The Complainant is Estate Diamond Exchange, Inc. of Agoura Hills, California, United States of America, represented by Fox Rothschild LLP, United States of America.
The Respondent is Thomas Hull of Chatsworth, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 16, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2010. The Response was filed with the Center on August 16, 2010.1
The Center appointed William R. Towns as the sole panelist in this matter on September 2, 2010. 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 and the Respondent both are in the business of selling second hand jewelry. The Complainant does business under the name “Estate Diamond Exchange”, and claims common law service mark rights therein. The Respondent does business under the trade name “Gold N Heart”.
The Complainant and the Respondent both operate brick and mortar stores in the Los Angeles, California metropolitan area – the Complainant has a store in Agoura Hills, California, while the Respondent has stores Simi Valley, California. The Complainant and the Respondent have operated their respective jewelry businesses for a number of years, the Complainant since at least 1993, and the Respondent since 1981.
The Respondent registered the disputed domain name on May 11, 2009. The Respondent has made no active use of the disputed domain name since that time. 5. Parties’ Contentions A. Complainant
The Complainant asserts that is has established common law service mark rights in ESTATE DIAMOND EXCHANGE, as a result of continuous and substantially exclusive use since 1993 sufficient to establish secondary meaning in the minds of the relevant purchasing public. The Complainant maintains that the disputed domain name is identical and confusingly similar to its common law service mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has never been known by that name, and prior to receipt of notice of this dispute, had made no active commercial or noncommercial use of the domain name. The Complainant argues that the Respondent’s passive holding of the disputed domain name since its registration in May 2009 indicates that the Respondent registered the domain name in bad faith, and that in the context of this case the Respondent’s passive holding of the domain name constitutes bad faith use. B. Respondent
The Respondent maintains that he registered the disputed domain name based on its descriptive qualities relative to the Respondent’s business, for future use with the Respondent’s website. According to the Respondent, the disputed domain name describes one aspect of his second hand retail jewelry business – the buying and selling of estate diamonds. The Respondent further maintains that the Complainant’s asserted common law mark is generic in that it is a general description of the business of buying and selling second hand diamonds. The Respondent states that his company, Gold N Heart Jewelers, is a reputable independent jeweler doing business since 1981, with two stores in Simi Valley, California. 6. Preliminary Procedural Issues: Parties’ Supplemental Submissions
On September 14, 2010, two days before the Panel’s decision would be due under the Rules, the Respondent by email to the Center requested an extension of “at least two weeks” so that he could “go over the material and possibly seek counsel”. On September 15, 2010, the Complainant’s counsel responded, objecting to any further delay. Further, on September 15, 2010, the Complainant’s counsel forwarded to the Center an email of even date received by the Complainant’s counsel from the Respondent, the text of which is as follows:
From: [Respondent]
To: [Complainant’s authorized representative]
Sent: Wed Sep 15 19:00:37 2010
Subject: Re: (TG) D2010-1171 Notification of Panel Appoint...
Dear [Case Manager],
Do you know someone who I can have professionally review my situation. I really feel I’m being bullied by these people. The domain was available. I registered it through network solutions. I did not obtain the domain by illegal means. I have been paying the fees on domain for several years now. I am sorry that the .com is not available, but there are other domains available with the same name and different extensions (.net, .biz, etc.).
I am a busy business owner trying to keep two jewelry stores afloat in a depressed market I really don’t have the time or the means to fight these people on this. You seem to have knowledge in this field and I believe you to be very fair. Can you give me advice on this?? I might even be willing to sell it if the price was right.
Thank you, Thomas Hull
The Complainant has requested that this communication be made a part of the administrative record in this matter, asserting that the Respondent has made an offer to sell the disputed domain name, which according to the Complainant is evidence of bad faith.2
The Policy and Rules envision the submission of a single complaint and a single response. No express provision is made for the submission of supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either party.
The Panel is not persuaded that good cause exists for any further delay in this proceeding. The Respondent received notice of the commencement of this proceeding on July 27, 2010. The Response was due on August 16, 2010, and in fact the Respondent submitted his Response on August 16, 2010. The Policy and Rules afforded the Respondent a reasonable period of time to seek the advice of counsel before submitting a response. In any event, a request for an extension of “at least two weeks” on the eve of the due date for the Panel’s decision is untimely.
The Panel has decided to accept for purposes of the record the Respondent’s email of September 15, 2010 sent to the Complainant’s counsel, although not without some reservations. The Panel notes first that the Respondent appears to have been seeking advice on how to proceed, and second, that the Respondent’s email is in large measure cumulative of arguments made in the Response, what is new is the Respondent’s statement that he might be willing to sell the disputed domain name at some price. To the extent that this statement may be of potential relevance to the third element of the Policy, the Panel believes it appropriate to include the communication in the administrative record of this proceeding. Nonetheless, the Panel further notes that the Respondent’s statement must be considered in the context of the email of which it is a part. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established trademark or service mark rights in “Estate Diamond Exchange”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Where the asserted mark consists of terms that are descriptive of the goods or services to which the mark is sought to be applied, however, secondary meaning must be proven. Evidence looked to by both the USPTO and United States courts as relevant in determining secondary meaning includes evidence as to (1) the length and continuity of a mark’s use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir.1987).
In this instance, the Complainant does not have a United States trademark registration for “Estate Diamond Exchange”, and relies exclusively upon a claim of common law rights. The Panel finds that “Estate Diamond Exchange” is significantly descriptive in relation to the Complainant’s second-hand jewelry business. The term “estate diamonds” commonly refers to second hand or used diamonds or diamond jewelry. In addition, “diamond exchange” has a commonly understood meaning in relation to businesses that buy and sell diamonds. Thus, to establish common law trademark or service mark rights in “Estate Diamond Exchange”, the Complainant must demonstrate that a relevant segment of the public has come to recognize “Estate Diamond Exchange” as a symbol that distinguishes the Complainant’s second-hand jewelry services from those of others.
The Complainant asserts that it has used “Estate Diamond Exchange” as a service mark in connection with its second hand jewelry business since 1993, serving approximately 40 customers per week. The Complainant further asserts that it has consistently and extensively advertised with the mark on buildings and in newspapers, telephone directories (Yellow Pages), radio and television since 1994. The Complainant has submitted vendor invoices evidencing billings to the Complainant for advertising displays and lettering on the Complainant’s building in January 1994, direct mail advertisements for October and December 1997, newspaper advertisements for August 1999 and June 2005, Yellow Pages advertisements for June 1998, April and May 1999, and December 2005, and advertising fees invoiced from a media agency in June and July 2001.
Given the highly descriptive nature of “Estate Diamond Exchange” when used in relation to second hand jewelry services, the Panel does not consider the evidence proffered by the Complainant sufficient to establish secondary meaning. Other than the invoices referred to above, the Complainant has submitted no evidence as to sales, advertising and promotional activities, or expenditures related to promotion and marketing. The Complainant has submitted no evidence of unsolicited media coverage or evidence of sales to support its claim. Further, and significantly, the Complainant has submitted no examples of advertising or other displays reflecting the Complainant’s use of “Estate Diamond Exchange” as a mark. The Panel acknowledges that the Complainant has been doing business under the business and trade name “Estate Diamond Exchange” since 1993. Nevertheless, the Panel is unable to reliably conclude from the Complainant’s submissions that the relevant purchasing public has come to recognize “Estate Diamond Exchange” as a mark – that is, a symbol that distinguishes the Complainant’s second-hand jewelry services from those of others. Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy. C. Conclusion
In view of the Panel’s determination with respect to the first element of the Policy, it is unnecessary for the Panel to consider the second and third elements of the Policy in reaching its decision. The Policy provides a remedy only in circumstances where the domain name registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. 8. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: September 16, 2010
1 The Response appeared to elect to have this matter submitted to a three-member panel; however, the Respondent advised the Center on August 20, 2010 that he would be unable to pay the fees required under the Rules. The Center then advised the Respondent that in the absence of any further response regarding the constitution of the panel, the Center would proceed on or after August 24, 2010 to appoint a single panelist. Having heard nothing further from the Respondent on this issue, the undersigned was appointed as the sole panelist in this matter on September 2, 2010.
2 Although the Respondent’s email was sent to the Complainant’s counsel, it appears from the salutation in the email that the Respondent may have intended that the communication be with the Case Manager assigned by the Center to this matter.
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