16th Jan 2007
National Arbitration Forum
The Project Management Institute, Inc. v. Kirk Shafonsky
Claim Number: FA0610000820322
Complainant is The Project Management Institute, Inc. (“Complainant”), represented by Brian C. Roche, of Roche Pia LLC, Two Corporate Drive, Suite 234, Shelton, CT 06484.Respondent is Kirk Shafonsky (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pmi.com>, registered with Go Daddy Software, Inc.
The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable James A. Carmody, Prof. David E. Sorkin, Flip Petillion as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2006.
On October 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <pmi.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 15, 2006.
A timely Additional Submission was received and determined to be complete on December 20, 2006.
An Additional Reply was received on December 22, 2006.
On December 22, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable James A. Carmody, Prof. David E. Sorkin, Flip Petillion as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The <pmi.com> domain name is confusingly similar to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <pmi.com> domain name.
3. Respondent has registered and used the <pmi.com> domain name in bad faith.
Respondent requests the Panel to deny Complainant’s request as to the <pmi.org> domain name.
Complainant registered with the United States Patent and Trademark Office and owns the trademark PMI.
Complainant has operated under the service mark PMI since at least 1969.The name PMI is used to refer to Complainant and/or its products and services in the project management industry.
Complainant uses the Internet to market its certification tests and related services.
Complainant is of the opinion that its trademark is unique and well recognized and that the use by Respondent of the service mark is an obvious attempt to sell products that compete with and/or relate to Complainant’s products and services within the industry, and/or to obtain advertising revenue from the same.
Respondent is a licensed real estate broker and the abbreviation PMI is used as a common real estate industry term meaning “Private Mortgage Insurance.”
This is why Respondent acquired the <pmi.com> domain name.
According to Respondent, Complainant does not have exclusive rights to this three-letter combination which has become a common term.Therefore, the first who registered such a domain name has a legitimate interest in it, provided that it was not registered with the purpose of selling to Complainant, disrupting its business, preventing it from acquiring a domain name incorporating its mark, or to confuse users.
Respondent says that he had no knowledge whatsoever of Complainant when he registered the <pmi.com> domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant asserts rights in the PMI mark through trademark registration with the United States Patent and Trademark Office (“USPTO”).Complainant has used the PMI mark in commerce since 1971, and has submitted evidence of its trademark registration (Reg. No. 2,152,599 issued April 21, 1998).The Panel finds that Complainant has established rights in the PMI mark through registration with the USPTO.See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”).
Complainant contends that Respondent’s <pmi.com> domain name is identical to Complainant’s PMI mark.Previous panels have found that the addition of a generic top-level domain name (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty’s Farm L.L.C. vs. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), (“For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix “.com.”).
The Panel finds that it is quite obvious that the <pmi.com> domain name is identical to Complainant’s PMI mark.
Respondent neither confirms nor denies that the <pmi.com> domain name is identical or confusingly similar to Complainant’s PMI mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Furthermore, the Panel finds that Respondent has rights or legitimate interests in the disputed domain name because it is using the domain name to make a bona fide offering of services pursuant to Policy ¶ 4(c)(i), in connection with its real estate services.See Funskool (India) Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000) (finding a bona fide use of the <funskool.com> domain name where the respondent submitted an article that indicated that the respondent had been using the similar <funschool.com> domain name to resolve to a popular gaming website for school children prior to notice of the dispute); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name).
The Panel also finds that as the disputed domain name is comprised only of three letters, which in theory may stand for several different things, with the addition of a gTLD, Respondent may have rights or legitimate interests in the disputed domain name.PMI is a common abbreviation in the real estate industry for “private mortgage insurance.”See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.”).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Registration and Use in Bad Faith
As the Panel finds that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel concludes that Respondent did not register the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Reverse Domain name Hijacking
Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends Complainant knew or should have known it could not satisfy either or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii).
The Panel finds that such an assertion is without merit in this case, and that Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <pmi.com> domain name through its registration with the USPTO of the PMI mark, and as such, Complainant’s filing is not an abuse of the UDRP Policy.Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim.See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001) (“[G]iven the Complainant’s trade mark rights, the similarity of the Domain Name to Complainant’s trade mark and the failure (albeit for good reason) of the Respondent to respond to the Complainant’s letters, the Panel does not believe that this complaint constitutes an abuse of the Policy.”); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable James A. Carmody, Prof. David E. Sorkin, Flip Petillion, Panelists
Dated: January 16, 2007
National Arbitration Forum