WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Project Management Institute, Inc. v. Promise Oghoghoiye, Repulb Communications Inc.
Case No. D2017-0597
1. The Parties
Complainant is Project Management Institute of Newtown Square, Pennsylvania, United States of America (“United States”), represented by Roche Pia LLC, United States.
Respondent is Promise Oghoghoiye, Repulb Communications Inc. of Benin City, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <projectmanagementprofessionalinstitute.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on March 24, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. Several emails communications were received by the Center on April 4, 2017, April 19, 2017, April 20, 2017 and April 21, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 3, 2017. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant is a non-profit corporation organized in Pennsylvania, United States. Complainant is a project management trade association that represents over 475,000 members in more than 150 countries around the world. Complainant engages in, among other things, the certification of individuals for competency and various disciplines in the project management industry and has been engaged in this industry since1969.
Complainant owns, inter alia, the following trademark registrations with the United States Patent and Trademark Office (“USPTO”):
- PMI, Reg. No, 2152599, registered on April 21, 1998, filed on June 30, 1997, for printed matter, etc. in class 16. First Use March 10, 1969 / First use in commerce March 1971.
- PROJECT MANAGEMENT PROFESSIONAL, Reg. No. 2889062, registered on September 28, 2004, filed on May 6, 2003, for educational testing and evaluation services for certifying individuals in the field of project management, in class 41. First Use September 1883 / First use in commerce December 1984.
- PROJECT MANAGEMENT PROFESSIONAL (PMP), Registration Number 3614943, registered on May 5, 2009, filed on May 12, 2008, for testing to determine professional competency involved in project management, etc., in class 35. First Use October 1983 / First Use in commerce December 1984.
- PMI PROJECT MANAGEMENT INSTITUTE REGISTERED EDUCATION PROVIDER, Reg. No. 2521933, registered on December 25, 2001, filed on May 4, 2000, for association services in the field of project management, etc., in class 42. First use July 1999 / first use in commerce July 1999.
- PMI PROJECT MANAGEMENT INSTITUTE EDUCATIONAL FOUNDATION, Reg. No. 2612506, registered on August 27, 2002, filed on September 13, 2001, for providing grants and scholarships to individuals and organizations in the field of project management, in class 36. First use March 22, 2001 / first use in commerce March 22, 2001.
- PMI PROJECT MANAGEMENT INSTITUTE REGISTERED EDUCATION PROVIDER, Reg. No. 2578655, registered on June 11, 2002, filed on October 5, 2001, for indicating membership in a registry established by applicant to promote the availability of appropriate educational programs in project management, in prior United States class 200. First use August 1999 / first use in commerce August 1999.
- PMI PROJECT MANAGEMENT INSTITUTE REGISTERED EDUCATION PROVIDER, Certification mark, Reg. No. 3882090, registered on November 30, 2010, filed on February 27, 2009, for providing education and training courses in the field of project management, in class B. First use October 1999 / first use in commerce October 1999.
- PROJECT MANAGEMENT INSTITUTE, Reg. No. 3920348, registered on February 15, 2011, filed on February 27, 2009, for publications, etc. in the field of project management in class 16. First use October 1968 / first use in commerce March 1971.
The disputed domain name was registered on October 17, 2010. The disputed domain name resolves to a website which offers training and other services related to project management.
There is a pending action in the Federal High Court in the Lagos Judicial Division, Holden at Lagos. See details in section 6.A. below.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent has combined Complainant’s marks PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE inthe disputed domain name.
Respondent has no rights or legitimate interests in respect of the disputed domain name. While the words “institute” and “professional” would be merely descriptive for Respondent, they are part of world-famous marks, with secondary meaning, as used by Complainant. Complainant has engaged in global commerce since 1969. Complainant’s presence in Nigeria dates back to 1987. The first Nigerian to achieve Complainant’s credentials did so in 1994. Most importantly, Complainant’s Nigerian chapter/affiliate (“PMI Nigeria”), began operations in Nigeria in 2004, and is subject to a Charter Agreement with Complainant dated August 28, 2005. (Annex 28 to the Complaint)
PROJECT MANAGEMENT PROFESSIONAL, PROJECT MANAGEMENT INSTITUTE, PMI and PMP are well-known marks of Complainant with strong secondary meaning in the project management industry. Respondent has no right to use Complainant’s marks to sell competing and/or related products.
Based on the information available in the WhoIs and provided by the Registrar, Respondent is not commonly known by the disputed domain name. Respondent is “Promise Oghoghoiye” an individual who, at the time of registration, may have some connection to an entity known as “Repulb Communications Inc.”, not “projectmanagmenetprofessionalinstitute”.
On the website at the disputed domain name, there is some indication that the operators contend to be the “Project Management Professional Institute” or “PMPI”. However, even if Respondent purports to be the “Project Management Professional Institute” or “PMPI”, that name, itself, infringes Complainant’s registered marks PMI, PROJECT MANAGEMENT INSTITUTE, PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT PROFESSIONAL (PMP), and therefore such infringing use by Respondent is not legitimate. Indeed, Complainant was using its marks in Nigeriaas early as 2004. (Annex 28 to the Complaint)
Complainant has also registered at least 12 trademarks related to its PMP and PROJECT MANAGEMENT PROFESSIONAL, PMI and PROJECT MANAGEMENT INSTITUTE marks in Nigeria since 2012. (SeeAnnex 28). Accordingly, even if Respondent were using the name “Project Management Professional Institute”, or “PMPI”, those names violate United States law (for conduct affecting United States commerce), and contravene the rights of Complainant under Nigerian law pursuant to the common law theory of passing off, section 5 of the trademarks Act and section 31 (4) of the Companies and Allied Matters Act 2004, and as such are a sham use under the Policy.
The disputed domain name was not registered until October 17, 2010, well after Complainant’s trademark rights in the marks were established, with registrations dating back as far as 1998.
While Complainant understands that an organization known as the “Project Management Professional Institute LTD/GTE” was established on or about August 5, 2013 in Nigeria, (a) there is no information that suggests it was formed by Respondent, and (b) such formation did not occur until almost three years after the creation date of the disputed domain name (Annex 28 to the Complaint). Based on this fact, Respondent cannot establish that it had been known by this name at the time the disputed domain name was registered.
Respondent was on notice of Complainant’s PROJECT MANAGEMENT PROFESSIONAL, PROJECT MANAGEMENT INSTITUTE, PMI and PMP marks when it registered and began using the disputed domain name. First, Respondent is advertising products/certifications within the same industry, thus demonstrating actual notice. Additionally, the disputed domain name was registered in 2010, yearsafter Complainant had established and used the marks in commerce and undertook the costs/investment of registering the marks with the USPTO.
The disputed domain name was registered and is being used in bad faith. Respondent has prevented Complainant from utilizing its trademark on the most popular generic Top-Level Domain (“gTLD”). Respondent has overtly utilized Complainant’s marks PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE, which in and of itself, demonstrates bad faith, especially given the activities conducted under the disputed domain name.
Respondent is improperly using two Complainant’s registered marks in combination in the disputed domain name. This conduct clearly demonstrates the Respondent’s awareness of Complainant’s marks and Respondent’s intent to capitalize on those marks within the very same industry without authorization. See, e.g., Apple Inc., v. Domain Admin, Private Whois ipodhack.com, Private Whois iphine.com, Private Whois macbookpros.com, WIPO Case No. D2011-1390 (transferring the domain name <www.appleipods.com>, which was comprised of a combination of two of Apple’s trademarks (APPLE and IPOD)); Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro, WIPO Case No. D2001-0575 (transferring the domain name, <www.sonyps2.net>, comprised of a combination of two of Sony’s trademarks – SONY and PS2).
The addition of the descriptive term “institute” after Complainant’s PROJECT MANAGEMENT PROFESSIONAL mark suggests that Respondent is the actual authorized source for Complainant’s PROJECT MANAGEMENT PROFESSIONAL program, and that Respondent is the “Institute” responsible for the PROJECT MANAGEMENT PROFESSIONAL brand. This improper suggestion demonstrates that Respondent’s conduct was nothing more than an opportunistic effort to capitalize on Complainant’s PROJECT MANAGEMENT PROFESSIONAL mark in the very same industry that Complainant and Respondent both engage. This further demonstrates Respondent’s bad faith in this instance. Cf. Compagnie Générale des Etablissements Michelin v. Isaac Goldstein, Hulmiho Ukolen, Poste restante/Domain Admin, Whois protection, this company does not own this domain name s.r.o.,WIPOCase No. D2015-1787, (transferring <michelinlearninginstitute.com> to the complainant, the owner of the MICHELIN trademark, because, among other reasons, “[t]he disputed domain name incorporates the Complainant's trademark in its entirety and combines it with two common English words, namely ‘learning’ and ‘institute’”. and finding the confusion even more problematic because the complainant also utilized that term “Michelin Learning Institute” at its own website located at “www.michelinlearninginstitute.net”).
Respondent was aware of Complainant’s marks at the time the disputed domain name was created – 2010. Some of these marks had been in use as far back as 1989, and Respondent’s combination of Complainant’s two marks only confirms the appreciation for Complainant’s rights at the time the disputed domain name was created.
Respondent understood the value of the disputed domain name and/or its eventual use by Complainant and appropriated that value for itself, despite that the value stems from Complainant’s successful marketing of the PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE trademarks, internationally, and online.
Respondent registered the disputed domain name primarily for disrupting the business of Complainant. Given Complainant’s longstanding use of the marks internationally and online, the disputed domain name would be an excellent domain name for an Internet portal providing information related to Complainant’s PMP certification program and exam, including authorized/official products and services and information related to that program and exam. At a minimum, if Complainant had been permitted to register the disputed domain name, users who visit the website at this domain name looking for information about Complainant’s services could be linked/redirected to Complainant’s official website at “www.pmi.org”. In order to disrupt that potential competing business and to further its own interests, Respondent uses the disputed domain name to divert Internet users searching for information regarding the Complainant’s services in the very same industry, from Nigeria, where Complainant had an earlier presence and priority, and, via the Internet, to a global audience that Complainant has served (using its marks and brands) since 1983.
Respondent did not submit a formal response. On April 4, 2017, the Center received various emails sent from an email address at the disputed domain name, reading as follows:
“Good Morning! Please note that there is no domain dispute. The right domain is www.projectmanagementprofessionalinstitute.com. All others are under this domain name. Thanks.
Project Management Professional Institute. PMPI Nigeria.”
“Good morning Sr / Madam,
We are surprised by the attitude of the Project Management Institute (PMI) USA. We have in no way violated any law or infringe on any companies right or property. Note carefully: Our organization is called – PROJECT MANAGEMENT PROFESSIONAL INSTITUTE NIGERIA (PMPI NIGERIA). Which is very different from – PROJECT MANAGEMENT INSTITUTE (PMI).
Our organization domain name / website is – ww.projectmanagementprofessionalinsttitute.com which is very different from the Complainant domain name / website – www.pmi.org.
Please, we are sincerely embarrassed by the continuous harassment by the Complainant on different platform and social media. We hope that the Complainant will focus on her business and stop the intimidation and harassment.
We offer health safety courses and supply chain management courses, which is very different from what the Complainant offer
Please this harassment and intimidation should stop.
We hope to work with and cooperate with the Complainant in future if they our will [SIC] to partner with us.
On April 19, 2017, the Center received a new email, stating,
“Dear Sir / Madam,
We will like to inform you that our establishment operates in Nigeria only where we are duly and legally registered by the Federal Government of Nigeria to train and certify the youths of Nigeria and others in management; safety and supply chain.
We continue to be surprised by the attitude on intimidations and harassment which the Complainant is showing towards us. We are supposed to be encouraged to build responsible, hard working and educated youths for Nigeria that has the largest population of youths in Africa.
If we are encouraged to succeed, it will help curb immigration of Africans to Europe and America, recuce social vices in Nigeria, and restore the hope of the young generation in Nigeria that things can get better.
We need cooperation from international bodies not intimidation and harassment that is being shown by the Complainant. We want to build a bridge not a wall.
(On April 20, 2017, the Center received the same last text for the second time)
On April 21, 2017, the Center received another email, stating:
“Your Message has been received. We will get back to you soonest.
6. Discussion and Findings
A. Preliminary Issue: Pending Action in Lagos, Nigeria
In its amended Complaint, Complainant states that in the Federal High Court in the Lagos Judicial Division, Holden at Lagos, there is a pending action entitled “Project Management Institute, Inc. and PMI Lagos Chapter LTD/GTE v. Project Management Professional Institute (PMPI) LTD/GTE and Corporate Affairs Commission, Suit No. FHC/L/CS 1332/14, and that Respondent is nota party to that litigation. Complainant also states that such litigation primarily deals with other defendants’ registration of certain trade names and seeks the removal of those names from theapplicable Register of Companies. Complainant notes that the entity “ProjectManagement Professional Institute” appears to be utilizing the disputed domain name. Lastly, Complainant states, “Because Respondent may be related to the purported “ProjectManagement Professional Institute,” for purposes of candor, Complainant wantedto make the panel aware of the existence of this litigation.”
In this regard, the Panel notes that the registrant of the disputed domain name is “Promise Oghoghoiye”, and that the registrant’s organization is “Repulb Communications Inc.”, not any of the defendants in said litigation. Moreover, the disputed domain name is not the subject of the pending litigation. Accordingly, the Panel finds that the above litigation has no bearing in the present proceeding and proceeds to issue a decision on the merits.
B. Identical or Confusingly Similar
Complainant has submitted printouts of registration certificates of various marks, inter alia, the PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE. Thus, Complainant has satisfied the Panel that it has rights in such marks.
The Panel notes that the disputed domain name incorporates the first mark in its entirety, adding the term “institute”, which is the last term in the second mark. The Panel does not believe that, as contended in the email dated April 17, 2017, sent from an address at the disputed domain name, this name is very different from Complainant’s mark PROJECT MANAGEMENT INSTITUTE (PMI). In the opinion of the Panel, this combination is confusingly similar to Complainant’s marks. See Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761 (“That the domain names are a combination of two marks does not mean that the Policy cannot be applied, cf. WIPO Case No. D2000-0135 <maersksealand.com> et al”). See also Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro, supra).
Lastly, the addition of the gTLD “.com” does nothing to distinguish the disputed domain name from the combination of Complainant`s marks. The first element of the Policy is thus met.
C. Rights or Legitimate Interests
The Panel notes that according to the WhoIs relevant data, the registrant of the disputed domain name is “Promise Oghoghoiye”, while the registrant’s organization is “Repulb Communications Inc”. There is no evidence whatsoever that Respondent is known – commonly or otherwise – by the disputed domain name. Therefore, the Panel agrees with Complainant that Policy paragraph 4(c)(ii) is not applicable. This conclusion is unaltered by the fact that there appears to exist an entity called “Project Management Professional Institute Nigeria (PMPI Nigeria)”. In fact, as found above, the disputed domain name is confusingly similar to the PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE widely known marks of Complainant. Also, in the emails received by the Center there is no claim that the holder of registration of the disputed domain name is PMPI Nigeria and not “Promise Oghoghoiye”, nor is there any explanation of the relationship that might exist between Respondent and such entity. Moreover, the formation of PMPI Nigeria did not occur until almost three years after the creation date of the disputed domain name. (SeeAnnex 28 to the Complaint).
In the Panel’s opinion, on the website at the disputed domain name there is no bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). It is true that on this website training and other services allegedly related to project management are being offered, which in itself may be legitimate. However, this offering is made under a name confusingly similar to, and in competition with Complainant’s widely known PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT INSTITUTE marks. Clearly, this offering of services is misleadingly diverting consumers presumably looking for Complainant and its training, certification and other services related to project management. Thus, this offering cannot be a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy paragraph 4(c)(iii).
The Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interest in the disputed domain name.
D. Registered and Used in Bad Faith
Complainant has shown that it owns several registrations for service and certification marks that predate the registration of the disputed domain name by several years. See Section 4 above. In addition, the fact that the disputed domain name consists of a combination of Complainant’s widely known service marks suggests that Respondent, more likely than not, knew of, and had Complainant, its services and marks in mind at the time of registering the disputed domain name. Moreover, Complainant had a presence in Nigeria since 1987. In addition, Complainant’s affiliate in Nigeria began operating in Nigeria in 2004. Annex 28 to the Complaint. In the opinion of the Panel, this factor also must have contributed to Respondent’s awareness of Complainant and its mark and services. Together, these facts and circumstances indicate that the registration of the disputed domain name was in bad faith.
The Panel notes that on the website at the disputed domain name training and other services related to project management – and in competition with those offered by Complainant and protected by Complainant’s marks − are being offered while commercially profiting of the confusion of the disputed domain name with Complainant’s marks and services. By using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is a circumstance of registration and use in bad faith of the disputed domain name, pursuant to Policy paragraph 4(b)(iv).
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <projectmanagementprofessionalinstitute.com> be transferred to the Complainant.
Date: May 17, 2017