The Complainant is Diamond Trust Consultancy (UK) Limited of Bournemouth, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Ladas & Parry, United States of America (“United States”).
The Respondent is Kim, James of Gwang-ju, Republic of Korea, represented by ESQ PC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2015. On November 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. The due date for the Response was extended at the request of the Respondent in accordance with paragraph 5(b) of the Rules to December 11, 2015. The Response was filed with the Center on December 11, 2015. On December 18, 2015, the Complainant submitted a request to submit a supplemental filing.
The Center appointed Alistair Payne, Debrett G. Lyons and The Hon Neil Brown Q.C. as panelists in this matter on January 5, 2016. The Panel finds that it was properly constituted. Each member of 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 the subsidiary of the Diamond Trust Group of companies that manages the Group’s assets including its trademarks. The Group operates internationally and is involved in a diverse range of industry sectors including finance, mining operations, jewellery, personnel recruitment, information and communication technology, medicine, healthcare, property and tourism development. The Group began operations in 1989, and currently operates in the United States, United Kingdom, Europe and numerous developing countries.
The Complainant owns various trade mark registrations for the DIAMOND TRUST word mark and also for the combined DIAMOND TRUST word and logo marks in the United States, European Union, and United Kingdom. In particular the Complainant owns United Kingdom mark number 2274798A for the word mark DIAMOND TRUST dating from September 9, 2005 and United States registration number 3379872 for the DIAMOND TRUST combined word and logo mark dating from February 12, 2008.
The Respondent is a domain name broker based in the Republic of Korea. He purchased the disputed domain name at a NameJet auction in October 2015 after the failure of the previous owner of 17 years to renew its domain name registration. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in the DIAMOND TRUST word mark as noted above and that its mark is wholly incorporated into the disputed domain name. As a result the Complainant submits that the disputed domain name is identical or confusingly similar to its DIAMOND TRUST mark.
The Complainant says that there is no evidence that the Respondent made any effort to use the disputed domain name in connection with a bona fide offering of goods or services, nor is there anything to suggest that it has been commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Complainant says that the disputed domain name resolves to a landing page containing a variety of advertising links to potential competitors of the Complainant which is not a bona fide or legitimate use or a legitimate noncommercial fair use of the disputed domain name. In addition the Complainant says that the Respondent is offering the disputed domain name for sale through “DomainNameS” which is further evidence that he is not making a bona fide or legitimate use of the disputed domain name.
As far as bad faith is concerned the Complainant says that the Respondent has intentionally used the disputed domain name domain to divert legitimate Internet traffic intended for the Complainant to the Respondent’s advertisements and sponsored listings and presumably has received click-through fee income from the site, all of which is evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b) (iv) of the Policy. Additionally, the fact that Respondent is offering the disputed domain name for sale for a sum higher than the registration costs is also representative of bad faith. The Complainant notes that on October 29, 2015, in response to the Complainant’s representative’s inquiry as to the potential price for transfer of the disputed domain name, that a representative of “DomainNameS” advised that “The lowest we will go at this point is $95,000.00 USD based on a quick completion”. Further says the Complainant, the Respondent’s knowing and deliberate use of the disputed domain name consisting entirely of the Complainant’s DIAMOND TRUST mark and without any space between the two terms is sufficient to demonstrate the Respondent’s bad faith. B. Respondent
The Respondent notes that he is based in the Republic of Korea and did not have any knowledge of the Complainant or of its alleged trade mark when it registered the disputed domain name. The Respondent submits that he purchased the disputed domain name after its prior owner (who had owned the disputed domain name for 17 years) did not renew it. The Respondent purchased the disputed domain name at an auction run by NameJet in October, 2015. Since acquiring the disputed domain name at this auction the Respondent says that it has continued to use the disputed domain name in good faith in connection with its common descriptive meaning and submits that there is absolutely no evidence that he has targeted the Complainant’s business.
Being a domain name broker, the Respondent says that it registered the disputed domain name for the same reason it has registered many other domain names containing descriptive English words, including but not limited to and , namely because of its inherent value as a descriptive term. The Respondent notes that he also owns many other domain names that incorporate common words, as well those that include the word “diamond” such as: , , , , , and . It also notes that it owns a lot of domain names that include the word “trust” such as: , , , , , , , , , , and . The Respondent notes that his standard practice is that after domain names are registered they are hosted by “P”, a domain name parking service that displays pay-per-click advertising links on hosted domain names powered by its software. He says that P’s automated technology generates links based upon the contextual meaning of the terms and words contained in the domain name and that he did not select these links with the intent to profit from any trade mark owners, or from the Complainant. The Respondent says that accordingly he did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s web site. 6. Discussion and Findings
On January 8, 2016 the Complainant made a supplemental filing. The Panel issued a Panel Order on January 14, 2016 inviting the Respondent in the interests of fairness to make a supplemental filing by way of response within seven days and extending the decision due date to January 28, 2016. The Respondent made its supplemental filing in response on Thursday January 21, 2016. The Panel exercises its discretion under the Policy to admit both supplemental filings to the record. A. Identical or Confusingly Similar
The Complainant owns various registered trade mark rights around the world that incorporate its DIAMOND TRUST mark. In particular it owns United Kingdom mark number 2274798A for the word mark DIAMOND TRUST dating from September 9, 2005. The disputed domain name wholly incorporates the Complainant’s DIAMOND TRUST mark and has no distinguishing element in front of the “.com” root. Accordingly the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
In making out a prima facie case under this element, the Complainant has submitted that there is no evidence that the Respondent has made any effort to use the disputed domain name in connection with a bona fide offering of goods or services, nor is there anything to suggest that it has been commonly known by the disputed domain name, or that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name. Further the Complainant says that the disputed domain name resolves to a landing page containing a variety of advertising links to potential competitors of the Complainant which is not a bona fide or legitimate use or a legitimate noncommercial fair use of the disputed domain name and that the Respondent has offered the disputed domain name for sale through “DomainNameS”.
In rebuttal, the Respondent says that it did not know about the Complainant or its rights in the DIAMOND TRUST mark when it acquired the disputed domain name at auction and that it purchased it on the basis that it comprised a combination of two generic words and on the basis that it had previously been owned by the same registrant for 17 years but had lapsed and therefore was unlikely to be of interest to third parties. The Respondent further says that it owns numerous domain names containing the words “diamond” or “trust” and that it saw the disputed domain name as an obvious addition to its portfolio as a domain name broker. The Respondent notes that it is based in the Republic of Korea and had no idea of the Complainant’s mark or business activities when it acquired the disputed domain name at auction.
In the Panel’s view the fact that a Respondent may be a domain name broker and acquired the disputed domain name to hold in its portfolio for potential re-sale does not necessarily imply that the Respondent had no rights or legitimate interests in the disputed domain name at the time of acquisition provided that it had no intention to target the Complainant (X6D Limited v. Telepathy, Inc.,WIPO Case No. D2010-1519). The question is whether there is evidence that the Respondent knew of, or was wilfully blind to, the Complainant’s rights at the time of acquisition and nevertheless sought to acquire the disputed domain name, possibly for re-sale to the Complainant, or possibly for use in bad faith in an illegitimate manner contrary to the Complainant’s interests?
Although the Complainant owns registered trade mark rights in the DIAMOND TRUST mark in the United Kingdom, European Union and the United States, there is very little, if any, evidence before the Panel to suggest that such a degree of renown attached to the Complainant’s mark that the Respondent, based in the Republic of Korea, should have been aware of the Complainant’s registrations or of its business under the DIAMOND TRUST mark. The Complainant’s business apparently operates in diverse areas which, based on the Complainant’s own submission and its website, include consultancy, finance, mining operations, jewellery, personnel recruitment, information and communication technology, medicine, healthcare, property and tourism development in various geographic regions, however there is little supporting evidence of these businesses or of the level of renown attaching to the DIAMOND TRUST mark, before the Panel. Notably, there is no evidence that the Complainant owns trade mark rights in the Republic of Korea, or that it operates a well reputed business there, or anywhere in the surrounding geographic region under the DIAMOND TRUST mark that might have made it more likely that it might necessarily have come to the Respondent’s attention.
A domain name broker seeking to acquire a disputed domain name, whether at auction or otherwise, cannot reasonably expect to acquire other than the most simple of generic or descriptive terms as a disputed domain name with impunity under the Policy without carrying out at least some basic level of checks of existing third party trade mark interests in the disputed domain name. Although the scope of this exercise will depend upon the nature of the domain name concerned and should not generally extend to international trade mark searches, at a bare minimum and where the domain name comprises more than a common generic or bare descriptive term, it is not unreasonable to expect a potential acquirer to carry out a simple Internet search to see if there are any third party interests that are so obvious that it ought to be aware of them.
While neither party has provided evidence of such a search, the Panel notes that on entering the search term “DIAMONDTRUST” into a Google search engine it was unable to see in the first few pages of results any reference that obviously related to the Complainant or its businesses. While this result is merely indicative and does not necessarily reflect the results that a similar search in the Republic of Korea may have elicited, it is an indication that there is not an obvious international reputation and goodwill attaching to the Complainant’s DIAMOND TRUST mark such that the Respondent should necessarily have been aware of it prior to acquisition of the disputed domain name. This inference is reinforced by the lack of evidence provided by the Complainant, whether in its Complaint or in its supplemental filing, concerning the extent and repute of its businesses under the DIAMOND TRUST mark.
In these circumstances the Panel sees no reason that the Respondent based in the Republic of Korea should necessarily have been aware of the Complainant’s DIAMOND TRUST mark or of its relevant businesses under that mark at the date of acquisition of the disputed domain name. Further and as set out below under Part C, the Panel does not consider that manner in which the disputed domain name has been used to date amounts to a use which is not legitimate or bona bad fide in the circumstances. Accordingly, the Panel finds that the Respondent has successfully rebutted the prima facie case made out by the Complainant and that the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It follows from the Panel’s discussion under Part B above that the Panel does not consider that the circumstances of the Respondent’s registration of the disputed domain name amount to registration in bad faith. In particular the Panel notes that there is insufficient evidence to infer that the Respondent based in the Republic of Korea should have been aware of the Complainant or of its DIAMOND TRUST trade mark registrations or businesses. In addition the disputed domain name was acquired at auction following the non-renewal by its previous owner of 17 years and the Complainant could equally have participated in this auction.
Previous UDRP panels have gone so far as to suggest that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, then ordinarily the trade mark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is ‘strong’ or ‘weak.’ (CB Publishing, LLC v. Akway Int’l et al., No. 926506 (NAF Apr. 18, 2007)). While this Panel considers that every case must be considered on its individual facts and that it is not necessary or appropriate to endorse this approach here, it is indicative of a general consistency of approach between panels in similar circumstances.
In short there is insufficient evidence before the Panel to infer that the disputed domain name was acquired by the Respondent in order to sell it to the Complainant and other than for the purposes of holding as part of its domain name portfolio for eventual resale in the course of its usual domain name broking activity. In this regard the Panel notes that the Respondent’s offer to sell the disputed domain name for USD 95,000 was elicited by request of the Complainant and does not amount to targeting of the Complainant by the Respondent. The mere fact that the proposed sale price represents many multiples of the registration costs is not in the absence of other factors necessarily indicative of bad faith.
The Complainant asserts that the fact that the disputed domain name resolves to what appears to be a pay per click parking page is evidence of use of the disputed domain name in bad faith. The Respondent says that it is his standard practice to have the domain names in his portfolio hosted in this manner with automatically generated “pay per click links”. Having reviewed the links on the page the Panel notes that they relate to diamonds, jewellery, and furniture and clothing retail stores. The page does not feature links resolving to entities operating in the consultancy, IT and finance fields which appear to be the key areas of activity noted on the Complainant’s home page apart from jewellery. In the absence of additional supporting evidence of competitors of the Complainant being targeted by these links the Panel does not find that there is sufficient evidence in the circumstances to infer bad faith.
As a result the Panel finds that the disputed domain name has neither been registered nor used in bad faith and the Complaint fails under this element of the Policy.
The Panel is not prepared to grant the Respondent’s request for a finding of reverse domain name hijacking against the Complainant. Even if the Complainant’s case has little substance, in the particular circumstances the Panel does not consider that the Complaint was motivated by bad faith on the part of the Complainant and therefore a finding of reverse domain name hijacking would not be appropriate. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
Debrett G. Lyons
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: January 27, 2016
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