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Generic Top Level Domain Name (gTLD) Decisions |
Project Management Institute, Inc. v.
Dan Prather a/k/a Bethlehem Temple a/k/a
The Alliance
Claim Number: FA0405000273995
PARTIES
Complainant
is Project Management Institute, Inc. (“Complainant”), represented by Kevin
R. Casey, of RatnerPrestia,
P.C., 1235 Westlakes Drive, Suite 301, Berwyn, PA 19312. Respondent is Dan Prather a/k/a Bethlehem Temple a/k/a The Alliance (“Respondent”),
19 Landmark Drive, #33H, Columbia, SC 29210.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <opm3.net>, <opm3.info>, <opm3.org>,
and <opm3.biz>,
registered with Register.com.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in this
proceeding:
Jeffrey M. Samuels, Chair
Honorable Louis E. Condon (Ret.),
Panelist
M. Kelly Tillery, Panelist
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 19, 2004; the Forum received
a hard copy of the Complaint
on May 21, 2004.
On
May 19, 2004, Register.com confirmed by e-mail to the Forum that the domain
names <opm3.net>, <opm3.info>, <opm3.org>,
and <opm3.biz>
are registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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
June 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 21,
2004 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@opm3.net, postmaster@opm3.info, postmaster@opm3.org
and postmaster@opm3.biz by e-mail.
A
timely Response was received and determined to be complete on June 21, 2004.
On July 7, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Jeffrey M.
Samuels, the Honorable Louis E. Condon (Ret.), and M. Kelly Tillery, as
Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
Project Management Institute, Inc. (PMI) is a developer of standards for the
project management profession.
Complainant develops these standards through the collaborative action of
its members. One standard developed by
Complainant is the “Organizational Project Management Maturity Model” standard, otherwise known as the
“OPM3” standard.
On
January 12[1],
2001, Complainant filed an intent-to-use trademark application with the United
States Patent and Trademark Office seeking registration
of the mark OPM3. A Notice of Allowance was issued on June 18,
2002, and a third request for an extension of time to file a Statement of Use
has been
granted. The May 2004 issue of
PM Network contains an advertisement
showing use of the OPM3 mark by PMI in connection with business consulting
services. See Exhibit G to Complaint.
Complainant
asserts that the subject domain names are substantially identical to its OPM3
mark and that Complainant has rights in
such mark.
Complainant
further alleges that Respondent has no rights or legitimate interests with
respect to the domain names in issue.
In this regard, Complainant notes that Respondent is a member of
Complainant’s organization and helped to develop the OPM3 standard,
although
its contribution was “very minor.”
According to Complainant, several hundred of its members contributed to
the OPM3 standard and a management team of between 10 and
12 members was
assembled to be the primary contributors to the OPM3 standard. Respondent was not a member of the management
team.
Complainant
asserts that it knows of no bona fide offering of goods or services by
Respondent in connection with the subject domain
names. It further maintains that Respondent is not
commonly known by the domain names and that it knows of no legitimate
noncommercial or
fair use of the domain names by Respondent. According to
Complainant, Respondent’s only use of the domain names is for commercial
gain. Attached as Exhibit C to the
Complaint is a screen shot of a web page from Respondent’s web site offering
for sale the subject domain
names.
With
respect to the issue of “bad faith” registration and use, Complainant argues
that Respondent knew of Complainant’s development
of the standard and
Complainant’s use and ownership of the OPM3 mark but, nevertheless, registered
the domain names and has attempted
to sell the names. Exhibit D to the Complaint includes an email from Respondent,
dated September 3, 2003, indicating that “the receiving company [of
the domain
names] must be willing to pay our asking price for the set of domains and be a
reputable company that will respectfully
uphold the identity.” Exhibit D to the Complaint includes an email
from Respondent, dated November 24, 2003, in which Respondent made clear that
the domain
names are for sale and that offers through November 15, 2003 are in
the range of between $3,500 and $165,000.
B.
Respondent
In
its Response, Respondent argues that it joined the OPM3 development team on
July 8, 2001 and that there was no mention at that
time of any trademark or
service mark. The project, according to
Respondent, was not viewed as a product or service. Respondent asserts that it was not until late 2002 that
Complainant announced that it had applied to register the OPM3 mark and that
Complainant did not refer to OPM3 as a mark until mid-2002.
Respondent
urges that it has rights and legitimate interests in the domain names based on
its interest and background in workforce
development and organizational
maturity, which interest and background was set forth in its application to
join the project team. (See Appendix A
to Response.) Respondent asserts that
it has worked with volunteer teams on strategic plans for use of the domain
names in the non-profit and commercial
sectors. Respondent indicates that it offers business consulting services to
small business and non-profit groups that require expertise in
organizational
development and maturity and has offered similar services since January
2000. According to Respondent, its
non-profit support organization, the Alliance Organization, was known by many
OPM3 team members between
August 2001 and July 2002 as the primary management
support organization for managing virtual web conferencing services for the
OPM3
team members. Respondent admits,
however, that due to restricted funding, it has had to re-prioritize its
deployment of some services.
Respondent
contends that it did not register the domain names for purposes of sale. With regard to Exhibit C to the Complaint,
Respondent notes that the redirect at the bottom of the page leads to a subdirectory
under
one of the Respondent’s domains and that the subject domains were meant
to resolve to Respondent’s primary domain address “until
the services were
built and deployed appropriately online.”
It is Respondent’s position that, at no time, did it ever communicate an
asking price for the domain names and that Exhibits D and
E to the Complaint
merely show that it was attempting to provide Complainant with a “status
update” due to the number of inquiries
for purchase of the domain names.
FINDINGS
Based upon its review of the entire
record, The Panel concludes that the
domain names in
issue are identical or confusingly
similar to a mark in which Complainant has rights, that
Respondent
has no rights or legitimate interests in the domain names, and that the names
were
registered and are 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.
The Panel concludes that, for all intents
and purposes, the domain names are identical to the mark OPM3. The only difference between the domain names
and the mark is the addition of the generic top-level domains “net”, “info”,
“org”, and
“biz.” The addition of such
top-level domain names does not render the names sufficiently dissimilar from
the mark in issue. See Rollerblade,
Inc. v. McGrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar; In re Oppedahl & Larson LLP (Fed.
Cir., June 25, 2004) (holding that TLD’s “will most often not add any
significant source-identifying function to a mark.”).
The Panel further concludes that,
although Complainant has not yet obtained a registration for the OPM3 mark, it
nevertheless has
rights in the mark.
Exhibit G to the Complaint reveals that Complainant has used the term
OPM3 as a mark. Such use is sufficient
to vest Complainant with rights in the mark. At least in the U.S., trademark
rights are based on use, not on
registration.[2]
The Panel determines that none of the
circumstances set forth in the relevant policy with regard to the issue of
rights or legitimate
interests exists in this case. Respondent cannot be found to have used the domain names in
connection with a bona fide offering of goods and services, given the
fact that
the domain names are confusingly similar to Complainant’s OPM3 mark and the
fact that no goods or services are offered
at the involved web sites. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (“use of
complainant’s entire mark in infringing domain names makes it difficult to
infer a legitimate
use”); J. Paul Getty
Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000)
(rights or legitimate interests do not exist when one has made no use of the
web sites
that are located at the domain names at issue other than to sell the
domain names for profit).
It is also clear that Respondent is not
commonly known by the domain names in issue and that it is not making a legitimate
noncommercial
or fair use of the names.
Respondent’s contention that it “does not intend to violate the ethics
and business practices of good business and mutual respect”
(see p. 5 of
Response) does not support a contrary finding by the Panel.
The Panel concludes that the domain names
in issue were registered and are being used in bad faith. A fair reading of the exchange of emails
between the parties, as set forth in Exhibit E to the Complaint, as well as
Respondent’s
web site at which it invited offers for the purchase of the domain
names (see Exhibit C to Complaint), leads to the conclusion that
Respondent
registered the domain names primarily for the purpose of selling the domain
name registrations to Complainant or a competitor
of Complainant for
compensation in excess of Respondents documented out-of-pocket costs, pursuant
to Policy ¶ 4(b)(i). See Am.
Anti-Vivisection Soc’y v. Infa dot Net Web Serv, FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded,
are evidence of bad faith”). The Panel notes that the web site set forth
in Exhibit C includes the following language:
Opm3.org/.net/.info/.biz is
Available for Immediate
Use!
Are you a Non
Profit Organization or Group that needs a Hi-
Profile identity?
Look no farther.
Opm3.org, .net, .info, and/or .biz will be
easily recognized,
remembered, and understood by your
target audience
and internet users worldwide.
Contact us today
if your group is interested in the use or
purchase of this
domain. Email: admin@the alliance.org for
more information.
Serious Inquiries Only!
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 <opm3.net>,
<opm3.info>, <opm3.org> and <opm3.biz>
domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Chair
Dated: July 21, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/878.html