The Complainant is Rapaport USA, Inc. of Las Vegas, Nevada, United States of America ("United States"), internally represented.
The Respondent is Steve Jones, sj10 of Brentwood, Essex, United Kingdom of Great Britain and Northern Ireland ("UK"). 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 29, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Respondent sent an email communication to the Center on April 21, 2016 and April 26, 2016. The Center notified the parties on April 26, 2016 that the Center will proceed to Panel Appointment.
The Center appointed James Bridgeman as the sole panelist in this matter on May 6, 2016. 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 an international network of companies with diverse interests in the diamond and jewelry trades and establishments in many locations worldwide, including in New York and Las Vegas in the United States, Israel, Belgium, India, Dubai, United Arab Emirates and Hong Kong, China.
Martin Rapaport, is the founder, Chairman and Director of the Complainant's group of companies and he owns a large portfolio of trade mark registrations for the RAPAPORT mark in several jurisdictions across the world including the jurisdictions where the Parties reside:
- Community Trade Mark registration number CTM 003028370 RAPAPORT registered on September 22, 2004 for various goods and services in classes 14, 16, 35, 36, 38 and 42 and
- United States trade mark registration number 2715130 RAPAPORT, registered on May 13, 2003 for various goods and services in international classes 14, 16, 35, 36, 38 and 42.
Martin Rapaport has licensed the Complainant to use the RAPAPORT mark which it uses in connection with a number of business enterprises including "Rapaport auctions" which facilitates diamond dealers and traders with the purchase and sale of diamonds in global monthly auctions, for which it has established an Internet website to which the domain names and and resolve.
There is no information available about the Respondent except for the information in the Registrar's WhoIs database and the allegations set out in the Complaint.
The disputed domain name was registered on February 19, 2016. 5. Parties' Contentions A. Complainant
The Complainant relies on its rights as licensee of the RAPAPORT mark and submits that as a result of the substantial time, effort and money it has spent advertising and promoting the mark throughout the world, the RAPAPORT mark has become world famous and the Complainant has developed substantial goodwill in the mark.
The Complainant alleges that the disputed domain name , which is composed of the RAPAPORT mark and the word "London" is confusingly similar to the RAPAPORT mark as well as the Complainant's own domain names, and submits that the Respondent's use of the mark is likely to cause confusion among Complainant's customers and take advantage of Internet users looking to utilize the Complainant's services.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name , alleging that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent express or implied to use the RAPAPORT mark in a domain name. The Complainant further submits that there is not a noncommercial or fair use of the disputed domain name, but that the Respondent is intentionally using the Complainant's good name and reputation for its own unlicensed, unlawful and nefarious purposes.
The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name after the Complainant's RAPAPORT mark had become internationally known in the diamond and jewelry trades and the Complainant alleges that there can be no question of the Respondent's awareness of the fame of the RAPAPORT mark when the disputed domain name was registered.
The Complainant submits that the Respondent registered the disputed domain name in bad faith in order to attract and defraud customers by wrongfully and unlawfully capitalizing on the Complainant's well-known trademark for his own nefarious and illegal purposes, by sending fraudulent emails using the disputed domain name "@" to potential and/or existing Rapaport customers as participants and/or suppliers in Rapaport Auctions, with the purpose of taking advantage of the Complainant's good name and reputation for his own illicit gain.
The Complainant submits that by such modus operandi, the Respondent has on numerous occasions purported to be a representative of the Complainant's Rapaport Auctions London office (despite Complainant having no such office), and has contacted numerous potential and/or existing customers in, inter alia, the UK, as prospective participants and/or suppliers to Rapaport Auctions, using emails with the disputed domain name and holding himself out as a representative of the Complainant, thereby seeking to take delivery of diamonds and also attempting to collect funds from such unwary customers. The Complainant submits that the Respondent has thereby attempted to defraud these individuals by using the Complainant's good name and reputation through its use of the Complainant's RAPAPORT trademark. The Complainant alleges that the Respondent has therefore intentionally attempted to attract customers, for both commercial gain, and nefarious unlawful activities as described above, by creating a likelihood of confusion with the Complainant's RAPAPORT trademark as to the source, sponsorship, affiliation or endorsement of the services he is referring to in his solicitous and fraudulent emails.
In support of these allegations the Complainant has furnished copies of what it claims to be email correspondence from the Respondent.
The Complainant submits that the Respondent has therefore registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not file a formal Response. On April 13, 2016, subsequent to filing the Complaint the Complainant notified the Center that it had filed a police report with the UK police against the Respondent in relation to the disputed domain name. The Center notified the Respondent that it has received this information and requested the Parties to keep the Center timely advised of any developments in this matter which may be of relevance to the present UDRP dispute.
On April 21, 2016, the Respondent sent an email to the Center, copying the Complainant, which stated "Dear all, I would like to advise all parties that this is news to me. I think you're all making a mountain out of a molehill. Please let me know your thoughts. Best regards, S. Jones"
On April 26, 2016 the Respondent sent a further one-line email requesting an updated on the proceedings, but once again containing no submissions on the substance of the dispute. 6. Discussion and Findings
Preliminary Issue
The Complainant furnished additional information subsequent to the Complaint and was advised that this information constituted a Supplemental Filing, and that it was a matter for the Panel to decide whether it should be admitted into evidence.
The Respondent received this communication and chose not to address either the allegations in the Complaint or the additional information.
For reasons given below it has not been necessary to consider the additional information and the Complainant succeeds on the basis of the initial Complaint which was not challenged. A. Identical or Confusingly Similar
This Panel finds that the disputed domain name is confusingly similar to the RAPAPORT trade mark in which the Complainant has rights as a licensee.
The disputed domain name is composed of the Complainant's mark in its entirety followed by a non-distinctive hyphen and the geographical name "London".
For the purposes of comparison the generic Top-Level Domain ("gTLD") ".com" may be ignored, the mark RAPAPORT is the distinctive element of the disputed domain name and in the view of this Panel the additional element "London" does not in any way serve to distinguish the disputed domain name from the Complainant's mark.
The Complainant has therefore satisfied the first element of the test in paragraph 4 of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been licensed to use the Complainant's distinctive mark, he is not commonly known by the disputed domain name and on the evidence he is using the disputed domain name to misrepresent that he has some business connection with the Complainant which he does not.
In the circumstances the burden of production shifts to the Respondent. Despite having been given the opportunity to respond to the allegations, he has failed to discharge that burden.
The Complainant has therefore satisfied the second element of the test in paragraph 4 of the Policy. C. Registered and Used in Bad Faith
This Panel is also satisfied that the disputed domain name was registered in bad faith. The Complainant has furnished evidence that the Respondent has used the disputed domain name to misrepresent that he has some business connection with the Complainant. The disputed domain name is composed of the Complainant's distinctive mark in its entirety in combination with the name of a city known as a center of international trade. The Complainant's trade mark had acquired an international reputation and goodwill prior to the date of registration of the disputed domain name. This Panel considers that it is improbable that the registrant of the disputed domain name would not have become aware of the Complainant's trade mark when the disputed domain name was registered. It is most probable that the disputed domain name was registered by a person who was aware of the Complainant, its rights in the RAPAPORT mark and its jewelry business and was in fact registered to refer to the Complainant and its business. On the balance of probabilities therefore the disputed domain name was registered in bad faith to take predatory advantage of the goodwill in the RAPAPORT mark.
The Complainant has also furnished evidence that the Respondent has used the disputed domain name in bad faith to misrepresent that he has some business connection with the Complainant and to mislead existing and potential customers by sending emails through an email address corresponding to the disputed domain name asking for money regarding the purchase of diamonds and signing as "RAPAPORT ® / Auctions". While the Respondent's emails to the Center after the commencement of the present proceeding may be taken as a denial of the Complaint, the Respondent has not made any submissions or produced any evidence to refute or to challenge the veracity of the evidence of these very serious allegations.
This Panel therefore finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
The Panel makes this finding on the balance of probabilities and makes no finding on the question of fraud which is a matter beyond the jurisdiction 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 name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: May 9, 2016
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