The Complainant is Neil Lane Enterprises, Inc. of Los Angeles, California, United States of America (“United States”), represented by Weil, Gotshal & Manges LLP, United States.
The Respondents are Giorgi Charkviani and Nika Bekauri of T’bilisi, Georgia. 2. The Domain Names and Registrar
The disputed domain name and are registered with UK2 Group Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2011. On November 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants of the disputed domain names respectively and providing the contact details. On November 24, 2011, the Center corresponded with the Complainant (copied to the Respondents in accordance with the Rules) to note that neither the Policy nor the Rules contemplate the filing of a single Complaint against more than one domain name holder. As such, whether to allow the inclusion of additional domain name holders in the Complaint is a matter that needs to be decided by the Panel. On November 28, 2011, the Complainant filed an amendment to the Complaint, requesting consolidation of the Respondents in the Complaint.
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 Respondents of the Complaint, and the proceedings commenced on December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 23, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on January 9, 2012. 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 Neil Lane Enterprises, Inc., a corporation incorporated under the laws of the State of California, United States, with its principal place of business in Los Angeles, California. The Complainant is a corporation that designs high-quality jewelry products, including but not limited to bridal jewelry (e.g., engagement rinks and wedding bands) and other jewelry products containing, for example, diamonds, gemstones, precious metals, and crystals. The Complainant has been selling and promoting its jewelry under the brand “Neil Lane” since 1981. The Complainant’s name is derived from the corporation’s president and principal jewelry designer: an individual named Neil Lane. The Complaint attaches media profiles of the Complainant’s designs and Mr. Lane himself, and descriptions of the Complainant’s business, as well as copies of television appearances by Mr. Lane.
The Complainant has registered marks for NEIL LANE with the United States Patent and Trademark Office (“USPTO”) since 2005, as well as Canadian and Community marks. The president of the Complainant provided an affidavit as to the investment of the Complainant to promote its reputation and marks. The Complainant is also the registrant of a number of domain names incorporating its mark, including e.g.: , , , and . The Complainant has maintained a website at “www.” since 2001.
According to the WhoIs database, the first Respondent (Nika Bekauri) is the registrant of the disputed domain name , and the second Respondent (Giorgi Charkviani) is the registrant of the disputed domain name . The Complainant believes that the first Respondent is an alias of the second Respondent. The Complainant points out that the second Respondent is the administrative and technical contact for both the disputed domain names. The Complainant points out that the second Respondent was also a prior respondent in proceedings involving the Complainant: Neil Lane Enterprises, Inc. v. Giorgi Charkviani,WIPO Case No. D2011-0906 (involving the domain name registered with the same registrar as in this case). The websites to which the disputed domain names refer are similar in appearance and nearly identical in terms of content. The two Respondents’ email addresses (as indicated in the WhoIs database) are also nearly identical. The Complainant refers to previous UDRP decisions which considered the consolidation of multiple respondents to be appropriate in circumstances where the domain names were registered to the same registrar and involved nearly identical websites: Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659.
Having provided no response, the Respondents submitted no information about their activities, including whether they are separate persons in fact. According to the Registrar’s verification response, both the disputed domain names were registered in January 2011. 5. Parties’ Contentions A. Complainant
The Complainant states that the facts in this case are essentially identical to the facts in Neil Lane Enterprises, Inc. v. Giorgi Charkviani,WIPO Case No. D2011-0906. The Complainant submits that deference be paid to this decision and that the disputed domain names be accordingly transferred to the Complainant.
The Complainant otherwise makes the allegations under paragraph 4(a) of the Policy. The Complainant states that the disputed domain names are confusingly similar to the Complainant’s trademark NEIL LANE, registered in the United States in 2005. The disputed domain names incorporated the Complainant’s mark in its entirety: the only differences with the Complainant’s mark being the (i) insertion of the generic term “engagement rings” and (ii) the insertion of the top-level domains “.net” and “.org”. By reference to prior UDRP decisions, the Complainant states that these elements are immaterial for the purposes of assessing similarity. A finding of confusing similarity would be consistent with the previous WIPO UDRP case involving the same parties.
The Complainant also says that the Respondents lack rights or legitimate interests in the disputed domain names, and are attempting to capitalize on the Complainant’s goodwill by diverting traffic intended for the Complainant’s website. The Respondents are not known as, or doing business under the name “Neil Lane”. The Complainant has never granted the Respondents authorization to use its marks, and the Respondents are not an authorized licensee of the Complainant. The Complainant provided evidence of the websites to which the disputed domain names referred in November 2011. Both websites contained information about the Complainant and competitive jewelry websites, including pictures of the Complainant’s designs and links and advertisements for its competitors. The Complainant also notes that the Respondents are seeking to create an association with the Complainant by the small print on the bottom of the Respondents’ websites which read “© Neil Lane Engagement Rings”. The Complainant states that this indicates use which intentionally trades on the fame of another and which cannot constitute a bona fide use under the Policy.
The Complainant also alleges that the disputed domain names were registered and are being used in bad faith, which it claims is demonstrated by the factual scenario set out above. The Complainant argues that it can be assumed that the Respondents knew of the Complainant and its trademarks when registering the disputed domain names, given the Complainant’s longstanding use in commerce of its marks, and the specific details regarding the Complainant on the Respondents’ websites. The Complainant says that the disputed domain names are so obviously connected with the Complainant that their very use by the Respondents suggests opportunistic bad faith. By reference to the previous WIPO UDRP case involving the same parties (decided in the Complainant’s favor) the Complainant says that the Respondents have engaged in a pattern of abuse registration. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below, immediately after a consideration of the consolidation of the Complainant against the two Respondents. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Consolidation of the Complaint
The Policy and Rules do not provide explicitly for the consolidation of a complaint against multiple respondents. The Policy and Rules proceed on the basis that a single complaint must be filed against a single respondent (which may include a complaint involving multiple domain names). As such, paragraph 1 of the Rules defines the “respondent” in the singular: as “the holder of a domain-name registration against which a complaint is initiated”. Paragraph 3(c) of the Rules also provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder” (emphasis added).
In this case, the issue therefore is whether there is, as a matter of fact, a “single” respondent. Neither the Policy nor Rules require that separate complaints be filed simply because differently named registrants are recorded in the WhoIs database (when there is in fact one entity). There are good reasons of policy for such an approach – otherwise, a respondent could register domain names under multiple aliases to frustrate the intent of the Policy.
As noted by the Complainant, previous panels have considered it appropriate to consolidate a complaint against notionally multiple respondents in certain circumstances. Those circumstances usually constitute some evidence of there being a single respondent in fact. For example, as recently noted by the panel in Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins.,WIPO Case No. D2010-1699, the relevant question “is whether, regardless of the details recorded on the register, the domain names are de facto controlled by the same entity.”
The Panel has considered that the facts of this case support a conclusion that there is a single entity-in-fact behind the two registrants, and therefore that it is appropriate for there to be a single complaint. Whether the actual name of that person is Giorgi Charkviani, Nika Bekauri or some other name is not material to this conclusion. The relevant facts supporting this conclusion are as follows:
- The Respondent has provided no response to the Complaint. As such, the prima face case of the Complainant (that Nika Bekauri is an alias for Giorgi Charkviani) has not been challenged.
- In the absence of a response or other direct evidence that the named registrants are in fact separate entities, the Complainant has established a persuasive circumstantial case on this issue.
- The disputed domain names are relevantly identical.
- The websites to which the disputed domain names resolved are relevantly identical.
- The disputed domain names include very similar contact details.
- The disputed domain names were registered at around the same time (January 22 and January 28, 2011).
- The disputed domain names were registered to the same registrar.
A number of similar factors have been considered relevant in previous UDRP decisions under the Policy which found that multiple named respondents could be treated as a single respondent-in-fact: see e.g. FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino in this name and under various aliases, WuWeb Pty Ltd, Alichec Inc., Belroots Pty Ltd, Crystal Image Pty Ltd, Elarson & Associates Pty Ltd, Lidnick Webcorp, Liquid SEO Limited, Loshedina Inc, Luchichang Pty Ltd, Netmilo Pty Ltd, Orel Hlasek LLC, Volchar Pty Ltd, Web Pescados LLC, Webatopia Marketing Limited, ZincFusion Limited, Chin-Hui Wu, Domain Administrator, Denholm Borg, Denesh Kumar, Marcelos Vainez, Alex Ovechkin, Vlad Obchikov,WIPO Case No. D2010-1237. B. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in its NEIL LANE trademark. Among others, the Complainant provides evidence of its registration with the USPTO. The Panel also finds that the disputed domain names are confusingly similar to that mark. The disputed domain names incorporate the Complainant’s mark entirely. It is well established that the entire incorporation of a complainant’s well-known mark can be sufficient for a finding of confusing similarity. These circumstances supported such a finding in the previous WIPO case involving the Respondent to which the Complainant refers: Neil Lane Enterprises, Inc. v. Giorgi Charkviani,WIPO Case No. D2011-0906. In that case, the then panel noted that “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).”
In addition to this, the disputed domain names include the term “engagement rings”. As evidenced in the Complaint, that term is closely associated with the business of the Complainant. As such, the addition of that term would serve to reinforce the potential for confusion.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1, the burden is on a complainant to establish the absence of a respondent’s rights or legitimate interests in a disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant has established strong prima facie case against the Respondent. The Complainant provides affidavit and other supporting evidence of its business and, to the extent it seems discoverable, the nature of the Respondent. The disputed domain names revert to websites which appear to trade on the fame of the Complainant’s mark, by including advertisements and links to the Complainant’s competitors, despite the disputed domain names themselves being confusingly similar to the Complainant’s mark. Such a use cannot be legitimate for the purpose of the Policy. Previous panels have found that similar factual circumstances support a finding that the respondent lacks rights or legitimate interests: see e.g. Accor v. Eren Atesmen,WIPO Case No. D2009-0701.
As noted above, the disputed domain names include the Complainant’s mark entirely and add a common term (“engagement rings”) that is closely associated with the nature of the Complainant’s business. The Respondent has registered disputed domain names which, on their face, have a close connection with the Complainant. There is little other evidence to suggest that the Respondent has some other independent rights in the term “Neil Lane” or “Neil Lane engagement rings”. In the very similar circumstance in Neil Lane Enterprises, Inc. v. Giorgi Charkviani,WIPO Case No. D2011-0906, the then panel found that the Respondent lacked rights or legitimate interests.
These circumstances support a finding against the Respondent under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and have been used in bad faith, for the following reasons.
Firstly, as evidenced in the Complaint, the Complainant’s mark appears to be well-known in relation to jewelry, including engagement rings. The Respondent has registered confusingly disputed domain names that incorporate terms closely associated with the Complainant’s products. This suggests very strongly that the Respondent was motivated to register and use the disputed domain names because of the value of the Complainant’s marks.
Secondly, the Respondent has registered multiple domain names that incorporate the Complainant’s mark and the term “engagement rings” which is associated with that mark. Such a registration would be an unlikely coincidence for a single domain name. It is even less likely to have been a coincidence for two domain names. (And also the additional domain name considered by the panel in Neil Lane Enterprises, Inc. v. Giorgi Charkviani, supra.)
Thirdly, the Respondent has used the disputed domain names in connection with a website that advertises products of the Complainant’s competitors. Similar circumstances were present in the previous WIPO case involving the Respondent in which the then panel noted that “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’.” The Complainant makes the same argument in this case which is unrebutted by the Respondent.
Fourthly, there seems little doubt that the Respondent must have been aware of the Complainant when it registered and then used the disputed domain names. As noted above, the disputed domain names appear uniquely associated with the Complainant. The content of the Respondent’s website (including various references to the Complainant and its products) clearly indicate the Respondent’s awareness of the Complainant.
Finally, the Respondent provide little evidence to rebut the allegations made against it, or to provide contrary evidence to suggest that its registrations were made in good faith. The Respondent provides no explanation or evidence which would indicate that there is some objective connection between it or its business and the disputed domain names.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 names and be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: January 23, 2012
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