarity between and among alphanumeric characters, the degree of similarity between and among the connotation of any words used, and on the overall impression of both the domain name and involved trademarks.

 

In the instant case, the Disputed Domain Name and Complainant’s Trademarks are identical in the first two words of each, “RMC Project,” setting assisde the addition of an “s” in the former which does not appear in the later.  This minor variation is to be ignored.  The Disputed Domain Name includes the “.com” suffix, which is not included within Complainant’s Trademarks, but this too is to be ignored.  The Disputed Domain Name does not include the word “management,” but this is a also a minor variation, especially given that it is the last word in the Complainat’s Trademarks and would tend to attract less attention.  When thusly viewed, the overall impression of the two is the same. 

 

As such, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant's Trademarks.

 

As such, Complainant has established this threshold element.

 

 

Rights or Legitimate Interests

 

This element of the Policy provides, in essence, a safe harbor potentially available to respondents.  Under the Policy, a complainant has the burden of proof with respect to this element, as is the case with each of the elements.  However, panels have interpreted this burden to be a light one.  A complainant is required to make prima facie showing, and then, if accomplished, the burden shifts to the respondent to rebut.  See G. D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, Oct. 1, 2002) (holding that where the Complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting the assertion because this information is "uniquely within the knowledge and control of the respondent."); see also AOL v. Gerberg, FA 780200 (Nat. Arb. Forum, Sept. 25, 2006) (“The Complainant must make a prima facia [sic] showing that the Respondent does not have rights or legitimate interests in the subject domain names, which burden is light.  If the Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).

 

In the instant case, the Complainant has come forward with the allegation that the Respondent is not commonly known as "RMC Projects."  Complainant has come forward with the allegation that Respondent holds no trademark registrations for any of Complainant’s trademarks and that Respondent has not obtained from Complainant a license or permission to use any of Complainant’s trademarks.  Complainant has come forward with the allegation that there is no evidence that demonstrates Respondent is using the Disputed Domain Name in connection with a legitimate noncommercial or fair use.  Further, Complainant has come forward with the allegation that there is no evidence that demonstrates that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.

 

As such, Complainant has satisfied its burden of coming forward with a prima facie showing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

 

Respondent's response, as noted above, is that: "We register[ed] rmcprojects.com for regional MCP Projects as we are doing software development.  Currently we are Microsoft certified Gold Partner.”  This Panel accepts this response by Respondent as an assertion that Respondent at all times intended to use the Disputed Domain Name in connection with a bona fide offering of a service, namely software development.  However, this response fails to satisfy Respondent’s burden. 

 

Clearly, such a use does not constitute a legitimate non-commercial or fair use.  Neither does this establish that Respondent is commonly known by the Disputed Domain Name.

 

This use also does not constitute a use in connection with a bona fide offering of goods and services.  Respondent’s webpage contains the following link, among others: "PMP Exam Prep Rita Mulcahy."  Ms. Rita Mulcahy is Complainant’s founder and the original owner of Complainant’s trademarks.  The only explanation for the appearance of Ms. Mulcahy’s name on Respondent’s website is that Respondent is attempting to attract Internet users seeking Ms. Mulcahy’s services, and this can only be for competitive reasons.

 

Many Panels have held that the use of an identical or confusingly similar domain name to compete with a complainant is inconsistent with the protection of the safe harbor, notwithstanding that the service being offered is itself otherwise legitimate.  See America Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 12, 2000) (“it would be unconscionable to find a bona fide offering of services in a Respondent’s operation of a website using a domain name which is confusingly similar to Complainant’s mark and for the same business.”); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of the Respondent’s registration of the domain name it can be inferred that the Respondent is attempting to capitalize on the confusing created by the domain name’s similarity to the mark); see also MBS Computers Ltd., v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interest when the Respondent is using a domain name identical to the Complainant’s mark and is offering similar services.).

 

It is conceivable that Respondent is not attempting to compete with Complainant, but is rather attempting to advertise its own services, software development, to potential customers in the project management field, and the use of Ms. Mulcahy’s name may be a good way to attract the attention of such potential customers.  However, this would also be unpersuasive given the other links appearing on Respondent’s webpage, which are all related to the subject of project management and not software development. 

 

As such, Complainant has satisfied this element of the Policy.

 

Registration and Use in Bad Faith

 

Policy ¶4(b) sets forth four nonexclusive examples of conduct which constitutes registration and use in bad faith, being, briefly: i) circumstances indicating registration primarily for the purpose of selling a domain name registration to the complainant; ii) registration for the purpose of preventing the owner of a trademark from reflecting the mark in the corresponding domain name; iii) registration for the purpose of disrupting the business of a competitor; and iv) intentionally attempting to attract for commercial gain Internet users to your website by creating a likelihood of confusion with the complainant's Mark as to the source, sponsorship, affiliation or endorsement of your website or location of a product or service on your website.

 

This Panel is not persuaded that respondent's conduct falls within the scope of the first three of these examples.  However, this Panel is persuaded that Respondent's conduct does fall within the scope of Policy ¶4(b)(iv).

 

As is noted above, it is inconceivable that Respondent’s website, to which the Disputed Domain Name directs traffic, would include Ms. Mulcahy’s name without Respondent intentionally attempting to attract Internet users seeking Ms. Mulcahy’s services, and thereby competing with Complainant by way of creating a confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondents website. 

 

The record is not clear about whether Respondent is obtaining commercial gain from its website, although it would seem illogical for Respondent to go to the effort of creating its website without this.  However, even if this were not the case, this Panel would still find registration and use in bad faith.  As noted above, the four examples of Policy ¶4(b) are nonexclusive, and this Panel would find that Respondent's conduct is sufficiently close to that described in Policy ¶4(b)(iv) as to constitute a violation.

 

As such, Complainant has satisfied this element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rmcprojects.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Kendall C. Reed, Panelist
Dated: December 11, 2007

 

 

 

 

 

 

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