The Complainant is De Beers Intangibles Limited of London, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Qiuqin Bao of Jinhua, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
The Center verified that the Complaint together with the amended 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 February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 5, 2019. On the same date, in reply to the Panel notification, the Respondent sent an email communication to the Center requesting information concerning the UDRP procedure and said Panel notification. On March 6, the Center sent an email communication to the Respondent forwarding copies of the notification of the Complaint.
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 a British group of companies in the diamond field, which operates internationally and plays a leading role in the diamond exploration, mining, retail, trading, and industrial manufacturing sectors. It has operated for over hundred years, trading under the mark DE BEERS, which derives from its company name and its companies’ group name.
The Complainant uses the mark DE BEERS to identify and promote its products and services, holding several trademark registrations for this mark, alone or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:
European Union Trademark No. 1793421 DE BEERS, word mark, registered April 3, 2002, in classes 3, 9, 14, 16, 18, 20, 25, 35, 37, 40 and 41;
International Trademark No. 741492A DE BEERS, word mark, registered August 4, 2000, in classes 3, 6, 8, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 34, 35, 36, 37, 38, 39, 40, 41 and 42, which is based on a Swiss Trademark and covers Antigua and Barbuda, China, Cuba, Georgia, Iceland, Japan, Kenya, Liechtenstein, Morocco, Monaco, Republic of Moldova, Norway, Serbia, Russian Federation, Sierra Leone, Turkmenistan and Turkey;
The Complainant and its group owns several domain names comprising their trademarks, which are linked to their corporate websites used in connection to their products and services, including registered on April 20, 2000. The Complainant’s group owns as well mobile applications, including De Beers Events, which is free, available in Apple’s App store.
The disputed domain name was registered on July 28, 2014 by the Respondent. It resolves to a website displaying an image of a smart phone including some references on its screen in English language, namely “ 3G version”, “debeers 3G” and “it’s mobile age”, as well as other references in Chinese characters, which may be translated as a welcome message and a navigation column. The navigation column leads to a “home” section, a section identified as “mobi mobile domain” and a “contact information” section, all in Chinese language. The “mobi mobile domain” section contains a message in Chinese language, which may be translated as “the world’s only global top-level domain for mobile phones and mobile devices; the mobile Internet and Internet are the most valuable and versatile domain names ever”. The “contact information” section includes the Respondent’s name and cell phone number. 5. Parties’ Contentions A. Complainant
Key contentions of the Complaint may be summarized as follows:
Through the Complainant’s extensive use over more than a hundred years of its DE BEERS mark, as well as large sums invested in advertising and promotional campaigns worldwide for over half a century, this mark has become a distinctive identifier associated with its companies’ group, garnering substantial global goodwill and acquiring international reputation.
At the time the Respondent registered the disputed domain name, the Complainant’s trademark portfolio was well stablished. However, the disputed domain name contains the substantial and distinctive element of the Complainant’s trademarks “de beers”, adding the Top-Level Domain (“.mobi”), which shows a clear intention to target the Complainant’s group and its trademarks, particularly emphasized by the use of the DE BEERS mark in its entirety in the disputed domain name.
Given the strong reputation of its DE BEERS mark, particularly in relation to diamonds and jewelry, no trader would choose the disputed domain name unless with the intention to create a false impression of association in order to defraud the public, attract business from the Complainant, misleadingly divert the public from its trademark or tarnish its reputation.
To the best of the Complainant’s knowledge, the Respondent is not known by the disputed domain name, nor does it hold any trademark or other intellectual property rights for the term “de beers”. Further, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, which does not resolve to a proper, functioning website, but rather to a page displaying an image of a smartphone including Chinese characters and references to “debeers 3G” and “it’s mobile age”.
The disputed domain name was registered and is being used in bad faith. Given the strong reputation of the DE BEERS mark, the Respondent must have been aware that the disputed domain name registration was a misappropriation of the valuable intellectual property rights and reputation attached to this mark.
The registration of the disputed domain name has prevented the Complainant from registering a domain name that corresponds to its mark, in breach of paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its trademarks in breach of paragraph 4(b)(iv) of the Policy.
Due to the notoriety of the Compliant and its trademarks, the Respondent would never be capable of using the disputed domain name for any legitimate purpose, as the public would always assume there is an association with the Complainant and/or its mark DE BEERS.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The Respondent sent an email communication to the Center asking information about the proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel of a sole Panelist has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties. A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. This practice of disregarding the gTLD under the first element confusing similarity test is applied irrespective of the particular ordinary meaning of the gTLD (including with regard to “new gTLD”), although its meaning may however be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark DE BEERS. The disputed domain name incorporates the mark DE BEERS in its entirety with the sole addition of the gTLD “.mobi”. Therefore, the Complainant’s mark DE BEERS is directly recognizable in the disputed domain name, which is identical to the mark, and the gTLD “.mobi” is a technical requirement generally disregarded for the purpose of the analysis of the confusing similarity, which does not exclude the direct perception of the Complainant’s mark in the disputed domain name. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent has not been authorized to use the trademark DE BEERS. Furthermore, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the term “de beers”, has any Intellectual Property rights over this term, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complaint.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 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”.
The Panel notes that the gTLD “.mobi” may not justify in itself any rights or legitimate interests of the Respondent, as, although not referring to the Complainant’s core business, it may be related to the Complainant’s group mobile application, and the disputed domain name is identical to the Complainant’s trademark. See section 2.14, WIPO Overview 3.0.
A core factor in assessing fair use of the disputed domain name is that it does not falsely suggests affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name is identical to the Complainant’s trademark. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel also notes the extensive presence of the trademark DE BEERS over the Internet and its extensive use worldwide, including China, where the Respondent is located, as well as the extensive references over the Internet to the Complainant’s mobile application De Beers Events.
The content of the website linked to the disputed domain name suggests a commercial promotion of a smart phone identified as “de beers 3G”. However, the Panel notes it does not provide any price or technical details about said smart phone to offer it for sale or contain any link to other websites, which provide information about this product offering its selling, and the Panel has not been able to find any reference to the said model of smart phone over the Internet. Further, this website refers to the value of the gTLD “.mobi”, but the Panel notes it does not contain information (or refer to any other website containing information) on how to register “.mobi” domain names, or any reference or link to a “.mobi” Registrar. Furthermore, this website does not provide any reference to the absence of affiliation with the Complainant and its trademark. All these circumstances lead the Panel to consider that this website cannot be qualified as a bona fide offering of goods or services.
It is further remarkable that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name.
All the above-mentioned facts and circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the DE BEERS trademark, and did not have them in mind. Further, it is more likely than not that the Respondent knew as well about the Complainant’s mobile application. Several factors in this case lead to this conclusion.
The Panel notes the extensive presence of the trademark DE BEERS over the Internet, as well as its extensive use and promotion over half a century worldwide, including China where the Respondent is located.
The disputed domain name incorporates the Complainant’s trademark identically, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, with no apparent reasonable cause, right or legitimate interest on this name, as previously analyzed under the second element test.
The Panel further notes the extensive presence over the Internet of the Complainant’s mobile application De Beers Events and its availability in the Apple’s App Store, which would not probably go unnoticed to someone related to the smart phones’ business.
It is further remarkable that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name and not reply to the Complaint, although being informed and notified about it.
The Panel considers that all the above-mentioned circumstances points to the registration in bad faith of the disputed domain name.
The Respondents’ use of the disputed domain name corroborates the above conclusion. As analyzed under the second element text, it is associated to a website, which absence of concrete information leads the Panel to consider that, although suggesting a commercial promotion of a smart phone and/or services related to the registration of gTLD “.mobi” domain names, in reality it cannot be qualified as a bona fide offering of goods or services. This circumstance further leads the Panel to consider that it is more likely than not that, the main purpose of the said website may be the promotion of the disputed domain name in itself, providing contact information of the Respondent to prospect clients interested in acquiring it.
Other circumstances of this case may indicate that the Respondent is acting in bad faith, in particular: (i) the lack of any reference to the absence of affiliation with the Complainant and its trademark in the Respondent’s website; and (ii) the incomplete address of the Respondent in WhoIs, which only contains the information of the city, the province and the country.
The Policy’s non-exhaustive list of circumstances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Taking into account all cumulative circumstances of this case, the Panel considers that it is more likely than not that the disputed domain name was registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, misleadingly attracting Internet users to the Respondent’s website, and disrupting the Complainant’s business.
All the above-mentioned lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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.
Reyes Campello Estebaranz
Sole Panelist
Date: March 14, 2019
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