WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Society for Human Resource Management v. Domain Privacy Guard Sociedad Anónima Ltd Domain Admin

Case No. D2019-1200

1. The Parties

The Complainant is Society for Human Resource Management, United States of America (“United States” or “US”), represented by Gavin Law Offices, PLC, United States.

The Respondent is Domain Privacy Guard Sociedad Anónima Ltd Domain Admin, Panama.

2. The Domain Name and Registrar

The Disputed Domain Name, <shrmcerification.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 May 24, 2019. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

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 the Respondent of the Complaint, and the proceedings commenced on May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.

The Center appointed David Stone as the sole panelist in this matter on June 28, 2019. 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

The Complainant is one of the world’s largest human resources professional societies, representing over 300,000 members in over 165 countries. It has 575 affiliated chapters within the United States, and has subsidiary offices in China, India, and the United Arab Emirates.

The Complainant owns US federal trade mark registrations in connection with a wide variety of marks, a relevant selection of which (the “Marks”) is as follows.

- SHRM: registration number 168891, registered on December 17, 1991 in Nice class 42;

- SHRM (device): registration number 3554541, registered on December 30, 2008 in Nice class 9;

- SHRM (device): registration number 3557975, registered on January 6, 2009 in Nice class 16;

- SHRM (device): registration number 3651545, registered on July 7, 2009 in Nice class 42;

- SHRM SOCIETY FOR HUMAN RESOURCE MANAGEMENT (device): registration number 3669687, registered on August 18, 2009 in Nice class 42;

- SHRM-CP (certification): registration number 4837711, registered on October 20, 2015 in US class B;

- SHRM-SCP (certification): registration number 48477057, registered on November 3, 2015 in US class B;

- SHRM CERTIFIED PROFESSIONAL (certification): registration number 4852106, registered on November 10, 2015 in US class B; and

- SHRM SENIOR CERITIFIED PROFESSIONAL (certification): registration number 4852107, registered on November 10, 2015 in US class B.

The Marks identify a wide variety of human resources management goods and services. These include the Complainant’s certification programmes, SHRM CERTIFIED PROFESSIONAL (SHRM-CP) and SHRM SENIOR CERTIFIED PROFESSIONAL (SHRM-SCP), which are accredited by The Buros Center for Testing. Only professionals with specific educational and work experience are eligible to earn either credential. So far, nearly 100,000 professionals have been certified by the Complainant.

The Complainant has registered many domain names that incorporate the Marks, including <shrm.org>, <shrmcertification.org>, <shrmcertified.org>, <shrmcertifiedprofessional.org> and <shrmcert.org>. The Complainant’s website at “www.shrm.org” has been in operation since May 1996. The other listed domain names redirect users to the sections of the Complainant’s webpage featuring information about its certification programmes.

The Disputed Domain Name was registered on August 3, 2016 and resolves to a page displaying pay‑per‑click links.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its registration and use of the Marks, for almost 30 years in the case of SHRM, is evidence of the Complainant’s long-standing rights in the Marks in the provision of human resources management services and human resources accreditation services. In particular, the Complainant’s ownership of the Marks means that only it may confirm that an individual has met the requisite eligibility requirements and has demonstrated a sufficiently high level of knowledge and competency in the field of human resources management to achieve accreditation. The Complainant believes the Marks are therefore renowned in the human resources industry.

The Complainant contends that the Disputed Domain Name is confusingly similar to the Marks. The entirety of the mark SHRM, which is the dominant feature of the other Marks, is contained in the Disputed Domain Name, and the renown of the Marks is such that any use of SHRM in connection with goods and services related to human resources management will result in confusion. The presence of the descriptive word “cerification”, a minor misspelling of “certification”, does not serve to distinguish the Disputed Doman Name but instead increases the likelihood of confusion because it identifies the services offered by the Complainant. This misspelling is an example of typo-squatting, which the Complainant says results in confusing similarity, in particular by comparison with the Complainant’s registered domain name <shrmcertification.org>. The similarity between the Disputed Domain Name and the Marks is not affected by the presence of the Top-Level Domain (“TLD”) “.org”, which is ignored in this assessment.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name and is not authorized by the Complainant to use the Disputed Domain Name. Nor is it associated with the Complainant in any other way. Registration of the Disputed Domain Name does not alone suffice to establish rights or interests in it. The Respondent is using it to host a parking page containing advertising links to competitors of the Complainant, with the result that Internet users misspelling the Complainant’s domain name <shrmcertification.org> will be diverted to the Complainant’s competitors. The Respondent is therefore unjustly capitalizing on the value of the Marks. In addition, the website to which the Disputed Domain Name resolves indicates that it is for sale for USD 2,052, which probably exceeds the Respondent’s out-of-pocket costs in registering it. The Respondent is therefore not making a bona fide offering of goods or services using the Disputed Domain Name, nor making legitimate noncommercial or fair use of it.

The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith, on the following bases.

1. There is no, and has never been any, agreement or communication between the Complainant and the Respondent regarding the latter’s use of the Disputed Domain Name.

2. The Respondent’s use of the distinctive term SHRM, which features in all of the Marks, is evidence that the Complainant’s customers are being targeted with the intent to divert them to competing websites. This results in advertising or other revenue for the Respondent or a third party, lost sales and reputational damage for the Complainant, and confusion and exploitation of the Complainant’s customers.

3. The close similarity between “cerification” and “certification” is clear evidence of typo-squatting designed to divert Internet users to the Respondent’s website.

4. A web search for “SHRM” or “SHRM certification” would have revealed to the Respondent the existence of the Complainant’s websites. This indicates that the Respondent failed to make reasonable or good-faith efforts to avoid registering a confusingly similar domain name. This notwithstanding, the Marks are so well-known that it is highly unlikely the Respondent was unaware of them when it registered the Disputed Domain Name.

5. The Respondent has registered the Disputed Domain Name with the intent to sell it, capitalizing on the Complainant’s reputation and goodwill. The associated website includes a prominent banner linking to a sale page and contains no evidence that the Respondent is making fair use of the website in any other way.

6. The Respondent has concealed its identity. This does not in itself constitute bad faith, but is a contributing factor where other evidence, such as that set out above, points to this conclusion. The privacy service used by the Respondent has been named in a number of previous UDRP disputes where there was a finding of bad-faith registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established rights in the Marks and that the element “SHRM”, which appears in all of them, is distinctive in the context of human resources management and accreditation. The Disputed Domain Name comprises the terms “shrm” and “cerification” along with the TLD “.org”. The fact that the first of these exactly matches the distinctive element while the second is clearly a misspelled descriptive term suffices to render the Disputed Domain Name confusingly similar to the Marks. See RapidShare AG, Christian Schmid v. Protected Domain Services/Dmytro Gerasymenko, WIPO Case No. D2010-1071; Group Kaitu, LLC and Darkside Productions, Inc. v. Savy Women, Inc., WIPO Case No. D2005-0675.

The addition of the misspelled descriptive term “cerification” does not prevent a finding of confusing similarity. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “[w] here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements Finally, it is well-established that the TLD is ignored in the assessment of confusing similarity. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Marks and that the condition in paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) as an individual, business or other organisation, the Respondent has been commonly known by the Disputed Domain Name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Depending on the circumstances, it is not fair use to attract Internet users to a website by using the trade marks of a third party. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413. Much less it is fair use to do so in order to generate revenue by advertising the services of the complainant’s competitors (while providing no other apparent bona fide service) – this must qualify as abusive cybersquatting. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. On the evidence of the Complainant, the Respondent has engaged in this behaviour despite having no authorisation from the Complainant to use the Marks and no justification on the basis of how it is commonly known. The onus is on the Respondent to rebut this case (see the WIPO Overview 3.0, section 2.1), and as there has been no attempt to do so the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

The extremely close similarity between the Disputed Domain Name and the Complainant’s domain name <shrmcertification.org>, and the use to which the Respondent’s website is being put, point clearly to an attempt by the Respondent to divert Internet traffic for commercial gain. Given the reputation of the mark SHRM in the provision of human resources management and accreditation services, and absent any explanation from the Respondent, it is not plausible that the Respondent, in providing the specific advertising links that appear on its website, was not aware of the Marks (or at least SHRM) and the Complainant’s business. Such use is in bad faith even where the advertisements were automatically generated without the Respondent’s involvement. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079.

This is a case of typo-squatting, which indicates bad faith in that it both draws inattentive Internet users away from the website they are seeking and, which is related but independent, diverts them towards a source of revenue generation for the Respondent. See Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043. The Panel therefore holds that the condition in paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

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, <shrmcerification.org>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: July 11, 2019