Project Management Institute, Inc. v Kabir Haldar, Aramco

WIPO Case No. D2024-3710

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Project Management Institute, Inc. v. Kabir Haldar, Aramco

Case No. D2024-3710

1. The Parties

The Complainant is Project Management Institute, Inc., United States of America, represented by Roche Pia

LLC, United States of America.

The Respondent is Kabir Haldar, Aramco, India.

2. The Domain Name and Registrar

The disputed domain name <pmiusa.info> 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 September 12, 2024. On September 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2024.

The Center verified that the Complaint together with the amended 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 September 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2024.

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The Center appointed Andrew Brown K.C. as the sole panelist in this matter on October 17, 2024. 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 a Non-Profit Corporation headquartered in Newtown Square, Pennsylvania, United States of America (“United States”). It operates as an international trade association of project managers. It began operation under the name and trademark PMI in 1969 and has consistently used the trademark PMI internationally for its business products and services and on its literature.

Project Management Institute, Inc. v Primary

An earlier domain name decision involving the Complainant, million members working in nearly every country in the world.

The Complainant states that it owns a number of registered trademarks in the United States. The relevant registrations of the Complainant (“the PMI Trademark”) include:

Country	No.	Trademark	Registration Dage	Class
United	2,152,599	PMI	April 21, 1998	16
States
United	4,077,281	PMI	December 27, 2011	35
States
United	4,303,806	PMI	March 19, 2013	41
States
United	3,920,348	PROJECT MANAGEMENT	February 15, 2011	16, 35, 41, 42
States	INSTITUTE

Registration No. 4,303,806 covers the following services in class 41:

“Educational services, namely, conducting classes, seminars, conferences and workshops in the field of project management and distributing course materials in connection therewith; providing recognition and incentives by way of awards to demonstrate excellence in the field of project management; and providing online, non-downloadable publications in the nature of magazines, newsletters, journals and books in the field of project management”.

The Complainant is the registrant of the domain name <pmi.org> which it utilizes to direct consumers to its services. These services include certification examinations and related services.

The disputed domain name was registered on September 20, 2023. A website is located at the disputed domain name, prominently displaying the Complainant’s PMI Trademark and purportedly offering same services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its PMI Trademark. The disputed domain name utilizes the Complainant’s PMI Trademark as the primary

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component, adding the geographical descriptive term “usa” to that mark. The Complainant states that other
panels have found that the addition of generic or descriptive words still warrants a finding of confusingly
similar.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent has no rights to impersonate it or to hold itself out as the Complainant. The Complainant relies on the fact that the registration information for the disputed domain name shows that the Respondent is not commonly known as “PMI USA”.

The Complainant states that, as the Respondent is merely impersonating it, by definition the Respondent has no rights or legitimate interests with respect to the disputed domain name. This is backed up by the fact that the Respondent uses the Complainant’s former headquarters’ address as the Respondent’s physical contact information on the website at the disputed domain name.

As further evidence of the lack of the legitimate interests by the Respondent in the disputed domain name, the Complainant points to the fact that the website at the disputed domain name has listed other contact email addresses ostensibly for the Respondent which end in “pmi.org” (the Complainant’s legitimate domain name).

Finally, the Complainant asserts that the disputed domain name has been registered and has been used in
bad faith. The Complainant states that the Respondent registered the disputed domain name to impersonate
it. The Complainant contends that the Respondent has deliberately targeted the Complainant for a
fraudulent scheme to suggest to the public that it is a trusted provider in the certification and project
management industry. It further states that this fraudulent use of the disputed domain name is used in bad

faith.

In this regard the Complainant also asserts that the Respondent has prevented the Complainant from
utilizing its PMI Trademark in connection with the geographic descriptor “USA”, on a popular Top-Level

Domain, especially for informational purposes (“.info”).

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of its PMI Trademark, being a trademark and service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the Complainant’s PMI Trademark is clearly recognizable within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered in bad faith for the following reasons:

(a) The Panel finds that the Complainant’s PMI Trademark has an established reputation and is well

known in the field of project management and associated services. The Complainant has been using its PMI well before registration of the disputed domain name on September 20, 2023;

Trademark continuously since 1969 including to market its certification examinations and related services.

(b) More particularly, the Respondent clearly knew of the Complainant’s PMI Trademark when it

registered the disputed domain name. Shortly after registration, the Respondent established a website page on the Respondent’s linked website uses the Complainant’s former headquarters address in Pennsylvania and the Customer Care email addresses use the Complainant’s domain name <pmi.org> rather than the disputed domain name. All of these factors in combination reveal the Respondent’s full knowledge of the Complainant and a concerted aim to impersonate the Complainant.

linked to the disputed domain name which impersonates the Complainant. The website prominently uses the

The Panel is also satisfied that the Respondent is using the disputed domain name in bad faith for the following reasons:

(a) The Complainant has provided evidence that the disputed domain name is being used to intentionally

attract consumers and to confuse them by suggesting it is an iteration of or part of the Complainant’s
business. There is clear evidence that the Respondent attempts to deceive consumers by impersonating the
Complainant. The Respondent is suggesting or claiming that it is the source of the PMI Trademark and by

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purportedly offering to provide certain PMI certifications through the disputed domain name for what the
Complainant says are “large prices”.

The Complainant has provided evidence of an email from the disputed domain name which concludes with the sign off:

“Project Management Institute (PMI) is the leading professional association for project management, and the
authority for a growing global community of millions of project professionals and individuals who use project
management and skills. Collectively, these professionals and ‘change makers’ consistently create better
outcomes for businesses, community and society worldwide”.

The Panel is satisfied that Internet users encountering or finding the disputed domain name will be deceived or confused into thinking that this is the Complainant’s genuine site or has been licensed or authorized by the Complainant (when this is not the case). There is a serious ongoing risk of Internet users being duped into paying to sit exams and to attain qualifications that are genuine and are not provided by the Complainant.

(b) The use of a proxy shield by a respondent to shield identity has been regarded by previous panels as

demonstrating both bad faith registration and use in certain circumstances, such as where the respondent is
operating a commercial and trademark-abusive website. In the circumstances of this case, the Panel
considers that the use of “Registration Private, Domains by Proxy LLC” by the Respondent may properly be
taken into account as a further relevant factor showing bad faith use.

(c) The Panel is also entitled to draw and does draw an adverse inference from the failure of the

Respondent to respond to the Complaint and to the factual allegations made by the Complainant.

The Panel finds that the Complainant has established the third element of the Policy.

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 <pmiusa.info> be transferred to the Complainant.

/Andrew Brown K.C./
Andrew Brown K.C.
Sole Panelist
Date: October 24, 2024