The Complainant is Columbia Insurance Company of Omaha, Nebraska, United States of America (“U.S.”), represented by Hovey Williams LLP, U.S.
The Respondent is PrivacyP / Web Master Internet Services Private Limited of Nobby Beach, Australia, and Maharashtra, India, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Tirupati Domains and Hosting Pvt Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center”) on August 29, 2011. On September 1, 2011, the Center transmitted by email to Tirupati Domains and Hosting Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On September 6, 2011, Tirupati Domains and Hosting Pvt Ltd. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2011 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 amended Complaint on September 12, 2011.
The Center verified that the Complaint together with the amended 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 September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 12, 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’s predecessor in interest adopted the name HELZBERG over 95 years ago for use in connection with jewellery retailing. The Complainant is the owner of registered trademarks and service marks for the mark HELZBERG and HELZBERG DIAMONDS including U.S. registered service mark number 2169312 for the word mark HELZBERG DIAMONDS registered on June 30, 1998 in International Class 35 (retail jewellery store services). These trademarks are licensed to the Complainant’s licensee, Helzberg Diamond Shops, Inc., which operates approximately 234 physical retail jewellery store locations throughout the U.S. together with an online jewellery store found at “”. Helzberg Diamond Shops, Inc. has been recognised in various national awards including most recently the 2011 Women’s Jewelry Association’s Corporate Award for Excellence.
The disputed domain name was registered on November 27, 2005. At the date of filing of the Complaint, the website associated with the disputed domain name consisted of jewellery-related advertisements which pointed to websites operated by competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant further contends as follows: Due to extensive and long time use, the Complainant’s trademarks and service marks are famous and well-known throughout the U.S. The Complainant (through its licensee) and its predecessor in interest have acquired much goodwill through their continuous and prominent use of these trademarks and service marks, which have appeared in nationwide television advertising, local printed and radio advertising, online advertising, building signage, packaging, on the website at “”, on promotional materials such as theatre programmes, shopping mall posters, direct mail and point of purchase signage.
The Respondent has employed the use of a deceptive technique to exploit misdirected traffic, often known as typo-squatting. If an online user inadvertently adds an “s” to the end of “HELZBERG” (as in “Helzberg’s Diamonds”), the Respondent’s website will appear. Several UDRP panel decisions have recognized that a domain name consisting of a simple misspelling coupled with an intent to divert Internet traffic almost always results in confusing similarity.
The Complainant and its counsel could find no evidence that the Respondent has made any bona fide offering of goods or services in connection with HELZBERG or any similar variations thereof, in good faith, or has acquired any rights in the mark. The Respondent is not commonly known by the disputed domain name. The Respondent is not a supplier of jewellery or a provider of retail jewellery services. There is no evidence of the Respondent having made use of, or having made any demonstrable preparations for the use of, or being the owner of any registered trademarks for the words HELZBERG or HELZBERG DIAMONDS (or HELZBERGS DIAMONDS) or any similar variations in connection with a bona fide offering of goods or services.
The Respondent is using the website at the disputed domain name for the purpose of revenue-generating “click throughs” to other sites. The Respondent intends to mislead or divert consumers or tarnish the service mark at issue. The Respondent appears to profit from the disputed domain name by including “related searches” that in turn provide links to the goods and services of the Complainant’s licensee’s competitors.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of that website or the products or services identified therein. The Respondent was and is intending to exploit the Complainant’s well-known reputation and goodwill. In particular, the Respondent has registered the disputed domain name and used it to confuse consumers and mislead them into thinking that the Respondent’s website is an authorized website of the Complainant’s or its licensee’s through which the public can purchase authentic products or services sold by the Complainant’s licensee. The Respondent is using the disputed domain name to direct online visitors to competitors of the Complainant’s licensee by providing links to companies selling the same types of goods and services, for instance, “wedding rings” and “diamond engagement rings”.
The Complainant owns the domain name , which is the primary domain name associated with its licensee’s retail jewellery business. The Respondent’s use of a plural form of the Complainant’s registered domain name perpetuates confusion in the marketplace and evidences the Respondent’s bad faith to misappropriate and palm off of the goodwill associated with the Complainant’s trademarks and service marks. The WhoIs record associated with the disputed domain name clearly states that the disputed domain name is listed for sale. This is further clear evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel is satisfied that the Complainant has established that it has rights in the trademark HELZBERG DIAMONDS by virtue of its registered trademark noted in the Factual Background section above. In comparing the trademark to the disputed domain name the Panel first disregards the generic top level domain “.com” as is customary in cases under the Policy and any white space in the trademark as such spaces are not permitted within domain names. It can then be seen that the disputed domain name is almost identical to the Complainant’s trademark, the only difference being the addition of the letter “s” between the words “Helzberg” and “Diamonds”. In the Panel’s view the additional letter does not serve to distinguish the disputed domain name from the Complainant’s trademark and, on the contrary, it appears to have been added purely to represent a possessive variant of the first word within the Complainant’s trademark, namely “Helzberg’s”, the apostrophe being omitted for technical reasons in that, as with white spaces, these are not permitted within domain names. The Complainant’s trademark remains the dominant element of the disputed domain name notwithstanding the addition of the letter “s” and this in the Panel’s opinion renders the disputed domain name confusingly similar to that trademark.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this second element by making out a prima facie case not rebutted by the respondent. The Respondent did not respond to the Complaint, and therefore did not submit any evidence regarding any rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has not made any bona fide offering of goods or services in connection with the disputed domain name and is not commonly known by it. The Complainant also asserts that there is no evidence of the Respondent having made any demonstrable preparations for the use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further points out that the disputed domain name is being used to point to a website which provides sponsored links that direct the visitor to the Complainant’s licensee’s competitors. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has provided no explanation as to its use or proposed use of the disputed domain name, nor has it set out details of any rights or legitimate interests in it. The Panel is satisfied that in the absence of an alternative explanation, the Respondent selected the disputed domain name because it is a typographical and/or grammatical variant of the Complainant’s trademark and of the Complainant’s licensee’s online identity, with a view to receiving Internet traffic from consumers who are intending to visit the Complainant’s licensee’s website but who mistakenly type the Complainant’s trademark in the possessive form “HELZBERG’S DIAMONDS”. When such traffic is received at the Respondent’s website, the Respondent seeks to direct it to competitors of the Complainant’s licensee via the advertisements therein provided. The Panel is satisfied that the Respondent is not using the disputed domain name for a bona fide offering of goods or services and that its present use cannot confer any rights or legitimate interests upon the Respondent. Furthermore, the Panel cannot conceive of any possible legitimate interest or right that the Respondent might have had or could have claimed in the disputed domain name.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel’s review of the website associated with the disputed domain name in conjunction with the Complainant’s submissions has demonstrated to the satisfaction of the Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that web site, as contemplated by paragraph 4(b)(iv) of the Policy. The Panel notes in particular that the Respondent has selected a close typographical and grammatical variant of the Complainant’s trademark and is using this to publish advertising hyperlinks which direct the visitor to websites of the Complainant’s licensee’s competitors. The Panel considers that the Respondent can only have selected and used such a domain name with intent to target the Complainant’s trademark and to maximize the number of visits to the Respondent’s website from confused consumers.
No alternative explanation as to the nature of the Respondent’s registration and use of the disputed domain name is apparent to the Panel and the Respondent has chosen to offer no justification of its actions regarding the disputed domain name, in the face of the Complainant’s submissions, despite having been provided with the opportunity to do so. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith and accordingly that the third element under the Policy has been established. 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.
Andrew D. S. Lothian
Sole Panelist
Dated: October 24, 2011
Full & Egal Universal Law Academy