The Complainant is Neil Lane Enterprises, Inc., Los Angeles, California, United States of America, represented by Weil, Gotshal & Manges LLP, United States of America.
The Respondent is Giorgi Charkviani, Saburtalo, T’bilisi, Georgia. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2011. On May 25, 2011, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On May 27, 2011, UK2 Group Ltd. 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 noted that the Registrar listed in the Complaint is not the Registrar of the disputed domain name and sent an email communication to the Complainant on June 7, 2011 providing the Registrar’s name and contact information and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 8, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on July 25, 2011. 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 California corporation that designs high-quality jewelry products including bridal jewelry, such as, engagement rings and wedding bands) and other jewelry products containing diamonds, gemstones, precious metals and crystals.
The Complainant’s name is derived from the corporation’s President and principal jewelry designer Mr. Neil Lane. Mr. Lane is one of the most renowned jewelry designers in the world. He has appeared in numerous television shows, is routinely profiled in domestic and international magazines and newspapers alongside his designs. The Complainant invests significant capital into the promotion of its reputation and marks and has received widespread attention for its jewelry, particularly bridal jewelry, as well as the celebrities that wear those designs.
The Complainant has been selling and promoting its jewelry under the brand NEIL LANE since 1981. The NEIL LANE trademark was first registered in the United States of America in 2005 and has subsequently registered in Canada and in the European Union’s Community Trade Mark system.
The Respondent registered the disputed domain name on December 18, 2010.
On March 18, 2011 the Complainant sent a cease and desist letter and email to the Respondent demanding that the disputed domain name be transferred to the Complainant. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark with the only difference being the insertion of the generic term “engagement rings” and the generic top level domain “.com”. When the generic term and the “. com” are disregarded the disputed domain name is identical to its mark. Also, the disputed domain name incorporates the Complainant’s mark in its entirety establishing confusing similarity regardless of the other terms in the disputed domain name.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name and is attempting to capitalize on the Complainant’s goodwill by diverting Internet traffic intended for the Complainant’s own site. According to the Complainant the Respondent is not known as or doing business under the name “Neil Lane” and the Complainant has never granted any authorization to the Respondent to use its name or its marks. Similarly, the Respondent is neither a licensee of the Complainant nor associated with the Complainant in any way.
The Complainant provided evidence that the website of the disputed domain name contains information about the Complainant (including about the Complainant’s business, designs and photographs of celebrities wearing the Complainant’s designs) and links to competitive jewelry websites. The Complainant contends that such use of the Respondent’s website is not a legitimate use of the disputed domain name. In fact it is apparent that the goal of the Respondent’s website is to capitalize off the goodwill and value in the Complainant’s mark and divert Internet traffic from the Complainant’s site, redirecting those users to the Respondent’s website and other sites offering engagement rings, diamonds and other jewelry for the Respondent’s own commercial gain. At the foot of the homepage of the disputed domain name is a disclaimer “Neil Lane Engagement Rings This Website is not connected with the Neil Lane Official Website”. Such a disclaimer should not militate against a finding that the Respondent is attempting to capitalize off the Complainant’s famous name and mark.
The Complainant contends that the Respondent has exhibited bad faith by registering the disputed domain name with knowledge of the Complainant’s famous mark, by diverting consumers from the Complainant’s own website for its own commercial gain and by using the disputed domain name to advertise other goods and services and marketing itself as being associated with the Complainant’s famous marks which causes consumer confusion as to the source, sponsorship or endorsement of the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(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 of 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
The Complainant provided evidence demonstrating that it has registered rights in the trademark NEIL LANE since 2005.
The disputed domain name consists of the Complainant’s trademark, in its entirety, together with the term “engagementrings”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the generic/descriptive term “engagementrings”, which cannot be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil,WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc. Jerald Blume,WIPO Case No. D2004-0871 the addition of a descriptive term does not serve to distinguish a disputed domain name but, serves to accentuate rather than to diminish the confusing similarity.
In view of the above, the Panel finds that the Complainant’s trademark is readily recognizable as such within the disputed domain name despite the addition of a generic term and overall it is likely to lead to Internet user confusion. Therefore the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. Consequently, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Panel finds that the Respondent is trying to benefit from the reputation of the Complainant’s widely-known trademark. The Respondent has chosen to use a domain name that contains the Complainant’s trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name resolves to a website providing links to sites of the Complainant’s competitors. According to the Complainant’s unrefuted allegations, the website provides links to websites that would generate revenue for the Respondent. No rights or legitimate interests derive from this type of use of another’s trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a domain name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant’s case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name represents deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name, the website includes a review of the Complainant and its engagement rings and it includes a disclaimer specifically referring to the Complainant. As expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection of domain names is so obviously connected to the complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated, “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
Noting that the Respondent has not rebutted any of the Complainant’s claims, the Panel considers that there is a strong probability that the Respondent’s awareness of the Complainant’s business was the motivation for registering and using the disputed domain name. It is clear to the Panel that the Respondent’s choice of the domain name was not merely coincidental but was a deliberate action to gain a commercial advantage. As stated in Oakley, Inc. v. Joel Wong/Blue H- INC., WIPO Case No. D2010-0100 “It is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”.
The use by the Respondent of a disclaimer it its website does not overcome a finding of bad faith. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 the panel concluded “Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website, however explicit,…to clothe the domain name with legitimacy”. Also, see Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869.
On the basis of the above, the apparent false contact details registered by the Respondent with UK2 Group Ltd and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used 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 be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: August 8, 2011
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