The Complainant is De Beers Intangibles Limited, of London, United Kingdom of Great Britain and Northern Ireland represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Moon Park of Uzbekistan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2013, the Registrar 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 May 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 21, 2013. 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 part of the De Beers group of companies (“De Beers”). De Beers is one of the world’s largest diamond mining companies and suppliers of rough diamonds. De Beers has operated for more than 100 years and currently sorts and values some two thirds of the world’s diamond supply by value.
The Complainant owns much of the intellectual property rights for De Beers. The Complainant has held trade marks for the word mark DE BEERS (the “DE BEERS Mark”) since at least 1966. It currently holds registrations for the DE BEERS Mark in the United Kingdom, Europe and in Turkey.
The Domain Name was created on May 4, 2008. It currently resolves to an inactive site promising that it is the “Future Home of Something Cool”. However prior to the notification of the Complaint, the Domain Name resolved to Internet site (“Respondent’s Website”) in Turkish that appears to offer a number of jewellery and diamond related sponsored links for competitors of the De Beers. The Respondent’s Website also contains photos of jewellery and diamonds and makes reference to De Beers and the slogan “a Diamond is Forever”. The word “turkiye” means “Turkey” in Turkish. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s DE BEERS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the DE BEERS Mark. It owns trade marks for the DE BEERS Mark in the United Kingdom, Europe and Turkey and enjoys significant worldwide reputation in those marks.
The Domain Name consists of the DE BEERS Mark in its entirety with the addition of the word “turkiye”. The word “turkiye” means “Turkey” in.Turkish. The Domain Name contains the DE BEERS Mark in its entirety and the mere addition of a geographic term does not distinguish the Domain Name from the DE BEERS Mark. Rather the Domain Name will confuse Internet users into believing that the Respondent is operating the Complainant’s or De Beers’ website for Turkey.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant or De Beers to register the Domain Name. The Respondent’s Website contains a number of jewellery and diamond related sponsored links for products offered by competitors to De Beers. The Respondent appears to be trying to pass its website off as linked to the Complainant’s or De Beers’ Turkish website. Such use does not amount grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that advertises jewellery in competition with, and while making reference to the Complainant and De Beers. The Respondent is trying to give the impression that it is one of the international outlets of the Complainant and it is anticipated that this use will divert customers from the Complainant and De Beers due to the presence of links to competitor websites. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the DE BEERS Mark, having registrations for DE BEERS as a trade mark in the United Kingdom, Europe and Turkey.
The Domain Name consists of the DE BEERS Mark and the word “turkiye”. The word “turkiye” means “Turkey” in Turkish. In addition the addition of a geographical term to a trade mark is generally not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v Persona l/ decohouse, decohouse,WIPO Case No. D2011-097; BP p.l.c.v. Kang-Sungkun Portraits Production,WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad,WIPO Case No. D2001-1493). An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant, offering its diamonds and related services to the Turkish market. The Panel finds that the Domain Name is confusingly similar to the Complainant’s DE BEERS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant or De Beers in any way. It has not been authorized by the Complainant or De Beers to register or use the Domain Name or to seek the registration of any domain name incorporating the DE BEERS Mark or a mark similar to the DE BEERS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent was using the Domain Name to operate a website that, without the permission of the Complainant or De Beers:
(a) marks reference to the Complainant’s DE BEERS Mark, as well as its well-known tag-line “A Diamond is forever”, potentially indicating that it is in some way connected with the Complainant or De Beers or offers its goods; and
(b) appears to offer diamonds, or at least links to locations in which a user could purchase diamonds in direct competition with De Beers, from which the Respondent is likely to receive some revenue.
Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(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 the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant/De Beers and its reputation in the DE BEERS Mark at the time the Domain Name was registered. The Complainant/De Beers and the Respondent operate in the same industry, that being diamonds. The Respondent’s Website used to make frequent reference to the DE BEERS Mark on its site and appeared to at least imply that it is known as or has a connection with De Beers or the Complainant. The registration of the Domain Name in awareness of the DE BEERS Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website offering diamonds or at least offering links, on what appears to be a pay-per-click bases to websites offering diamonds. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the DE BEERS Mark. The Panel finds that such use amounts to use in bad faith.
The current inactive use of the disputed domain name by the Respondent does not prevent the Panel’s findings of bad faith use.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: June 24, 2013
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