Westmore · UDRP DecisionPmiukraine.org
The Panel ordered transfer of <pmiukraine.org> after finding it confusingly similar to the Complainant’s PMI mark, finding no rights or legitimate interests despite the domain’s use for a purported machinery business, and finding bad-faith registration and use. The Panel considered it significant that the Complainant’s Ukrainian chapter had previously used the Domain Name before it inadvertently lapsed and found that the Respondent registered it to prevent the Complainant from reflecting its mark in the Domain Name and to disrupt its business.
The timeline behind pmiukraine.org
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind pmiukraine.org — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates the heightened significance of registering a domain previously used by a complainant’s authorized local chapter after an inadvertent lapse. The Panel treated the exact prior use, the continuing possibility of legacy links and user bookmarks, and unrelated replicated website content as mutually reinforcing evidence of targeting, lack of legitimate interests, patterned conduct, and disruption.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Project Management Institute, Inc. v. Privacy Protect, LLC / Herr Thomas Henk Case No. D2018-1874 1. The Parties The Complainant is Project Management Institute, Inc. of Newtown Square, Pennsylvania, United States of America (“USA”), represented by Roche Pia LLC, USA. The Respondent is Privacy Protect, LLC of Burlington, Massachusetts, USA / Herr Thomas Henk of Wilhemshaven, Germany. 2. The Domain Name and Registrar The disputed domain name <pmiukraine.org> (the “Domain Name”) 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 August 16, 2018, identifying the Respondent as Privacy Protect, LLC. The Center sent its request for registrar verification to the Registrar on August 17, 2018. The Registrar replied on August 18, 2018, stating that the named Respondent is not the current registrant of the Domain Name, identifying the registrant as Herr Thomas Henk, and providing the full contact details held by it in respect of the Domain Name. The Registrar also confirmed that it received a copy of the Complaint, that the Domain Name is registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the Domain Name, that the Domain Name expires on December 21, 2018, that a lock has been applied to the Domain Name and will remain in place during this proceeding, that English was used to inform the registrant of the registration agreement, and that the Domain Name was registered on December 21, 2017 The Center invited the Complainant on August 28, 2018 to amend the Complaint in the light of the information provided by the Registrar identifying the registrant. The Complainant submitted an Amended Complaint on August 29, 2018, identifying the Respondent as Herr Thomas Henk. The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was September 27, 2018. The Respondent did not submit any response by this date. Accordingly, the Center notified the Respondent’s default on September 28, 2018. The Center appointed Jonathan Turner as the sole panelist in this matter on October 2, 2018. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. On October 17, 2018, noting an administrative oversight regarding notification of the Complaint to the Respondent at one of the available email addresses, the Center sent to that address the Complaint, the amended Complaint, and the Panel’s Procedural Order No. 1 inviting the Respondent to indicate by October 22, 2018 whether it wished to participate in the proceeding. The Respondent still did not submit any response by this date. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background The Complainant is an international trade association of project managers with some 2.9 million members working in nearly every country in the world. It has operated under a logo comprising a representation of the letters “PMI” since 1969 and has registered this logo as a trademark in the USA and 53 other countries, including in the Ukraine on June 21, 2011 pursuant to international registration no. 1,040,007, registered on August 26, 2009. The Complainant has also registered PMI as a word mark in the USA, for example under no. 2,152,599 on April 21, 1998 pursuant to an application filed on June 30, 1997. The Complainant has had a chapter in the Ukraine since 2004 operating under the name “PMI Kyiv Chapter”. The Complainant authorized this chapter to register the Domain Name in about 2013. The chapter used the Domain Name thereafter until it was allowed inadvertently to lapse. The Domain Name is now directed to a website purporting to be of SKD Machinery Technology Co. LTD, which is said to be a “large-scale leading enterprise in the design, manufacture and sale of large crushing and screening and industrial shredding equipment.” A number of other domain names incorporating established marks of other parties are directed to websites with identical content. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its registered marks. The Complainant considers that the addition of the descriptive word “Ukraine” does not avoid confusion. The Complainant submits that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant draws attention to the lack of any connection between the Domain Name and either the name of the Respondent or the business promoted by the website to which the Domain Name has been directed. The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has prevented it from continuing to use its mark PMI in conjunction with the descriptor “Ukraine” and a popular top level domain for non-profit organisations in the form of the Domain Name used previously by its Ukraine chapter. The Complainant further contends that the Respondent registered the Domain Name primarily for the purpose of disrupting its business and has engaged in a pattern of such conduct. The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent As stated above, the Respondent did not reply to the Complainant’s contentions or to the Panel’s Procedural Order No. 1. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the word mark PMI. The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the country name “Ukraine” and the generic Top-Level Domain suffix, “.org”. Many Internet users would assume that the Domain Name locates a website relating to the activities of the Complainant in the Ukraine. The first element of the UDRP is satisfied. B. Rights or Legitimate Interests The Panel finds on the balance of probabilities that the Respondent has not made any use or preparations to use the Domain Name for a bona fide offering of goods or services prior to notice of the dispute. The Panel notes that there is no connection between the Domain Name and the business promoted on the website now located by it and that the same business is promoted by the same content on websites located by domain names corresponding to other established marks. Nor is there any apparent connection between this business and the Respondent. In these circumstances, it seems likely that the Responding is using this content to give a false impression that he is making a bona fide offering of goods and services without actually using the Domain Name for any such offering. It is evident that the Respondent is not commonly known by the Domain Name and he does not appear to be making any legitimate noncommercial or fair use of it. Having reviewed all of the evidence, the Panel is satisfied that there is no basis on which the Respondent can claim any rights or legitimate interests in the Domain Name. The second element of the UDRP is satisfied. C. Registered and Used in Bad Faith The Panel is satisfied on the undisputed evidence that the Respondent registered the Domain Name in order to prevent the Complainant reflecting its PMI mark in the Domain Name which corresponds to the mark, in that it comprises the mark and the name of a country together with an appropriate top level domain suffix. The prevention in this case is unusually significant, in that the Domain Name was previously used by a chapter of the Complainant, with the consequence that this Domain Name may well be recorded in links on various websites and “favourites” of Internet users. Furthermore, in view of the past use of the Domain Name by the Complainant, it seems likely that the Respondent’s object in registering the Domain Name was to deny its availability to the Complainant, except perhaps on payment. The Panel is also satisfied on the balance of probabilities that the Respondent has engaged in a pattern of such conduct. Although there is no direct evidence that the various domain names locating the purported website of SKD Machinery Technology Co. LTD were registered by the same underlying registrant, it seems likely that it was the same person. For similar reasons, the Panel considers that the Domain Name was registered by the Respondent primarily for the purpose of disrupting the Complainant’s business. In accordance with paragraphs 4(b)(ii) and 4(b)(iii) of the UDRP, these circumstances constitute evidence of registration and use of the Domain Name in bad faith. There is no countervailing evidence displacing this presumption. The Panel therefore finds that the Domain Name was registered and is being used in bad faith. All three elements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant. 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 Domain Name, <pmiukraine.org>, be transferred to the Complainant. Jonathan Turner Sole Panelist Date: October 23, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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