WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Project Management Institute, Inc v. Samuel Ugbechie
Case No. D2017-0600
1. The Parties
Complainant is Project Management Institute, Inc of Newtown Square, Pennsylvania, United States of America ("United States"), represented by Roche Pia LLC, United States.
Respondent is Samuel Ugbechie of Benin, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <ipmponline.org> is registered with GoDaddy.com, LLC (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 24, 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.
The Center verified that 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 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 28, 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, Project Management Institute, Inc, is a project management trade association that represents over 475,000 members in more than 150 countries.
Complainant owns, inter alia, the following trademark registrations:
United States Certification Mark: PMP, Reg. No. 2180481, Reg. Date August 11, 1998, filed on June 30, 1997, for project management, in Class B.
United States Service Mark: PMP, Reg. No. 3748623, Reg. Date February 16, 2010, filed on Mach 2, 2009, for testing to determine professional competency, etc., in the field of project management, in Class 35.
United States Service Mark: PROJECT MANAGEMENT PROFESSIONAL, Reg. No. 2889062, Reg. Date September 28, 2004, filed on May 6, 2003, for educational testing and evaluation services for the purpose of certifying individuals in the field of project management, in Class 41.
United States Service Mark: PROJECT MANAGEMENT PROFESSIONAL (PMP), Reg. No. 3614943, Reg. Date May 5, 2009, filed on May 12, 2008, for testing to determine professional competency, etc., in the field of project management, in class 35.
The disputed domain name was registered on June 5, 2011. It resolves to a website, in which Respondent offers services for sale in Complainant's business field, namely project management.
At the time of the registration of the disputed domain name, the Complainant owned the above mentioned trademark registrations.
5. Parties' Contentions
Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. Despite the secondary meaning and recognition attributed to the PMP mark in the project management industry, Respondent has chosen to utilize in the disputed domain name that mark (combined with the generic descriptors "i" and "online". Other UDRP panels have found that the addition of generic or descriptive words to Complainant's registered marks still warranted a finding of confusion, especially when used to refer to Complainant's products and / or services. See Project Management Institute v. CMN.com, WIPO Case No. D2013-2035(finding that the domain name was confusingly similar in that it incorporated the PMP mark in its entirety and merely added the word "certification" which merely enhanced the existence of confusion). See also Project Management Institute, Inc. v. david david/song yy, et al., WIPO Case No. D2010-1233.
Respondent has no rights or legitimate interests in respect of the disputed domain name. PMP is the well-known mark of Complainant, with a strong secondary meaning in the project management industry. Respondent is not commonly known as "PMP". Respondent is "Samuel Ugbechie", not "iPMPonline". On the underlying website, there is some indication that the operators contend to be the "International Project Management Professionals" or "IPMP".
Even if Respondent purports to be the "International Project Management Professionals" or "IPMP", that name, itself, infringes Complainant's registered marks 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 Nigeria as early as 2004. (SeeDeclaration of Douglas Murray ("Decl.") at paragraph 6 of the Annex 13 to the Complaint). Complainant has also registered at least 12 trademarks related to its PMP and PROJECT MANAGEMENT PROFESSIONAL brands in Nigeria since 2012. Accordingly, even if Respondent Samuel Ugbechie were using the names "International Project Management Professionals" or "IPMP," those names violate United States law (for conduct affecting United States commerce), and are in contravention of the rights of Complainant under Nigerian law, and as such should be deemed a sham use under the Policy.
Panels have confirmed that cybersquatters may not insulate their conduct by creating companies with infringing names to bootstrap their conduct. See, e.g., Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051. The panel inferred that, at best, "respondent … chose [ ] its corporate name as a way of supporting and defending the registration and acquisition of the disputed domain names" and held that, "[u]nder these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply". The panel concluded that "the respondent's use of the disputed domain names was intended misleadingly to divert Internet users from the complainant to the respondent and that, although the services it offers on its website are genuine services, its use of the disputed domain name is not legitimate" and therefore held that "the respondent has no rights or legitimate interest in the disputed domain name". See id. See also Allstate Insurance Company v. Customer ID 12313697771467 / Global Access, domain admin, WIPO Case No. D2010-2164, (citing Yahoo and holding that the respondent in that matter had no rights to or legitimate interests in the name "ALLSTATE", relying, in part, on the fact that "Respondent has no prior legal or other relationship with Complainant" and that "Complainant has not given Respondent permission, directly or otherwise, to register or use the disputed domain name"; noting that the respondent's interests were "directed at an illegitimate purpose, to confuse Internet users into using a confusing similarly domain name to Complainant's mark in order to redirect those users to Respondent's website that includes web links to web pages that are intended to and likely have the effect of undermining Complainant's business").
The disputed domain name was registered and is being used in bad faith. Respondent has prevented Complainant from utilizing its PMP trademark in connection with the generic terms "i" and "online" that are common for Internet sites on a popular Top-Level Domain, namely ".org". The fact that Respondent registered and operates a domain name comprised of the PMP mark and its generic "online" (or "international") descriptors demonstrates Respondent's knowledge of the PMP mark, as legitimately used by Complainant, and therefore bad faith. This is especially true given the activities on the website at the disputed domain name and the legitimate "online" and "international" uses of the PMP mark by Complainant. In an analogous case, a panel transferred to Complainant a confusingly similar domain name that attempted to use the letter "i" in conjunction with its trademark. Project Management Institute, Inc. v. david david / song yy also known as Yushan Jiang / Huaya International Consulting Co., WIPO Case No. D2010-1233.
In the instant case, Complainant had federally registered and had long been using the mark at issue prior to Respondent's creation of the disputed domain name. Respondent is on constructive notice by virtue of Complainant's United States and foreign registrations, and de facto notice based on Complainant's operations in Nigeria since at least2004. It is not reasonable to believe that Respondent could operate in the "project management" industry without being on notice of the world's largest project management association, Complainant.
Respondent was aware of Complainant's mark at the time the disputed domain name was registered in 2011. PMP mark has been in use as far back as 1983, and the addition of the terms "i" and "online" to "PMP" only confirms the appreciation for Complainant's rights at the time the disputed domain name was created. Respondent is merely characterizing the forum / medium – the Internet – which is obviously "online" – and adding it to Complainant's well-established mark. Complainant is an international organization with a substantial Internet presence. Respondent's inclusion of the letter "i" to the domain name obviously seeks to capitalize on one or both of those facts. Upon information and belief, 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 PMP mark, internationally, and online / on the Internet.
Respondent has apparently registered the disputed domain name primarily for disrupting the business of Complainant. At a minimum, if Complainant had been permitted to register the disputed domain name, users who visit the disputed domain name looking for information about the PMP program and exam could be linked / redirected to Complainant's official website at <pmi.org> or to the website operated by its authorized Nigerian affiliate at <pminigeria.org>. However, 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 PMP program / exam to its competing certification services in the very same industry, (a) from a geographic territory (Nigeria) in which Complainant had an earlier presence and priority, and, (b) via the Internet, to a global audience that Complainant has served (using its marks and brands) since 1983.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Preliminary Issue: Pending Litigation
In its Complaint, Complainant stated that there is an action pending before the Federal High Court in the Lagos Judicial Division, Holden at Lagos, entitled Project Management Institute, Inc. and PMI Nigeria Chapter LTD/GTE v. Chartered Project Management Institute of Nigeria LTD/DTE, International Project Management Professionals Limited and Corporate Affairs Division, Suit No. FHC/L/CS 1333/14. In this regard, Complainant stated, for purposes of candor in this proceeding, that Respondent is not a party to said litigation, that the Statement of Claim in the litigation makes no reference to the disputed domain name, that the litigation primarily deals with the other defendants' registration of certain trade names, and seeks the removal of those names from the applicable Register of Companies.
The Panel notes that the registrant of the disputed domain name is "Samuel Ugbechie", not any of the defendants in the said litigation.1 Moreover, the disputed domain name is not the subject of the pending litigation. Accordingly, the Panel finds that the above litigation has no bearing on the present proceeding and proceeds to issue a decision on the merits.
B. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it has trademark rights in the PMP mark. See Section 4 above.
The Panel notes that the disputed domain name incorporates Complainant's mark PMP, just adding the prefix "i", a descriptive term usually related to the "Internet" or "international", and the suffix "online", another descriptive term meaning "connected to a system or to a computer".2
It is well established that the addition in a domain name of generic, descriptive or geographical terms to a mark generally is inapt to distinguish the domain name from the mark. See "WIPO Overview 2.0", paragraph 1.9. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's PMP marks.
C. Rights or Legitimate Interests
According to the WhoIs data provided by the Registrar, Respondent's name is "Samuel Ugbechie", and there is nothing in the case record indicating that Mr. Ugbechie is known – commonly or otherwise – by the disputed domain name. Thus, Policy paragraph 4(c)(ii) does not apply.
Complainant contends that even if Respondent purports to be the "International Project Management Professionals" or "IPMP", that name infringes Complainant's registered marks PROJECT MANAGEMENT PROFESSIONAL and PROJECT MANAGEMENT PROFESSIONAL (PMP), and therefore such use by Respondent is not legitimate. Complainant was using its marks in Nigeria as early as 2004. (See Declaration of Douglas Murray ("Decl.") at paragraph 6 of the Annex 13 to the Complaint). Complainant has also registered at least 12 trademarks related to its PMP and PROJECT MANAGEMENT PROFESSIONAL brands in Nigeria since 2012.
The Panel notes that in the section "About IPMP" of the website at the disputed domain name" it is stated:
"About Us. Founded in 2009, the International Project Management Professionals (IPMP) is a leading provider of human resource training for the project management profession. We focus primarily on the Africa Region, but we also conduct courses in other parts of the world."
The Panel does not believe that the name of the entity providing the services be in itself a legitimate basis for Respondent to register the disputed domain name. First, Respondent is neither "IPMP" nor "IPMPonline.com", but "Samuel Ugbechie". Respondent has failed to come forward claiming any interest or providing any explanation as to how it arrived at the disputed domain name. Second, the incorporation of a "IPMP" entity in Nigeria in and by itself does not mean that those behind the entity were unaware of Complainant, its services and marks at the time of choosing the corporate name, particularly in view of the renown of Complainant, its services and marks, and of Complainant's prior presence in Nigeria through a local affiliate. See Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (("However lawful that incorporation may have been (as to which the panel is not in a position to express an opinion), it is beyond credulity that the respondent's corporate name was chosen in the absence of knowledge of the complainant's famous trademark.") The panel in that case found that those responsible for the incorporation of the respondent as having chosen its corporate name as a way of supporting and defending the registration and acquisition of the domain names in issue. Under those circumstances, in the context of the Policy, the panel in Yahoo found that the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy could not apply.
The Panel notes that the offering for profit of courses, training and certification services on the website at the disputed domain name is made under a name imitating the widely known PMP marks of Complainant, and without Complainant's authorization or consent. The Panel finds that such use is neither a bona fide use of the pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers. The Panel concludes that Complainant has made out its case that Respondent lacks rights and legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Complainant has shown that the registration of its marks predates the registration of the disputed domain name by several years. See Section 4 above. In addition, Complainant has shown that its marks and training, education and certification services are well-known in the project management industry. Moreover, Complainant's chapter / affiliate in Nigeria, PMI Lagos Nigeria Chapter Ltd / Gte, began operations in Nigeria in 2004, and signed a Charter Agreement in August 2005. (See Declaration attached to the Complaint, at paragpraph 7.) The Panel concludes that Respondent must have known of, and had Complainant, its PMP marks and services in mind at the time of registering the disputed domain name.
As seen above, on the website at the disputed domain name courses, training and certification services are being offered for profit, in competition with Complainant and / or Complainant's affiliates or partners. The Panel concludes that Respondent, by using the domain name in such manner, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
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 <ipmponline.org> be transferred to Complainant.
Date: May 17, 2017
1 Rules paragraph 1: "Respondent means the holder of a domain-name registration against which a complaint is initiated."
2 According to the Merriam-Webster's Dictionary, online means "connected to, served by, or available through a system and especially a computer or telecommunications system (such as the Internet)." See https://www.merriam-webster.com/dictionary/online, visited on May 16, 2017.