The Project Management Institute, Inc. v. Reynex
Claim Number: FA0606000736233
Complainant is The Project Management Institute, Inc. (“Complainant”), represented by Gerald C. Pia, of Pullman & Comley, LLC, 850 Main Street, Bridgeport, CT 06604. Respondent is Reynex (“Respondent”), 3080 Olcott St., 130B, Santa Clara, CA 95054.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <pmitest.com> and <pmitests.com>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2006.
On June 21, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <pmitest.com> and <pmitests.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 June 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2006 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@pmitest.com and postmaster@pmitests.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <pmitest.com> and <pmitests.com> domain names are confusingly similar to Complainant’s PMI mark.
2. Respondent does not have any rights or legitimate interests in the <pmitest.com> and <pmitests.com> domain names.
3. Respondent registered and used the <pmitest.com> and <pmitests.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Project Management Institute, Inc., is a project management trade association that represents over 220,000 members in more than 150 countries. Complainant’s services include the certification of individuals for competency and various disciplines in the project management industry. Complainant began using its PMI mark in 1969, and holds a registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 2,152,599 issued April 21, 1998).
Respondent registered the <pmitest.com> and <pmitests.com> domain names on May 24, 2005. Respondent’s disputed domain names resolve to websites that display competing and/or related goods and services to Complainant’s offerings that are available for purchase from Respondent.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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.
The Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the PMI mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <pmitest.com> and <pmitests.com> domain names are confusingly similar to Complainant’s PMI mark because they combine Complainant’s mark with the terms “test” and “tests” which describe one of the services offered by Complainant. In Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000), the panel found that the <bramblesequipment.com> domain name was confusingly similar to the complainant’s mark because the combination of the two words "brambles" and "equipment" in the domain name implied that there was an association with the complainant’s business. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Respondent has alleged that Respondent lacks rights or legitimate interests in the <pmitest.com> and <pmitests.com> domain names. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <pmitest.com> and <pmitests.com> domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because 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.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s PMI mark, and that Respondent is not associated with Complainant
in any way. Moreover, Respondent’s
WHOIS information does not suggest that Respondent is commonly known by the disputed
domain names. There is also no evidence
in the record to suggest that Respondent is or has ever been known by the
disputed domain names. Absent such
evidence of use of the disputed domain names prior to the filing of the instant
Complaint, the Panel finds that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also
Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the
respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”).
Respondent is using the disputed
domain names to divert Internet users attempting to locate Complainant’s
website to a website that offers competing goods and services to those offered
by Complainant, presumably for the commercial benefit of Respondent. The Panel finds that such diversion is
neither a bona fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website); see also
Coryn Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith by registering and using the disputed domain names that contain Complainant’s mark in its entirety with the addition of a term that describes an aspect of Complainant’s business. Respondent is using the <pmitest.com> and <pmitests.com> domain names to redirect Internet users to a website that features goods and services that compete and/or relate to Complainant’s available goods and services. The Panel finds that such use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
Based on the uncontested evidence presented by Complainant,
the Panel infers that Respondent is operating websites that correspond to the
disputed domain names for its own commercial benefit. The Panel additionally finds that Respondent’s disputed domain
names that incorporate Complainant’s mark in its entirety are capable of
creating confusion as to Complainant’s sponsorship and affiliation with the <pmitest.com>
and <pmitests.com> domain names.
In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel found
that although the complainant’s principal website was
<century21.com>, many Internet users were likely to use search engines to
find the complainant’s website, only to be mislead to the respondent’s website
at the <century21realty.biz> domain name, which featured links for
competing real estate websites. The
panel found that it was likely that Internet users who were searching for the
complainant’s website, and ended up at the respondent’s website instead would
be confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website. See Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pmitest.com> and <pmitests.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 1, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum