The Complainant is De Beers Intangibles Limited of London, United Kingdom, represented by Bird & Bird LLP, United States of America (“United States”).
The Respondent is Malcolm De Beer, Coinit of Dundee, South Africa. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 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 February 1, 2019.
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 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 7, 2019. 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 field of diamonds, which operates internationally and plays a leading role in diamond exploration, mining, retail, trading, and industrial manufacturing sectors. It has operated for over a hundred years, trading under the mark DE BEERS, which derives from its company and its companies’ group names.
The Complainant uses the mark DE BEERS to identify and promote its products and services, holding an extensive trademark portfolio 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 disputed domain names were registered on July 1, 2018 under a privacy registration by the Respondent. Each of them resolves to the same parking page solely containing the phrase “reserved for ”. 5. Parties’ Contentions A. Complainant
Key contentions of the Complaint may be summarized as follows:
The international nature of the Complainant’s business is highlighted by the fact that it has mines in four countries (one of which is South Africa), and has sales operations in eight countries (South Africa included), marketing polished diamonds to consumers internationally through the brands Forevermark and De Beers Jewellers. Forevermark’s diamonds are available in more than 2300 stores in 26 markets, and, in 2018, De Beers Jewellers launched a new online store, which ships to 100 countries through 10 different languages’ sites.
Through the Complainant’s extensive use over more than hundred years of DE BEERS mark, as well as large investments in worldwide advertising and promotional campaigns for over half a century, DE BEERS mark has become a distinctive identifier associated to its companies’ group, garnering substantial global goodwill and acquiring international reputation. The goodwill associated with DE BEERS mark belongs to the Complainant needing a formal assignment to be passed to any third party, not having assigned any rights to the Respondent.
At the time the Respondent registered the disputed domain names, the Complainant’s trademark portfolio was well established. However, the disputed domain names contain the substantial and distinctive element of the Complainant’s trademarks “de beers” followed by the word “international”, which shows the Respondent’s intention to associate himself with the Complainant’s group and its trademarks’ reputation, particularly emphasized by the use of the DE BEERS mark in its entirety in each of the disputed domain names.
Given the strong reputation of its DE BEERS mark, no trader would choose the disputed domain names 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 the Complainant’s trademark, or tarnish its reputation.
To the best of the Complainant’s knowledge, the Respondent is not known by the disputed domain names, 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 names, which do not resolve to a proper, functioning website, but rather to a parking page only including the expression “reserved for ”.
The disputed domain names were registered and are being used in bad faith. Given the strong reputation of the DE BEERS mark, the Respondent must have been aware that the disputed domain names’ registration was a misappropriation of the Complainant’s valuable intellectual property rights.
The disputed domain names’ registration has prevented the Complainant from registering domain names that correspond to its mark, as per paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website associated with the disputed domain names by creating a likelihood of confusion with the Complainant and its trademarks, as per paragraph 4(b)(iv) of the Policy.
Due to the notoriety of the Complainant and its trademarks, the Respondent would never be capable of using the disputed domain names 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 names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 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. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the 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, irrespective of its particular ordinary meaning, although said meaning may 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 names incorporate the mark DE BEERS in its entirety with the addition of the term “international”, which does not avoid the direct perception of the mark. The Complainant’s mark DE BEERS is directly recognizable in the disputed domain names, and their respective gTLDs (“.com”, “.info”, “.capetown”, “.joburg”, “.mobi”, “.net”, “.org”) are technical requirements, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are 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 names 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 names. 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.”
A core factor in assessing fair use of the disputed domain names is that they do not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademark in its entirety adding a geographical term (“international”), which also may point to the Complainants international group as well as its worldwide reputed trademarks and business. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel further notes the extensive presence of the trademark DE BEERS over the Internet and its extensive use worldwide, including South Africa, where the Respondent is located, which is one of the countries where the Complainant exploits mines and has sales operations.
The website linked to the disputed domain names is a mere parking page not providing information about any preparations to use the disputed domain names in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
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 names, not replying to the Complaint.
The Respondent’s surname, disclosed by the Registrar, coincides with the Complainant’s mark (“De Beers”). However, this fact alone is not enough to establish rights or legitimate interests. In addition, the Respondent did not submit evidence of being commonly known by such 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 established. 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 names’ registration, this Panel considers unlikely that the Respondent did not know about DE BEERS mark, and did not have it in mind. 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 worldwide over half a century, including South Africa where the Respondent is located. It is further to be noted that South Africa is one of the countries where the Complainant’s group has operated over the years, exploiting mines and selling its products.
The disputed domain names incorporate the Complainant’s trademark in its entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, adding the geographical term “international”, which may also point to the Complainant, its worldwide business and its internationally reputed trademark.
The Respondent’s surname (as disclosed by the Registrar) coincides with the Complainant’s mark (“De Beers”). However, the Respondent did not provide any evidence for being known as “De Beers” or any other explanation, not replying to the Complaint.
The Panel considers that the above-mentioned cumulative circumstances point to bad faith in the disputed domain names’ registration.
The Respondent’s use of the disputed domain names may corroborate the above conclusion. As analyzed under the second element text, each of the disputed domain names is associated to the same parking page only containing the phrase “reserved for ”. The said parking page does not include any reference to its owner and/or to any planned legitimate business, nor does it contain any reference to the absence of affiliation with the Complainant and its reputed trademark.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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 names were registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s websites, and disrupting the Complainant’s business.
All the above-mentioned lead the Panel to conclude that the disputed domain names were registered and are 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 names 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 names , , , , , , and be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: March 16, 2019
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