Project Management Institute, Inc. v Project Management Professional, PIM

WIPO Case No. D2024-3737

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Project Management Institute, Inc. v. Project Management Professional, PIM

Case No. D2024-3737

1. The Parties

The Complainant is Project Management Institute, Inc., United States of America (“United States”), represented by Roche Pia LLC, United States.

The Respondent is Project Management Professional, PIM, India.

2. The Domain Name and Registrar

The disputed domain name <customercarepmi.org> (the “Domain Name”) 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 13, 2024. On September 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 20, 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 20, 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 sent an email

communication from an email address connected to the Domain Name to the Center on October 13, 2024.
On October 14, 2024, the Center sent an email regarding the possible settlement to the Parties. On October
18, 2024, the Complainant requested the Center to proceed with the proceeding. On October 21, 2024, the

page 2

Center informed the Parties of the commencement of panel appointment process. On October 22, 2024, the
Respondent sent another email communication to the Center.

The Center appointed Nicholas Smith as the sole panelist in this matter on October 24, 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 United States company that provides education and certification services for
individuals around the world in the skills of project management. The Complainant has provided those
services under a mark consisting of the acronym PMI (the “PMI Mark”) since 1969. The Complainant owns
the domain name <pmi.org> and provides emails to its customers through the email addresses
“[…]@pmi.org”. The Complainant has held a trademark registration for the PMI Mark since 1998, including
United States trademark number 2,152,599, registered on April 21, 1998, for goods and services in classes
16 and 42.

The Domain Name was registered on May 5, 2024. The Domain Name does not resolve to an active website, rather it resolves to a parking page maintained by the Registrar or a generic landing page with no active content which, however, invites users to sign up for updates. The Complaint contains evidence that the Respondent has sent emails from the email account “[...]@customercarepmi.org” to customers of the Complainant. In those emails, the Respondent reproduces the Complainant’s name, website, and identity of the Complainant’s employees. The Respondent then conducts a phishing scam where the Respondent impersonates the Complainant to the Complainant’s customers and demands payments from them via an email address copying the Complainant's “customercare@[...].org” email.

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 Domain Name.

Notably, the Complainant contends that:

a)	It is the owner of the PMI Mark, having registered the PMI Mark in the United States. The Domain Name is confusingly similar to the PMI Mark as it reproduces the PMI Mark in its entirety and adds the terms “customer care”.
b)	There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the PMI Mark. The Respondent is not commonly known as PMI, nor does it use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather, the Domain Name is used for emails impersonating the Complainant, which does not provide the Respondent with rights or legitimate interests in the Domain Name.
c)	The Domain Name was registered and is being used in bad faith. The Domain Name is being used for emails that impersonate the Complainant in order to perpetuate fraud.

page 3

B. Respondent

In its emails to the Center the Respondent denies all allegations against it and states that its actions were not based on any intentional breach of legal obligations. Furthermore, the Respondent states that there is no valid arbitral agreement between the Parties. The Respondent confirms it has deleted the website in question. Finally, it notes that the Registrar did not impose any restriction on the registration and use of the Domain Name.

The Panel will address the majority of the Respondent’s contentions later in the Decision, but notes it is satisfied, as set out at section 3 above, that it has been validly appointed. The Registrar has confirmed that the Policy does apply to the Domain Name and hence the absence of an arbitral agreement between the Parties has no bearing on the ability of the Panel to decide this proceeding and issue orders under the Policy and the Rules.

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 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 a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “customer care” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds 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.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the rights or legitimate interests in the Domain Name.

Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the

page 4

The Panel considers that the record of this case reflects that:

- Before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made
demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in
connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and

WIPO Overview 3.0, section 2.2.

- The Respondent (as an individual, business, or other organization) has not been commonly known by the

Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3.

- The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent
for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.

- The record contains no other factors demonstrating rights or legitimate interests of the Respondent in the
Domain Name.

WIPO Overview 3.0, section 2.13.1.

The Panel is satisfied from the evidence in the Complaint of the content of emails sent from the email impersonating the Complainant, therefore reinforcing the Panel’s finding as to the illegal use of the Domain Name. The Panel finds the Respondent’s use of the Domain Name is in connection with a phishing scheme, namely to send emails passing itself off as the Complainant to third parties demanding payments based on false and misleading statements. Panels have held that the use of a domain name for illegal activity (in the present case phishing) can never confer rights or legitimate interests on a respondent.
account “[…]@customercarepmi.org”, which the Respondent has not addressed in its email communications,
that Respondent registered and used the Domain Name in awareness of the Complainant and with the intent
of passing itself off as the Complainant. The Panel does not accept the Respondent’s bare denials of the
allegations in the face of clear evidence of how the Domain Name was used. Furthermore, the

The Panel notes that the registrant identified in the registration details of the Domain Name is “Project Management Professional, PIM”. This name does not correspond to, and hence the Respondent is not commonly known by, the Domain Name. However, even if the Panel considered that the registration details did correspond to the Domain Name, the Panel is not satisfied that the Respondent is actually commonly known under this name as opposed to simply registering the Domain Name under a pseudonym to falsely suggest an affiliation with the Complainant for the purpose of asserting rights or legitimate interests. The Respondent has provided no evidence that an entity known as “Project Management Professional” or “PIM” has ever been registered as a company and is operating a legitimate business. The mere fact that the name of a respondent appears from the WhoIs record to match the domain name, without additional affirmative evidence, does not lead to the conclusion that such a respondent is commonly known by the disputed domain name under Policy 4(c)(ii). WIPO Overview 3.0, section 2.3.

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.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. The Domain Name has been used to create an email account where

page 5

the Respondent sends emails purporting to be emails from the Complainant in order to improperly demand

payment from the Complainant’s customers which amounts to the commission of a fraud.

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 Domain Name <customercarepmi.org> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: October 28, 2024