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Society for Human Resource Management v. Michele Dinoia [2005] GENDND 259 (7 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Society for Human Resource Management v. Michele Dinoia

Case No. D2004-1102

1. The Parties

The Complainant is Society for Human Resource Management of Alexandria, Virginia, United States of America, represented by Reed Smith LLP, of New York, New York, United States of America.

The Respondent is Michele Dinoia of Pineto, Teramo, Italy.

2. The Domain Name and Registrar

The disputed domain name <shrm.com> is registered with Tuonome.it.srl.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2004. On December 29, 2004, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the domain name at issue. On January 10, 2005, Tuonome.it.srl transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on March 2, 2005. 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 an organization dedicated to providing services in the field of human resource management throughout the world and has become well known and built up a reputation for such services. The Complainant has registered the letters SHRM - an abbreviation of its name - as a service mark in respect of human resource management consultancy in several countries as follows:

- United States of America - under Registration No. 1,668,891 on December 17, 1991;

- European Community - under Registration No. 63823 on May 3, 2000;

- Australia - under Registration No. 742,142 on August 22, 1997;

- Canada - under Registration No. TMA 536,810 on November 7, 2000;

- Japan - under Registration No. 4,430,666 on November 2, 2000;

- South Korea - under Registration No. 58,952 on January 11, 2000;

- Mexico - under Registration No. 642,446 on February 23, 2000.

Copies of the corresponding registration certificates have been submitted to the Center.

The Complainant has also made continuous use of its mark since September 1, 1989.

The Complainant is also the owner of the domain name registration of <shrm.org> and has been using its mark SHRM on and as part of this website for association services, namely, promoting the interests of the human resource management profession and the interests of members of the human resource management profession. Evidence of this has been submitted to the Panel.

On the website, “www.shrm.com”, registered by the Respondent on August 6, 2001, links to numerous sites relating to human resource management services are provided, many of which comprise direct competitors of the Complainant. Moreover, the Complainant also provides, to a significant degree, referral services competing with those provided on the Respondent’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

Under paragraph 4(a)(i) of the Policy, the Respondent’s domain name is effectively identical to the Complainant’s registered service mark SHRM, which is known throughout the world and, as a result of the Complainant’s expenditure of time, money and resources, has acquired goodwill and become a very valuable property. This domain name incorporates in its entirety the Complainant’s distinctive service mark and, as such, creates sufficient similarity between this mark and the domain name at issue to render it confusingly similar.

Based on this virtual identity between the Respondent’s domain name and the Complainant’s mark, Internet users and consumers are likely to be confused into believing that there is some affiliation, connection, approval or association between the Respondent and the Complainant, when, in fact, no such affiliation exists.

2. The Respondent has no rights or legitimate interests in respect of the domain name: (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)

With regard to paragraph 4(a)(ii) of the Policy, the Complainant asserts that it is the owner of the registration for SHRM in the United States, the European Community, Australia, Canada, Japan, South Korea and Mexico, as well as common law rights therein, and has not licensed or otherwise permitted the Respondent to use any of its marks or apply for or use any domain name incorporating its mark.

Apart from the rights derived from its registrations, the Complainant has acquired a substantial reputation under common law by virtue of its continued use of its mark since at least as early as September 1, 1989.

3. The domain name was registered and is being used in bad faith:

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

With regard to paragraph 4(a)(iii) of the Policy, the Complainant relies on the express “bad faith” threshold set out in paragraph 4(b). The Respondent is a competitor of the Complainant and, accordingly, bad faith can be presumed in that the Respondent was aware or should have been aware of the Complainant’s well-known mark and claim of rights thereto.

As such, it can be presumed not only by this fact, but also by the Respondent’s affirmative duty to conduct trademark clearance activities before adopting the domain name at issue which incorporates the Complainant’s registered mark. Indeed, a simple trademark scan of the records of the United States Patent and Trademark Office would have made the Complainant’s registration known to the Respondent.

Furthermore, the Respondent is not making a legitimate non-commercial or fair use of the domain name at issue, in that Respondent is intentionally diverting current and potential consumers and this may likely serve to tarnish the SHRM service mark.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the Respondent failed to file a Response, the Panel’s decisions were based upon the Complainant’s assertions and evidence, as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates the Complainant’s registered service mark SHRM without any modification. As such, Internet users and consumers are likely to be misled into thinking that the domain name originates from, belongs to and is operated by the Complainant, which is not, in fact, the case. This clearly constitutes a misuse and infringement of the Complainant’s valuable trademark rights and causes confusion in the marketplace for human resource management services, to the detriment of the Complainant and consumers alike.

Thus, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark SHRM in which the Complainant has well-established and valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or 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;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

In the absence of any response by the Respondent to the Complainant’s cease and desist letters or to the Complaint itself, there is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue.

In particular, no evidence has been adduced that the Respondent has been commonly known by the domain name; nor making a legitimate non-commercial or fair use of the domain name; nor has Respondent been authorized or licensed by the Complainant to use Complainant’s trademark SHRM as part of the domain name at issue.

Neither can the Respondent claim that it was unaware of the SHRM trademark, which has been registered, in several countries, including an European Community registration since May 3, 2000, prior to the date on which the Respondent registered the domain name incorporating the Complainant’s trademark. Likewise, the Respondent must also have been aware of the SHRM trademark, which is registered in several countries, and is well known in the human resource management sector. Linking the domain name to a website of human resources links proves this. Trademark registrations are a matter of public record and it is incumbent on the Respondent to make proper searches and enquiries before registering a domain name incorporating somebody else’s registered mark.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website and the consequential tarnishing of the Complainant’s well-known and valuable trademarks. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s businesses and trademark and unfairly attracting to its own business and activities the Complainant’s goodwill in its service mark, without any right or legal justification for doing so.

Thus, the Panel concludes that the Respondent has no rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not exhaustive but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line 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 its website or location.”

The Respondent has registered a domain name containing as an essential component the Complainant’s well-known and commercially valuable trademark and directing Internet users to its own and other websites offering services competing with those offered by the Complainant. This can hardly have happened by chance and, by exploiting the Complainant’s goodwill in its trademark and business that it designates, the Respondent is acting in bad faith.

Furthermore, by registering and using the domain name at issue incorporating the Complainant’s trademark, the Respondent is misleading consumers and Internet users into thinking that it is in some way connected, sponsored or affiliated with the Complainant and its well known business, or its activities are approved or endorsed by the Complainant, which is not, in fact, the case. Again, the Respondent is trading on the Complainant’s goodwill and reputation, which the Complainant has built up by expending time and money over the years. This, without any explanations by the Respondent to the contrary, of which none are forthcoming on the website or otherwise, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 of January 18, 2001, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Also, the failure to answer the Complaint and participate in the present Proceedings, is, in the view of the Panel, further evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering the domain name at issue in the first place it is reasonable to assume that the Respondent would have taken this opportunity to put forward an answer in defense of its actions.

It may also be noted, en passant, that, according to a search of past UDRP Decisions, the Respondent has been or is presently involved in nine cases, including the present one, in the majority of which the Respondent has been ordered to transfer the domain name at issue in these cases to the complainant party. Thus, the present case is not an isolated one, and this fact would also tend to suggest a pattern of bad faith by the Respondent.

Therefore, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shrm.com>be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: March 7, 2005