The Complainant is De Beers Intangibles Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / ? ?, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 July 3, 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 July 8, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent sent an informal email communication to the Center on July 29, 2019. The Center therewith sent the Parties a possible settlement email. The Respondent sent an email communication to the Center on August 4, 2019 related to settlement discussions. In response, on August 5, 2019, the Complainant informed the Center that would not submit a request for suspension, and would like to continue with the proceedings. Accordingly, the Center notified the Parties that would proceed to panel appointment on August 5, 2019.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 19, 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 name was created on March 6, 2019, and it is currently inactive. The Complainant has provided evidence that the disputed domain name used to resolve to a pay-per-click (“PPC”) website. 5. Parties’ Contentions A. Complainant
The Complainant contends that for over 100 years De Beers has been one of the world’s largest diamond mining companies and suppliers of rough diamonds. As such, the DE BEERS trademark has become a distinctive identifier associated with De Beers and the services it provides, and has garnered substantial global goodwill and reputation.
The Complainant submits that the disputed domain name is at least confusingly similar to the DE BEERS trademark as it fully incorporates the latter, with the mere addition of the generic term “token”.
The Complainant further claims that the Respondent has no rights or legitimate interests with respect to the disputed domain name, since (i) the Respondent is not known by the disputed domain name nor does the Respondent hold any trademark or other intellectual property rights in the DE BEERS trademark, nor has it been given any permission by the Complainant to register or use any domain names incorporating the DE BEERS trademark; (ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, considering that the disputed domain name used to resolve to a PPC website.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent, since (i) the Respondent must have been aware of the DE BEERS trademark while registering the disputed domain name; and (ii) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s DE BEERS trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant. However, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the DE BEERS trademark in which the Complainant has shown to have rights.
The disputed domain name incorporates the Complainant’s DE BEERS trademark in its entirety, merely adding the suffix “token”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
The Panel is of the opinion that the mere addition of a term, such as “token”, to the Complainant’s trademark does not avoid confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see, e.g., Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Pei Rong Wong,WIPO Case No. D2019-1880).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding.
Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case raising numerous grounds each supported by earlier UDRP decisions that the Respondent lacks rights or legitimate interests by stating that the Respondent has never been known by the name “De Beers” or the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s trademark. There is no evidence that the Respondent has ever engaged in any legitimate business under the Complainant’s trademark. On the contrary, the Complainant has shown several circumstances to support the Respondent’s absence of rights, amongst which the timing of the registration of the disputed domain name in 2019, while the Complainant has been one of the world’s largest diamond mining companies for over 100 years. None of these facts have been rebutted by the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owners of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the DE BEERS Mark at the time the disputed domain name was registered. The registration of the disputed domain name in awareness of the DE BEERS Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
From the record, the Panel notes that the disputed domain name used to resolve to a PPC website, including links related to the Complainant’s business, which amounts use in bad faith (see section 3.5, WIPO Overview 3.0). The current inactive use of the disputed domain name by the Respondent does not prevent the Panel’s findings of bad faith use.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) 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.
Alexandre Nappey
Sole Panelist
Date: September 10, 2019
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