Society for Human Resource Management v Kolren Karen

WIPO Case No. D2024-1375

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Society for Human Resource Management v. Kolren Karen

Case No. D2024-1375

1. The Parties

The Complainant is Society for Human Resource Management, United States of America (“United States”), represented by Holland & Knight LLC, United States.

The Respondent is Kolren Karen, India.

2. The Domain Name and Registrar

The disputed domain name <shrm2024.org> 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 April 1, 2024. On April 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on April 2, 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 April 3, 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 amendment to the Complaint on April 8, 2024.

The Center verified that the Complaint together with the amendment to the 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 April 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2024.

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The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 10, 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 Society for Human Resource Management, an Ohio-based corporation located in the United States and one of the world’s largest human resources professional societies, with more than 340,000 members in over 180 countries.

The Complainant has used its trademark SHRM continuously since 1989 and is the owner of registrations for

SHRM in the United States. Among these registrations, the following ones are worth mentioning:

- United States trademark SHRM (device) registration No. 3580962 registered on February 24, 2009;

- United States trademark SHRM (device) registration No. 3568021 registered on January 27, 2009;

- United States trademark SHRM (device) registration No. 3554542 registered on December 30, 2008; The Complainant is the owner the domain name <shrm.org>, registered on November 14, 1997, pointing to the Complainant’s primary website. - United States trademark SHRM registration No. 6440990 registered on August 3, 2021.

The disputed domain name was registered on March 1, 2024. The evidence submitted with the Complaint shows that the disputed domain name resolved to a website impersonating the Complainant, reproducing its trademark, as well as the schedule for the “2024 SHRM Expo”, an annual exposition featuring human

resources products and services.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the SHRM trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

Notably, the Complainant contends that the disputed domain name resolved to a website pretending to be the Complainant’s one, particularly regarding the “2024 SHRM Expo”. Not only the trademark, but the entire schedule for the conference is reproduced. The referred website also enticed visitors to submit their

information, as if they were effectively registering for the conference. Annexes I and J evidence these
allegations.

The Complainant also contends that this is not the first year that a copycat conference website has been created using the same domain name format, as a complaint has been filed and successfully decided in 2023 (see Society for Human Resource Management v. Singh, Case No. D2023-1529).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i.         the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii.        the Respondent has no rights or legitimate interests in respect to the disputed domain name; and

iii.       the disputed domain name has been registered and is being used in bad faith.

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 disputed domain name is confusingly similar to the SHRM trademark, as the latter is entirely incorporated in the disputed domain name, with the mere addition of the year, “2024”.

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 Complainant has presented consistent evidence of ownership of the trademark SHRM in the United States, by presenting registrations for it, as well as comprehensive evidence of the use of the trademark.

The incorporation of the trademark with the addition of the number “2024” in the disputed domain name does not prevent a finding of confusing similarity with the trademark.

The trademark is clearly recognizable in the disputed domain name and as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, the addition of other terms would not prevent a finding that a disputed domain name is confusingly similar to the relevant mark for purposes of the first element.

Lastly, the Panel notes that, in accordance with section 1.11.1 of the WIPO Overview 3.0, the generic
Top-Level Domain (“gTLD”), in this case “.org”, is in principle disregarded under the first element.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

The Panel notes that the trademark SHRM is widely known as identifying the Complainant’s activities, and that the Complainant did not license this to the Respondent.

Furthermore, the Respondent does not appear to be commonly known by the disputed domain name.

The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.

The disputed domain name reproduces the Complainant’s mark SHRM in its entirety, with the addition of the year “2024”, which carries a risk of implied affiliation, particularly when considering the Complainant’s upcoming conference in 2024 that is targeted via the disputed domain name’s website. WIPO Overview 3.0, section 2.5.1.

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In addition, the disputed domain name has been used to resolve to a website impersonating the attempting to collect information and data on the Complainant’s clients.

Previous UDRP panels have established 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) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has probably registered the disputed domain name with the purpose of taking unfair advantage of the Complainant’s mark.

The composition of the disputed domain name points towards the Respondent’s likely intent to give an impression that the disputed domain name is associated with the Complainant. In the absence of any reasonable explanation for the selection of the disputed domain name by the Respondent, and in the circumstances of this case, the Panel finds that the disputed domain name has been registered to take unfair advantage due to its value as a trademark owned by the Complainant.

According to the evidence provided, the disputed domain name lead to a website that specifically reproduced information from the Complainant’s exposition website, including the event schedule, the Complainant’s trademark, and other visual elements. The Respondent has clearly accessed the Complainant’s website, on which the Complainant uses the SHRM Marks in connection with its services. Thus, the Respondent had evident knowledge of the Complainant and of the Complainant’s trademark rights.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is

evidence of registration and use in bad faith.

Here, the Panel notes the distinctive and well-known nature of the Complainant’s trademark SHRM, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put, support a finding of bad faith.

In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name in bad faith.

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 <shrm2024.org> be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: May 24, 2024