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.
Respondent is Wing Chee Chin of Hong Kong, China, represented by Chow, Griffiths & Chan, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2014. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. Also on April 16, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 27, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 5, 2014. 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
Complainant belongs to the De Beers group of companies (hereinafter, “De Beers” or “Complainant” refers to Complainant and other De Beers companies unless otherwise indicated). De Beers is, and for many years has been, one of the world’s leading miners and suppliers of rough diamonds. Complainant has used the mark DE BEERS for more than 100 years for such commercial activity, and holds numerous registered trademarks in various jurisdictions for the term DE BEERS. There is no dispute in this case that DE BEERS is a well-known mark in the area of diamonds and jewelry and associated goods and services.
Respondent does not dispute that he was aware of the DE BEERS mark when he registered the Domain Names in February 2014. He registered the Domain Name first and then, five days later, he registered the Domain Name. On both occasions, he claims that he was surprised to see that Complainant had not registered the Domain Names.
Respondent, who works in the information technology field, claims that he registered the Domain Names as soon as he decided to propose marriage to his girlfriend. According to Respondent, his girlfriend is fond of diamonds and her favorite brand is DE BEERS. Respondent alleges that his plan was to maximize his chances at a positive response to his marriage proposal by setting up a website at the Domain Names which would contain personalized content of sentimental value to the girlfriend. The website would be shown to his girlfriend in the setting of a candlelight dinner accompanied by roses and an engagement ring.
Respondent claims that he planned to propose to his girlfriend in December 2014. For this reason, he states, he had not yet set up the website to which the Domain Names resolve. Rather, the Domain Names currently resolve to a Registrar parking page, at which various commercial hyperlinks are found. Some of these links take the visitor to websites offering products in competition with those of Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied the three elements required under the Policy to effectuate a transfer of the Domain Names. B. Respondent
Respondent’s main argument is that he is not acting in bad faith because his motives, as outlined in the previous section, are innocent. Respondent also asserts that Complainant is guilty of reverse domain name highjacking. Nevertheless, in the “Consent to Remedy” section of his Response, Respondent states: “The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain names on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.” The Panel notes in this vein that Respondent is represented by counsel in this case. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no dispute that Complainant holds rights in the strong DE BEERS mark. In addition, the parties agree that the Domain Names are identical or confusingly similar to the mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied by Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
In view of Respondent’s express consent, presumably with the guidance of his counsel, to the remedy sought by Complainant, viz., a transfer of the Domain Names to Complainant, the Panel is tempted to go no further and simply order the transfer of the Domain Names to Complainant. After all, in this streamlined proceeding, where Respondent was represented by counsel in fashioning a Response to the Complaint, the Response as submitted contains a rather clear statement of Respondent’s willingness to surrender the Domain Names. Whether this was Respondent’s true intent or a mishap on the part of counsel is not readily apparent from the record.
In any event, the Panel finds in favor of Complainant on the “rights or legitimate interests” issue because the Panel does not accept the veracity of Respondent’s story. First,
Respondent’s credibility would have been stronger if Respondent – represented by counsel – had supplied some type of evidence to corroborate his story. But there is none.
In addition, and perhaps more importantly, the Panel questions why, under Respondent’s account, he would have needed to register two Domain Names incorporating the DE BEERS mark. The second Domain Name would appear to serve no purpose in aid of Respondent’s purported plan to surprise his girlfriend with a customized romantic website. All Respondent has to say about the second Domain Name is that, five days after registering the first Domain Name (), he “thought he should protect the uniqueness of his proposal website” and therefore he registered the second Domain Name (). The Panel does not understand that explanation at all. If anything, it further undermines Respondent’s credibility.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of each of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Again, the Panel is prepared to conclude that Respondent’s explicit “Consent to Remedy” in his Response renders it unnecessary to consider the “bad faith” element. Nevertheless, for the reasons discussed earlier, the Panel does not believe Respondent’s explanation why he registered not one but two Domain Names incorporating the well-known DE BEERS mark. The Domain Names resolve to a parking page where commercial hyperlinks may be found. Respondent does not deny Complainant’s allegation that he may at some point derive revenue from these pay-per-click hyperlinks, but Respondent answers that anyone looking for DE BEERS diamonds and landing at Respondent’s admittedly “crude” website would immediately know that he or she is not at the actual DE BEERS site and move on. This may be true in many if not most instances, but it does not follow that the holder of a strong and well-known mark like DE BEERS has to tolerate occasional, even if relatively small, losses of business through initial interest confusion.
There is enough evidence in the record to conclude that Respondent is in bad faith under Policy paragraph 4(b)(iv). Complainant holds a well-known mark, and Respondent has appropriated that mark in two Domain Names which resolve to a website where commercial hyperlinks may be found. The Panel does not find Respondent’s story credible, and the appropriate inferences follow from that incredulity and the plausible allegations made by Complainant in this record.
The Panel concludes that Policy paragraph 4(a)(iii) has been satisfied by Complainant.1 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 Names and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: June 10, 2014
1 In light of the Panel’s finding for the Complainant, the Panel need not entertain the Respondent’s request for a finding of reverse domain name hijacking.
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