RMC Publications, Inc. v.
Jocob Steve
Claim Number: FA0710001095188
PARTIES
Complainant is RMC Publications, Inc. (“Complainant”), represented by Rita O'Keeffe, of Leonard, Street and Deinard Professional Association,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rmcprojects.com>, registered with Direct
Information Pvt Ltd d/b/a Publicdomainregistry, created on
August 2, 2007 (the “Disputed Domain Name”).
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 18, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 18, 2007.
On October 19, 2007, Direct Information Pvt Ltd d/b/a
Publicdomainregistry confirmed by e-mail to the National Arbitration
Forum that the <rmcprojects.com>
domain name is registered with Direct
Information Pvt Ltd d/b/a Publicdomainregistry and that the Respondent
is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry
has verified that Respondent is bound by the Direct
Information Pvt Ltd d/b/a Publicdomainregistry 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 30, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 19, 2007 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 postmaster@rmcprojects.com by
e-mail.
A timely Response was received and determined to be complete on November 19, 2007.
On November 27, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is the assignee of "all right, title, and interest
in and to..." a number of United States trademark registrations, including
the following:
1. "RMC PROJECT MANAGEMENT”
in International Class 41 for: "Educational services, namely, conducting
classes, workshops, and conferences in the field of project management and
distributing course materials in connection therewith" (registered
November 30, 2004);
2. "RMC PROJECT MANAGEMENT"
in International Class 16 for: "Educational publications, namely, instructional
material in a training manuals in the field of project management"
(registered November 30, 2004); and
3. “RMC PROJECT MANAGEMENT"
in International Class 9 for: "Educational software and manuals sold therewith
featuring instruction and training in the field of project management”
(registered December 7, 2004) (hereinafter individually and collectively “Complainant's
Trademarks”).
Copies of relevant reports from the United States Patent and Trademark
Office Trademark Electronic Searched System are provided as exhibits, and a
copy of the assignment agreement is attached as an exhibit.
The Complainant is the owner of the following domain name:
<rmcproject.com>. This domain name
has been used in association with the complainant's website since 2002.
The Complainant's website describes Complainant's business as follows:
"About RMC Project Management: Founded in 1991 by Rita Mulcahy,
RMC Project Management is the innovator in project management training and
professional development. Over the last
15 years, tens of thousands of project managers in over 40 countries have
utilized one of our professional resources, classes or e-Learning courses to
expand their project management knowledge and further their careers. Today we offer a wide range of innovative
classes and products for beginning and advanced project managers -- as well as
those seeking a project management certification.
‘When people ask what makes RMC different than other companies, our
answer is threefold: 1) we minimize the number of hours needed to learn, 2) we
maximize knowledge delivery and retention in everything we do, and 3) we
communicate knowledge that is immediately comparable by project managers in the
real-world, a simple, yet powerful philosophy.”
A copy of a page from the Complainant’s website is attached as an
exhibit.
The Disputed Domain Name directs to a website, and copy of a page from
that website is attached as an exhibit.
Some of the links appearing on this page are:
"Are you interested in:
Project Management Publications
Project Management Workshop
Pmp Project Management
Project management tips
‘Rmc Project Management
Pmp Classes
Pmp Courses
Pmp Training
Pmp Exam
Pmp Prep
Project Management Solutions
Project Management Tools
‘Pmp Certification Courses
Pmp Certification Training
Pmp Exam Sample Questions
Project Management Books
‘About us: We empower individuals, organizations and businesses by
providing unique up to date information.
Our dedicated team of professionals strives to gather the most relevant
content for our users.
‘We specialize in Rmc Project Management, Pmp Classes, Pmp Courses, Pmp
Training, PMP exam and an array of other products and services.
‘Pmp Study
Rita Pmp
Capm
PMP exam prep Rita Mulcahy
Flash Cards”
This website is nothing more than a landing page populated with links
to other websites related to the field of project management. Clicking to these links leads to additional
pages of links many of which are actually to project management goods and
services which are competitive with Complainant’s goods and services. Respondent offers no project management goods
and services of its own.
Confusing Similarity:
The Disputed Domain Name consists of the dominant portion of the
Complainant's trademarks, “RMC Project,” which constitutes similarity for
purposes of the Policy. Further, the
Disputed Domain Name also includes a typographical error in the inclusion of an
“s,” which constitutes typosquatting.
Rights or Legitimate Interests:
Respondent has no trademark rights in or license to use Complainant's
Trademarks, and as such Respondent has no rights or legitimate interest in the
Disputed Domain Name, which includes Complainant’s Trademarks.
Respondent is not commonly known by the expression “RMC Projects,” and
as such Respondent has no rights or legitimate interests in the Disputed Domain
Name.
Furthermore, there is no evidence that demonstrates Respondent is using
the Disputed Domain Name in connection with a bona fide offering of goods or
services or is making a legitimate noncommercial or fair use of the Disputed
Domain Name. "Respondent's sole
purpose in operating its website is to use complainant's trademarks to
misleadingly divert Internet traffic to its website."
Further still, it may be inferred that Respondent has gained profit
from Internet users being directed to websites that are listed on its website,
and this type of income generating scheme has been found not to be a legitimate
or fair use or bona fide offering of goods or services.
Registration and use in bad faith:
"The Disputed Domain Name should be considered as having been
registered and used by Respondent in bad faith because Respondent attracts
Internet users to its website, for commercial gain, by creating a likelihood of
confusion with Complainant's Trademarks as to the source, sponsorship or
affiliation of Respondent’s website."
Respondents had actual knowledge of complainant trademarks, and
registration with such knowledge constitutes bad faith. This knowledge can be inferred from several
of the links appearing on Respondent’s website such as, "Rmc Project Management,"
Rita PMP", and “Pmp Exam Prep Rita Mulcahy.”
B. Respondent:
Respondent's response consists of the following two sentences: "We
register[ed] <rmcprojects.com> for Regional MCP Projects as we are doing
software development. Currently we are
Microsoft Certified Gold Partner."
FINDINGS
Complainant is the owner of the following trademarks:
1. "RMC PROJECT MANAGEMENT”
in International Class 41 for: "Educational services, namely, conducting
classes, workshops, and conferences in the field of project management and
distributing course materials in connection therewith" (registered
November 30, 2004);
2. "RMC PROJECT
MANAGEMENT" in International Class 16 for: "Educational publications,
namely, instructional material in a training manuals in the field of project
management" (registered November 30, 2004); and
3. “RMC PROJECT MANAGEMENT"
in International Class 9 for: "Educational software and manuals sold
therewith featuring instruction and training in the field of project management”
(registered December 7, 2004).
The Complainant
is the owner of the following domain name: <rmcproject.com>
Respondent registered the Disputed Domain
Name, <rmcprojects.com>, on August 2,
2007.
The Disputed Domain Name directs
traffic to a website operated by Respondent and on which appears the following
link: “Pmp Exam Prep Rita
Mulcahy,” among other links.
Rita Mulcahy was the founder
of Complainant and original owner of Complainant’s Trademarks.
Complainant's is in the
business of training and professional development with respect to the subject
of project management.
The Disputed Domain Name is
confusingly similar to Complainant's Trademarks.
Respondent does not have
rights or legitimate interests in the the Disputed Domain Name.
The Disputed Domain Name was
registered and is being used in bad faith.
DISCUSSION
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.
This element is a threshold consideration
which includes a requirement that a complainant have had trademark rights,
whether registered or common law, prior to a respondent having created a
disputed domain name, and that the disputed domain name be confusingly similar
to the trademarks.
In making this comparison, top-level domains, such as ".com,” are
ignored.
See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD,
whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶
4(a)(i) analysis).
Minor variations are also to be ignored. Such minor variations can be as simple as a single letter. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Further, such
minor variations can include entire words.
See WestJet Air Ctr., Inc. v. W.
Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), where the Panel said:
“Complainant has had exclusive rights to use the mark ‘WESTJET’ for air transportation services and related services for over twenty years.
‘Respondent registered the domain name "westjets.com." This
domain name differs from Complainant’s
‘Thus, the Panel concludes that the domain name is confusingly similar to a mark in which Complainant has rights.”
See also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK);
This
Panel agrees with these cited panels in that a disputed domain name can be
confusingly similar to a trademark even where the domain name does not include
all of the words contained within the trademark. The matter is one of practical application
and whether a panel believes that an Internet user, at the point in time when
the user is inputting a domain name, would likely be confused. The panel focuses primarily on the degree of similarity
between and among alphanumeric characters, the degree of similarity between and
among the connotation of any words used, and on the overall impression of both
the domain name and involved trademarks.
In the instant case, the Disputed Domain Name and
Complainant’s Trademarks are identical in the first two words of each, “RMC
Project,” setting assisde the addition of an “s” in the former which does not
appear in the later. This minor
variation is to be ignored. The Disputed
Domain Name includes the “.com” suffix, which is not included within
Complainant’s Trademarks, but this too is to be ignored. The Disputed Domain Name does not include the
word “management,” but this is a also a minor variation, especially given that
it is the last word in the Complainat’s Trademarks and would tend to attract
less attention. When thusly viewed, the
overall impression of the two is the same.
As such, this Panel finds that the Disputed Domain Name
is confusingly similar to Complainant's Trademarks.
As such, Complainant has established this
threshold element.
This element of the Policy provides, in essence, a safe harbor potentially available to respondents. Under the Policy, a complainant has the burden of proof with respect to this element, as is the case with each of the elements. However, panels have interpreted this burden to be a light one. A complainant is required to make prima facie showing, and then, if accomplished, the burden shifts to the respondent to rebut. See G. D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, Oct. 1, 2002) (holding that where the Complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting the assertion because this information is "uniquely within the knowledge and control of the respondent."); see also AOL v. Gerberg, FA 780200 (Nat. Arb. Forum, Sept. 25, 2006) (“The Complainant must make a prima facia [sic] showing that the Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If the Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).
In the instant case, the Complainant has come
forward with the allegation that the Respondent is not commonly known as
"RMC Projects." Complainant
has come forward with the allegation that Respondent holds no trademark
registrations for any of Complainant’s trademarks and that Respondent has not obtained
from Complainant a license or permission to use any of Complainant’s trademarks. Complainant has come forward with the
allegation that there is no evidence that demonstrates Respondent is using the Disputed
Domain Name in connection with a legitimate noncommercial or fair use. Further, Complainant has come forward with
the allegation that there is no evidence that demonstrates that Respondent is
using the Disputed Domain Name in connection with a bona fide offering of goods
or services.
As such, Complainant has satisfied its burden
of coming forward with a prima facie showing that Respondent has no rights or
legitimate interests in respect of the Disputed Domain Name.
Respondent's response, as noted above, is
that: "We register[ed] rmcprojects.com for regional MCP Projects as we are
doing software development. Currently we
are Microsoft certified Gold Partner.”
This Panel accepts this response by Respondent as an assertion that Respondent
at all times intended to use the Disputed Domain Name in connection with a bona
fide offering of a service, namely software development. However, this response fails to satisfy Respondent’s
burden.
Clearly, such a use does not constitute a
legitimate non-commercial or fair use.
Neither does this establish that Respondent is commonly known by the Disputed
Domain Name.
This use also does not constitute a use in connection with a bona fide
offering of goods and services. Respondent’s
webpage contains the following link, among others: "PMP Exam Prep Rita
Mulcahy." Ms. Rita Mulcahy is Complainant’s
founder and the original owner of Complainant’s trademarks. The only explanation for the appearance of
Ms. Mulcahy’s name on Respondent’s website is that Respondent is attempting to
attract Internet users seeking Ms. Mulcahy’s services, and this can only be for
competitive reasons.
Many Panels have held that the use of an identical or confusingly
similar domain name to compete with a complainant is inconsistent with the
protection of the safe harbor, notwithstanding that the service being offered is
itself otherwise legitimate. See
America Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 12, 2000) (“it would be
unconscionable to find a bona fide offering of services in a Respondent’s
operation of a website using a domain name which is confusingly similar to
Complainant’s mark and for the same business.”);
see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June
20, 2002) (finding that because the VIAGRA mark was clearly well-known at the
time of the Respondent’s registration of the domain name it can be inferred
that the Respondent is attempting to capitalize on the confusing created by the
domain name’s similarity to the mark); see
also MBS Computers Ltd., v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16,
2001) (finding no rights or legitimate interest when the Respondent is using a
domain name identical to the Complainant’s mark and is offering similar
services.).
It is conceivable that Respondent is not
attempting to compete with Complainant, but is rather attempting to advertise
its own services, software development, to potential customers in the project
management field, and the use of Ms. Mulcahy’s name may be a good way to
attract the attention of such potential customers. However, this would also be unpersuasive given
the other links appearing on Respondent’s webpage, which are all related to the
subject of project management and not software development.
As such, Complainant has satisfied this
element of the Policy.
Policy ¶4(b) sets forth four nonexclusive examples of conduct which constitutes registration and use in bad faith, being, briefly: i) circumstances indicating registration primarily for the purpose of selling a domain name registration to the complainant; ii) registration for the purpose of preventing the owner of a trademark from reflecting the mark in the corresponding domain name; iii) registration for the purpose of disrupting the business of a competitor; and iv) intentionally attempting to attract for commercial gain Internet users to your website by creating a likelihood of confusion with the complainant's Mark as to the source, sponsorship, affiliation or endorsement of your website or location of a product or service on your website.
This Panel is not persuaded that respondent's conduct falls within the scope of the first three of these examples. However, this Panel is persuaded that Respondent's conduct does fall within the scope of Policy ¶4(b)(iv).
As is noted above,
it is inconceivable that Respondent’s
website, to which the Disputed Domain Name directs traffic, would include Ms.
Mulcahy’s name without Respondent intentionally attempting to attract Internet
users seeking Ms. Mulcahy’s services, and thereby competing with Complainant by
way of creating a confusion with the Complainant's trademark as to the source,
sponsorship, affiliation or endorsement of Respondents website.
The record is not clear about whether Respondent
is obtaining commercial gain from its website, although it would seem illogical
for Respondent to go to the effort of creating its website without this. However, even if this were not the case, this
Panel would still find registration and use in bad faith. As noted above, the four examples of Policy
¶4(b) are nonexclusive, and this Panel would find that Respondent's conduct is
sufficiently close to that described in Policy ¶4(b)(iv) as to constitute a
violation.
As such, Complainant has satisfied this
element of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rmcprojects.com> domain name be TRANSFERRED
from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: December 11, 2007
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