Project Management Institute, Inc. v Privacy Department, IceNetworks Ltd
WIPO Case No. DCO2024-0088
•15-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Project Management Institute, Inc. v. Privacy Department, IceNetworks Ltd.
Case No. DCO2024-0088
1. The Parties
The Complainant is Project Management Institute, Inc., United States of America (“U.S.”), represented by
Roche Pia LLC, U.S.
The Respondent is Privacy Department, IceNetworks Ltd., Iceland.
2. The Domain Name and Registrar
The disputed domain name <pmpexam.co> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2024. On November 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 (Redacted for Privacy, Whois Privacy Corp.) and contact information in the Complaint.
The Center sent an email communication to the Complainant on November 28, 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 December 3, 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 December 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2024.
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The Center appointed Ganna Prokhorova as the sole panelist in this matter on January 3, 2025. 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 nonprofit corporation organized under Pennsylvania law, with its principal place of business in Newtown Square, Pennsylvania, U.S.
The Complainant is one of the global leaders in project management and equips organizations and individuals with tools such as advocacy, networking, research, and education. Among its trademarked certification programs is the PMP (Project Management Professional) certification program. The PMP credential is globally recognized and signifies that certified individuals possess the necessary project management knowledge, experience, and skills to successfully complete projects. The PMP mark, when used as a certification mark, indicates that the user has met PMI’s stringent standards.
The Complainant holds trademark registrations for PMP as a word mark in the U.S., such as:
| - | PMP - a certification mark, registered on August 11, 1998, Reg. No. 2,180,481; |
| - | PMP - a service mark, registered on February 16, 2010, Reg. No. 3,748,623; and |
- PROJECT MANAGEMENT PROFESSIONAL (PMP) - a service mark, registered on May 5, 2009, Reg. No. 3,614,943.
The Complainant’s PMP trademark is prominently displayed on its website, literature, and products.
The Complainant operates its primary website at “ under the domain name <pmi.org>. The
Complainant further owns other domain names, such as <pmp.com>, which it utilizes to direct consumers to
its primary website, but also <pmpcertification.com>, <pmpexams.org>, <pmpexams.com>,
<thepmpexam.com>, among others.
The disputed domain name was registered on February 18, 2022, and resolves to a website displaying the book and help users to write the exams related to the Complainant’s certifications online.
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:
(1) The Respondent chose to register the disputed domain name, thereby utilizing the Complainant’s trademark by incorporating it into the disputed domain name and merely adding the word “exam”, which describes one of the products/services offered by the Complainant. The Respondent is exploiting the
Complainant’s mark to simultaneously capitalize on its goodwill while also delegitimizing the PMP certification by offering services that enable third parties to cheat to obtain certification results. This conduct harms not only the Complainant but also individuals who have legitimately earned their credentials, potential employers, and the public at large. The Respondent’s use of the Complainant’s well-recognized (and federally registered) PMP trademark/certification mark in the disputed domain name violates the Complainant’s trademark rights.
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| (2) | The Respondent has no rights or legitimate interests in respect of the disputed domain name. The |
| test-taking services through the disputed domain name, which facilitate individuals cheating on the | Respondent does not have permission to use the Complainant’s mark. The Respondent is promoting proxy the word “exam” to attract consumers to the Respondent’s fraudulent and unauthorized services. |
| (3) The Respondent has registered the disputed domain name primarily to disrupt the Complainant’s legitimate information about PMP certification, instead promoting unlawful services that enable obtaining a | |
| legitimate business. The Respondent uses the disputed domain name to divert Internet users searching for illegal services related to the PMP certification program but no official or authorized PMP products or services, users are likely to be confused and misled. This harms users, the Complainant’s reputation, and the integrity of the PMP certification, while unfairly benefiting the Respondent. | |
| The Complainant requests the disputed domain name be transferred. | |
| B. Respondent | |
| The Respondent did not reply to the Complainant’s contentions. | |
| 6. Discussion and Findings | |
| Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. | |
| The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. In UDRP cases, the standard of proof is the balance of probabilities. | |
| To succeed in a UDRP complaint, the Complainant has to demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, namely: | |
| (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; | |
| (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and | |
| (iii) the disputed domain name has been registered and is being used in bad faith. | |
| The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. | |
| However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. | |
| It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. |
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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 mark and the disputed domain name. WIPO Overview 3.0, section 1.7.
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has shown rights in respect of its PMP mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. The inclusion of the term “exam”
does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s
PMP mark. WIPO Overview 3.0, section 1.8.
The Top-Level Domain “.co” in the disputed domain name should be viewed as a standard registration requirement and disregarded. WIPO Overview 3.0, section 1.11.1.
The Panel therefore finds that the first element of the Policy has been established.
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.
The Panel finds that the Respondent has not been commonly known by the disputed domain name.
As it stands from the available record, the Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain name incorporating the Complainant’s mark. The Panel also takes into account that the Respondent is not sponsored by or legitimately affiliated with the Complainant in any way.
There is no evidence to suggest that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
After reviewing the available record, the Panel finds that 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 case and has not provided any relevant evidence demonstrating rights or legitimate interests in the disputed domain name as outlined in the Policy or otherwise.
Noting the above, 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.
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In the present case, the Complainant asserts that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks. The Respondent has not refuted this contention. The Complainant has valid trademark rights for the PMP mark, and the disputed domain name is confusingly
similar to the Complainant’s mark. The Respondent’s use of the Complainant’s trademark on its website and
provision of illegitimate services related to the Complainant’s exams clearly demonstrates its awareness of
the Complainant and a deliberate attempt to target the Complainant. Accordingly, without any evidence to
the contrary from the Respondent, the Panel finds that the Respondent was aware of the Complainant at the
time it registered the disputed domain name.
The Respondent’s site offers unauthorized and illegitimate services primarily related to the PMP certification program and exam – without providing any official or authorized PMP products or services. This results in harming the Complainant. The Panel, therefore, concludes that the Respondent has acted in bad faith in both the registration and use of the disputed domain name, by intentionally creating a likelihood of confusion regarding the source, sponsorship, affiliation, or endorsement of the Respondent’s website, the Respondent has sought to attract Internet users for commercial gain, in violation of paragraph 4(b)(iv) of the Policy.
Furthermore, panels have held that the use of a domain name for illegitimate activities constitutes bad faith.
WIPO Overview 3.0, section 3.4.
Moreover, the Panel finds that the disclaimer on the bottom of the website at the disputed domain name does not impact the Panel’s finding on the Respondent’s bad faith considering the totality of the circumstances in this case.
Based on these circumstances and the evidence presented, 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 <pmpexam.co> be transferred to the Complainant.
/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: January 15, 2025
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