The Complainant is Human Resource Certification Institute of Alexandria, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
The Respondent is Tridibesh Satpathy, Edusys of Bangalore, India, represented by Techjuris Law Consultants, India.
The disputed domain name, <hrcistudy.com> (the “Domain Name”), is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2010. On February 25, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 1, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Domain Name was held in the name of a privacy service at the date of filing of the Complaint.
The Center sent an email communication to the Complainant on March 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 9, 2010.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 11, 2010.
On March 22, 2010, the Complainant filed a supplemental submission with the Center in support of the Complainant's contention (not contested by the Respondent) that the Respondent registered the Domain Name with knowledge of the Complainant and its courses.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2010, which was extended by the Center to April 1, 2010. However, the Response was filed with the Center on March 30, 2010 within the original timeframe.
The Center appointed Tony Willoughby, Terrell C. Birch and Harini Narayanswamy as panelists in this matter on April 27, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is an internationally recognised certifying body for the human resources industry. Those seeking to obtain certification from the Complainant are required to pass the Complainant's exams.
The Complainant is the proprietor of United States service mark registration No. 2889180 HRCI in class 42 “for services in connection with developing and administering standards and procedures for certifying human resource professionals”. The mark was applied for in August 2003 and was registered on September 28, 2004.
The Complainant's website is connected to its domain name <hrci.org>, which it registered on December 8, 2000.
The Respondent is the promoter of Edusys Services Private Limited, an education and training company incorporated in India on July 28, 2004.
The Respondent registered the Domain Name on August 4, 2008 and is using it to connect to a website which in the words of paragraph 20 of the Complaint “offers online courses to HR professionals preparing for accreditation exams solely conducted by Complainant.”
The Complainant contends that the Domain Name is confusingly similar to its HRCI service mark.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not granted the Respondent any licence to the Respondent to use its HRCI service mark and contends that none of the factors set out in paragraph 4(c) of the Policy is applicable. The Complainant states that the only entity authorized to use the Complainant's HRCI service mark in India is SHRM India, an Indian-based subsidiary of the United States (US)-based Society for Human Resource Management.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Essentially, the Complainant's complaint is that this unlicensed use of the Complainant's service mark is an unfair, unjustified exploitation of the mark for commercial gain.
The Complainant contends that the Respondent's use of a privacy service to cloak its identity is further indication of the Respondent's bad faith. The Complainant contends that this is indicative of an attempt by the Respondent to disrupt proceedings under the Policy.
The Respondent denies the Complainant's allegations.
He contends that in context the Domain Name is not likely to lead to confusion. He asserts that “Worldwide, in the education industry, using names of certifications in the website domain names which help students to study or prepare for those certifications is common and therefore the present domain name cannot be said to constitute a violation of or creating confusion with Complainant's trade mark.”
He asserts that the Domain Name is part of a group of domain names held in the name of the Respondent, the others being <PMstudy.com>, <6sigmastudy.com>, and <myCATstudy> and each being connected to a website devoted to training courses for the accreditation examinations indicated in the domain name.
The Respondent contends that his use of the Domain Name is a legitimate bona fide use of the Domain Name and gives him the benefit of paragraph 4(c)(i) of the Policy.
By the same reasoning the Respondent contends that the Domain Name was not registered and is not being used in bad faith.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
The Domain Name comprises the Complainant's service mark HRCI, the dictionary word ‘study' and the generic ‘.com' domain suffix.
It is well-established that the domain suffix may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy and the dictionary word ‘study' does nothing to dilute the distinctiveness of the Complainant's service mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant's service mark.
There is no dispute between the parties that the Respondent is using the Domain Name in connection with his company's offering of educational services devoted to the Complainant's accreditation examinations and that the Respondent's choice of domain name was governed by the name of those accreditation examinations, i.e. the Complainant's HRCI service mark.
Whether the Respondent's use of the Domain Name constitutes use of it in relation to a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy is an interesting question, but not one that the Panel needs to address in light of its finding under the next heading.
The Policy was designed to deal with a relatively narrow form of dispute between trade mark (and service mark) proprietors and domain name registrants, namely the deliberate registration of a domain name featuring the complainant's trade mark or a confusingly similar variant of it with a view to causing damage or disruption to the complainant or his business or unfairly exploiting the complainant's trade mark for the registrant's own advantage.
Examples of the kind of bad faith registration and use, which the Policy was designed to address, are set out in paragraph 4(b) of the Policy. They all have in common that the choice of domain name for the ‘use' in question was governed by a desire on the part of the registrant to cause damage to the complainant or derive an unfair profit. The list in paragraph 4(b) is a non-exhaustive list, but the Panel ventures to suggest that it would only be in the most exceptional of circumstances that a domain name registration would be condemned without a finding of mala fide intent on the part of the registrant.
In this case there appears to be no dispute that the Respondent is using the Domain Name for the provision of educational services devoted to the Complainant's accreditation examinations. The Respondent has produced evidence in support and there is nothing before the Panel to indicate the contrary.
The Complainant has levelled no criticism at the quality of the services provided by the Respondent through the website connected to the Domain Name. The Complainant's objection is simply that the Domain Name features within it the Complainant's service mark without the Complainant's permission. The Complainant contends that Internet users seeing the Domain Name will believe it to be an official or authorized site of the Complainant and will thereby be deceived. The Complainant's contention is that since the Respondent's site is a commercial site, this use of the Domain Name renders the Domain Name one which has been registered and is being used in bad faith for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
Paragraph 4(b)(iv) reads:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” [emphasis added]
What evidence is there to suggest that the Respondent intentionally set out to deceive or confuse Internet users? Is the Domain Name so obviously deceptive that bad faith intent may be inferred? If not, what other evidence has the Complainant put forward in support of this allegation?
The Complaint majors on the fact that the Respondent knowingly registered the Domain Name in violation of the Complainant's rights. Paragraph 30 of the Complaint reads as follows:
“As noted in Research in Motion Limited v. Dustin Picov WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant, its very use by a registrant with no authorized connection to the Complainant suggests ‘opportunistic bad faith' Respondent's use of Respondent's domain name, which includes Complainant's Mark in its entirety, is an egregious use of Complainant's brand to attract interested online customers to Respondent's website and products. No plausible explanation exists as to why Respondent selected the federally registered HRCI mark as part of Respondent's Domain Name, except to trade on the goodwill of Complainant. The facts are sufficient to show registration and use of Respondent's Domain Name in bad faith. Respondent registered Respondent's Domain Name primarily for the purpose of capitalizing on the value inherent in Complaint's Mark. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556”
It is not in dispute that the Respondent knew at time of registration of the Domain Name that the Complainant had service mark rights in respect of the HRCI name; nor is it in dispute that use of the Complainant's service mark in the Domain Name was intended to be taken as a reference to the Complainant's accreditation services; nor is it in dispute that the Domain Name was intended to attract customers to the Respondent's website. Does it necessarily follow from all that that the Respondent's intentions were mala fide?
The Respondent's explanation for his choice of domain name is a simple one. He provides study courses for students studying for the Complainant's examinations, those examinations being known by the acronym and service mark HRCI. By use of the Domain Name <hrcistudy.com> to connect to his website his intention was to attract to his website those Internet users looking for study courses for the Complainant's examinations. He contends that the Respondent is not a competitor of the Complainant in that the Complainant does not provide study courses for those taking its examinations. He accepts that the Complainant has an authorized provider of study courses in India for the Complainant's examinations, but the Respondent contends that there is no scope for confusion between their respective websites and contends that the Complainant's rights do not extend to a monopoly over the provision of study courses for those examinations.
The Respondent contends that it is common in the educational field for course providers to use in relation to their courses the names of the examinations the subject of the courses. The Respondent demonstrates that his company promotes and provides a variety of other courses by reference to names similar in style to the Domain Name, namely <6sigmastudy.com> (for online courses and training in Six Sigma related certifications), <PMstudy.com> (for Project Management training) and <myCATstudy.com> (for the Common Admission Test examinations conducted by the Indian Institutes of Management).
He also produces evidence to show that other course providers operate in similar fashion. Thus there are various websites devoted to courses for the United States GMAT tests (Graduate Management Aptitude Tests), GMAT being a registered trade mark of the Graduate Management Admission Council. Relevant sites are to be found connected to domain names such as <gmatexperts.com>, <gmat-mba-prep.com> and <gmattutor.com> among many others cited by the Respondent. Another popular examination in the United States is said to be the GRE examination, GRE being a registered trade mark of the Educational Testing Service. Relevant sites are to be found connected to domain names such as <myGREtutor.com>, <GREguide.com>, <GREprep.com> and <GREbible.com>.
On the face of it, therefore, it appears to the Panel that contrary to what is asserted in the paragraph of the Complaint quoted above, the Respondent would appear to have a plausible explanation for what he has done, which cannot sensibly be said to be no more than an intent to trade on the goodwill of the Complainant in the sense that that expression is normally used. It is not as if the Respondent is providing other accreditation examinations, which he is seeking to promote by reference to the Complainant's service mark; nor is he seeking to use the Complainant's service mark to promote his services in respect of any other preparatory courses. The Complainant sets HRCI examinations and the Respondent wishes to indicate that he or his company provides courses for students studying for those examinations.
The Panel starts by looking at the two cases cited by the Complainant in paragraph 30 of the Complaint in the hope that some assistance may be derived from them.
In Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, the domain name in issue was <researchinmotion.com>, the registrant was a student found to have used fake identities and addresses for his domain name and he offered the domain name for sale at a price of $1,500,000. It is not difficult to see that the facts of that case are almost as far removed from the facts of this case as it is possible to be. It is distinguishable from the present case. .
In Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556, there were several domain names in issue one being <volvomasters.com>, the name of a well-known golf tournament sponsored by the Complainant and another being <vlovo.com>, a typographical variant of the Complainant's trade mark. The Respondent had all the domain names connected to pay-per-click parking pages and had a track record of being held to be a cybersquatter in proceedings under the Policy. Again, that case has nothing of substance in common with the facts of this case.
Is the Respondent's use of the Domain Name in violation of the Complainant's service mark rights in a traditional trademark sense? The Panel cannot be certain. By reference to which country's trade mark law is the question to be answered? One of the members of the Panel believes that in certain jurisdictions such a use of another's service mark might be regarded as a fair descriptive use of the service mark to describe the educational services provided by the Respondent.
However, whether or not the Respondent's use of the Domain Name constitutes trade mark/service mark infringement is outside the scope of this proceeding. For the purposes of the Policy, if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.
The only matter proffered by the Complainant (over and above what is said in paragraph 30 of the Complaint) is the fact that the Respondent held the Domain Name in the name of a privacy service until his identity was exposed by the Registrar when the Center sought registrar verification on receipt of the original Complaint. The Complainant asserts in paragraph 32 of the Complaint:
“Respondent operated in bad faith by using a privacy service to cloak its identity. Although a registrant may have legitimate reasons to use a privacy service, it may also do so in an attempt to disrupt proceedings under the Policy. Taken in the overall context of this domain name dispute, Respondent's use of a privacy service is an indication of bad faith.”
It would have been helpful if the Complainant had explained what the usual legitimate reasons are and why “in the overall context of this domain name dispute”, the Respondent's reason is not one of them.
The Respondent refutes the allegation contending that the right to privacy is “a fundamental right recognized and guaranteed by constitutions around the world including the US constitution”. It would have been helpful if the Respondent had been more forthcoming on the point.
The fact is that any delay caused by the Respondent's use of a privacy service has not been shown to evince any bad faith on his part. It might have been different if the Complainant had written to the privacy service before launching the Complaint and the Respondent's name had not been disclosed at that stage, or if there was a clear indication that the Respondent was using a privacy service or providing false contact details in order to evade a proceeding under the Policy.
The Panel is not satisfied that the Respondent selected and registered the Domain Name with the egregious intention of trading on the goodwill of the Complainant; nor is the Panel satisfied that the Respondent registered the Domain Name knowing that his registration and/or use of it would constitute infringement of the Complainant's rights.
In summary, the Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Terrell C. Birch
Dated: May 7, 2010