Project Management Institute, Inc. v. Song
yuyu / Songyy International Consulting Co.
Claim Number: FA1008001338368
PARTIES
Complainant is Project
Management Institute, Inc., (“Complainant”) represented by Gerald C. Pia, of Roche Pia LLC, Connecticut, USA.
Respondent is Song yuyu / Songyy
International Consulting Co., (“Respondent”), Virgin Islands (U.S.).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipmi.us>,
registered with WEB COMMERCE COMMUNICATIONS,
LTD.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on July 29, 2010; the Forum received a hard copy
of the Complaint on July 29, 2010.
On August 1, 2010, WEB COMMERCE COMMUNICATIONS, LTD. confirmed by e-mail
to the Forum that the <ipmi.us>
domain names is registered with WEB COMMERCE COMMUNICATIONS, LTD. and
that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS, LTD. has
verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS, LTD.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On August 17, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 6, 2010 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On September 16, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Sandra J.
Franklin 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <ipmi.us> domain name is confusingly similar to Complainant’s PMI mark.
2.
Respondent does not have any rights or
legitimate interests in the <ipmi.us> domain name.
3.
Respondent registered and used the <ipmi.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Project Management Institute,
Inc., is an international project management membership association that is
comprised of over half a million members and credential holders in 185
countries around the world. Complainant holds multiple trademark registrations
for its PMI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,152,599 issued April
21, 1998). Complainant uses its PMI mark
to engage in the certification of individuals for competency in various
disciplines in the project management industry.
Respondent, Song yuyu / Songyy International
Consulting Co., registered the disputed domain name on May 3, 2010. The disputed domain name resolves to a
website for Respondent that advertises related products and services that compete
with Complainant along with counterfeit versions of Complainant’s
products.
DISCUSSION
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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 and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
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; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the PMI mark through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <ipmi.us> domain name is confusingly similar to Complainant’s PMI mark. The disputed domain name contains Complainant’s PMI mark, adds the letter “i,” and adds the country code top-level domain (“ccTLD”) “.us.” Previous panels have found the additions of a single letter and a ccTLD to a complainant’s mark fail to adequately distinguish a disputed domain name from a complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”). Therefore, the Panel concludes Respondent’s <ipmi.us> domain name is confusingly similar to Complainant’s PMI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <ipmi.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <ipmi.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <ipmi.us>
domain name. The WHOIS information
identifies Respondent as “Song yuyu /
Songyy International Consulting Co.”
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the <ipmi.us>
domain name domain name pursuant to Policy ¶ 4(c)(iii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
UDRP ¶ 4(c)(ii) does not apply); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent uses the <ipmi.us> domain name to resolve to a website for Respondent that
advertises related products and services that compete with Complainant along
with counterfeit versions of Complainant’s products. The Panel finds the use of a confusingly
similar disputed domain name for this purpose is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. 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 [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under [UDRP] ¶ 4(c)(iii).”); see also
Hewlett-Packard Co. v. Inversiones HP Milenium
C.A., FA 105775 (Nat. Arb. Forum Apr. 12,
2002) (“Respondent’s use of the confusingly similar domain name
[<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP]
products is not a bona fide offering of goods or services pursuant to [UDRP] ¶
4(c)(i).”).
The Panel finds Policy ¶ 4(a)(ii) has been
satisfied.
Registration
and Use in Bad Faith
Respondent’s <ipmi.us> domain name resolves to a website containing counterfeit versions of Complainant’s products as well as products and services that compete with Complainant. Internet users interested in Complainant’s project management products and services may instead purchase counterfeit or competing products because of Respondent’s confusingly similar disputed domain name. The Panel finds Respondent’s use of the <ipmi.us> domain name disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii)).
The Panel infers
Respondent profits from the sale of counterfeit and competing project
management services and products on the website resolving from the <ipmi.us> domain name. Internet users, searching for Complainant’s
products and services, may become confused as to Complainant’s sponsorship or
affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this
confusion. The Panel finds Respondent’s
use of these disputed domain names constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ipmi.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 23, 2010
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