Project Management Institute, Inc. v. Kao Kuang Hui
Claim Number: FA1909001861538
Complainant is Project Management Institute, Inc. ("Complainant"), represented by Meaghan H. Kent of Venable LLP, District of Columbia, USA. Respondent is Kao Kuang Hui ("Respondent"), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ipasspmp.com> and <ipasscapm.com>, registered with eNom, 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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2019; the Forum received payment on September 10, 2019.
On September 11, 2019, eNom, LLC confirmed by e-mail to the Forum that the <ipasspmp.com> and <ipasscapm.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@ipasspmp.com, postmaster@ipasscapm.com. Also on September 13, 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 October 2, 2019.
On October 7, 2019, Complainant filed an Additional Submission. The Additional Submission complies with Supplemental Rule 7.
Respondent did not file any Additional Submission.
On October 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the world's leading not-for-profit professional membership association for the project management profession. Complainant has rights in the PMP and CAPM marks based upon its registration of the marks with the United States Patent and Trademark Office ("USPTO"):
· PMP - Reg. No. 3,748,623, registered Feb. 16, 2010;
· CAPM - Reg. No. 2,919,318, registered Jan. 18, 2005;
· CERTIFIED ASSOCIATE IN PROJECT MANAGEMENT (CAPM) - Reg. No. 3,585,899, registered Mar. 10, 2009;
· Project Management Professional (PMP) - Reg. No, 3,614,943, registered May 5, 2009;
· CAPM - Reg. No. 4,077,282, registered Dec. 27, 2011.
Complainant's first use in commerce of its marks PMP and CAPM was in 1984 and 2003 respectively. Complainant also owns the domain name PMP.com, which it redirects to its primary website, PMI.org.
Respondent's <ipasspmp.com> and <ipasscapm.com> domain names are identical or confusingly similar to Complainant's PMP and CAPM marks because they wholly incorporate Complainant's PMP and CAPM marks, and merely add the generic or descriptive terms "i" and "pass" . By appending to Complainant's marks the term "ipass", read as "I pass" and describing the goal of Respondent's Websites' target market (individuals studying for, in order to pass, the PMP and CAPM exams), Respondent has created confusion with Complainant's mark as to the source sponsorship, affiliation, or endorsement of Respondent's Websites. This is likely to misleadingly divert Internet users to Respondent's site when they are trying to locate sites legitimately associated with Complainant.
Respondent lacks rights or legitimate interests in the <ipasspmp.com> and <ipasscapm.com>. In 2017, Complainant became aware of Respondent's Taiwan trademark applications for iPASSPMP and iPASSCAPM and opposed the applications. The Taiwan Intellectual Property Office subsequently cancelled the registrations.
Respondent is not authorized or licensed to use Complainant's PMP and CAPM marks and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain names' resolving webpages to divert Internet users.
Respondent registered and uses the <ipasspmp.com> and <ipasscapm.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where offers a counterfeit service which competes with Complainant's service. Furthermore, the <ipasscapm.com> domain name is inactive. Respondent had knowledge of Complainant's PMP and CAPM marks prior to registering the disputed domain name. Respondent's knowledge of Complainant's trademark rights is evidenced by its attribution throughout its site of the registration mark "®" to "PMI®," "PMP®," and "CAPM®."
B. Respondent
The domain names <ipasspmp.com> and <ipasscapm.com> were registered on Nov. 19, 2010 and Nov. 2, 2011 respectively.
Respondent has rights and legitimate interests in the <ipasspmp.com> and <ipasscapm.com> domain names based upon registration of the iPASSPMP and IPASSPMP marks with the Taiwan Intellectual Property Office. Furthermore, Respondent has posted a notice to avoid confusing Internet users.
C. Additional Submissions
Complainant submitted that:
· Respondent has not submitted an opposition or any response as to the domain name <ipasscapm.com>.
· The Trademark Notice references Complainant and implies that Respondent must have authority to use Complainant's registered trademarks and hence be affiliated with Complainant and an authorized provider of study services for the PMP exam, which Respondent is not.
· Complainant will seek to cancel Respondent's additional fraudulently obtained trademark registrations. Respondent's registrations that infringe Complainant's trademark do not demonstrate legitimate interest in the domain name. From the time of registration, Respondent's intent has always been to associate itself with Complainant and its CAPM and PMP offerings.
· Respondent registered and is using the Domain Names in bad faith. Respondent's acknowledgement that Complainant owns the trademark PMP and its references to Complainant throughout the site do not undercut consumer confusion.
· Respondent fails to provide a good-faith justification for its use of Complainant's trademarks.
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.
This Panel is satisfied that Complainant has established this element.
Complainant asserts rights in the PMP and CAPM marks based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark pursuant to Policy paragraph 4(a)(i). The Panel also accepts that through use, Complainant has established goodwill in the PMP and CAPM marks.
Respondent's <ipasspmp.com> and <ipasscapm.com> domain names incorporate Complainant's PMP and CAPM marks in full. The additional component "ipass" can be and is designed to be read as "I pass", which merely adds a generic or descriptive meaning. Thus, this additional component "ipass" fails to distinguish the disputed domain names from Complainant's marks.
The Panel finds in favor of Complainant under this element.
The Panel considers that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the <ipasspmp.com> and <ipasscapm.com> domain names. Respondent is not authorized or licensed to use Complainant's PMP and CAPM marks and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain names.
Respondent asserts it has rights in the iPASSPMP and IPASSPMP marks based on its trademark registrations with the Taiwan Intellectual Property Office and therefore the iPASSPMP and IPASSPMP marks are valid registered marks. The Panel notes that Respondent has not asserted rights (if any) in the iPASSCAPM mark.
While the existence of a trademark registration of a respondent can in some circumstances confer rights or legitimate interests under Policy paragraph 4(a)(ii), in this case the Panel notes that from Complainant's evidence that in 2017, Complainant became aware of Respondent's Taiwan trademark applications for iPASSPMP and iPASSCAPM and opposed the applications. The Taiwan Intellectual Property Office subsequently cancelled the registrations in 2019 on the ground that the trademarks were considered to be causing confusion with Complainant's marks. While Complainant apparently did not oppose Respondent's other registration "IPASSPMP", Complainant mentioned in its Additional Submission that it will seek to cancel Respondent's additional fraudulently obtained trademark registrations.
In light of the cancellation of Respondent's trademark registrations and the fact that Respondent's other trademark registration "IPASSPMP" is essentially the same as its cancelled registration "iPASSPMP", the Panel considers that these past/present registrations do not by themselves confer the requisite rights or legitimate interests under Policy paragraph 4(a)(ii).
The Panel wishes to remind that the parties that trademark disputes fall outside the scope of the Policy. Questions about the validity of trademark registrations cannot be dealt with by this Panel and the parties remain free to submit any dispute over the validity of Respondent's trademarks before the appropriate authority.
The Panel also finds that Respondent fails to use the <ipasspmp.com> and <ipasscapm.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain names' resolving webpages to offer services unauthorized by Complainant or which compete or conflict with Complainant's authorized services. This does not constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).
Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy paragraph 4(a)(ii).
The Panel is satisfied that Complainant has established this element.
The Panel accepts Complainant's submission that Respondent registered and uses the <ipasspmp.com> and <ipasscapm.com> domain names in bad faith under Policy paragraph 4(b)(iv) because Respondent attempts to attract, for commercial gain, users to the disputed domain names where they offer or offered services related to passing Complainant's certification exams without Complainant's authorization and which compete with Complainant's services.
It is clear from the website contents that Respondent has knowledge of Complainant's marks. Respondent contended that it has provided a trademark notice of Complainant's marks to avoid any confusion. The Panel notes that, in some cases, a clear and sufficiently prominent disclaimer could lend support to circumstances suggesting its good faith. However, in the present case, the trademark notice merely indicates that "PMP" and "CAPM" are registered trademarks of Complainant and falls short of disclaiming any relationship between the parties. Considering the overall circumstances and evidence, the Panel considers that the domain names <ipasspmp.com> and <ipasscapm.com> and their associated websites do give rise to a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent's services.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ipasspmp.com> and <ipasscapm.com> domain names be TRANSFERRED from Respondent to Complainant
Eugene I Low, Panelist
Dated: October 16, 2019
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