The Complainant is De Beers Intangibles Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“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 August 21, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 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 August 23, 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 August 27, 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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 26, 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 the De Beers Group of Companies (De Beers). The Complainant is one of the largest diamond mining companies and suppliers of rough diamonds.
The Complainant launched its advertising campaign “A diamond is forever” in 1947.
In addition, the Complainant owns numerous trademark registrations around the world for the term A DIAMOND IS FOREVER, among others:
- A DIAMOND IS FOREVER, European Union Trademark Registration, Registration No. 003430279, registered in May 13, 2005; and
- A DIAMOND IS FOREVER (& Design), Registration No. 014499115, registered in October 19, 2016.
Furthermore, the Complainant is the owner of the following domain names, among others:
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The Disputed Domain Name was registered on March 8, 2019. The Disputed Domain Name is being used to display adult content. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant has argued that the Disputed Domain Name is confusingly similar to the Complainant’s trademark since it contains a pluralized version of its trademark A DIAMOND IS FOREVER with hyphens between each word.
In addition, these similarities have the intention of encouraging Internet users to believe that the Respondent’s website is associated with the Complainant.
Rights or legitimate interests
The Complainant states that the Respondent is not known by the Disputed Domain Name nor does it hold any registered trademark.
The Complainant further alleges that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name since it resolves to a website displaying pornographic content.
Registration and use in bad faith
The Complainant submits that it its improbable that the Respondent would not have been aware of the Complainant’s trademark when registering the Disputed Domain Name.
Furthermore, the Respondent’s registration of the Disputed Domain Name has also prevented the Complainant from registering it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has trademark rights in the term “A diamond is forever”.
This test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.7).
The Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant’s trademark A DIAMOND IS FOREVER, since the Disputed Domain Name consists of the entirety of the Complainant’s trademark with only slight variations such as the addition of hyphens between the words and the pluralized version of the Complainant’s trademark.
Pluralizing the Complainant’s trademark by adding the letter “s” and changing the word “is” for the word “are”, plus adding a hyphen between each term does not provide sufficient distinction from the Complainant’s trademark. Previous UDRP panels have also held that “pluralizing Complainant’s trademark does not avoid confusingly similarity between the disputed domain name and the mark” (see Dr. Ing. H.c. F. Porsche Aktiengesellschaft v. John Smith,WIPO Case No. D2014-1859).
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name for several decades. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on March 8, 2019, while the Complainant’s A DIAMOND IS FOREVER trademark registration No. 003430279 was registered in May 13, 2005. In addition, the Complainant launched its advertising campaign “A diamond is forever” in the year 1947.
The Panel is of the view that the Respondent registered the Disputed Domain Name in bad faith since the Respondent altered the Complainant’s trademark by pluralizing the A DIAMOND IS FOREVER trademark. Therefore, the Panel concludes that the Respondent was aware of the Complainant’s rights when he registered the Disputed Domain Name.
Furthermore, the Respondent’s use of the Disputed Domain Name causes consumers to be diverted to pornographic websites. Previous decisions have held that the use of a disputed domain name to divert consumers to a pornographic site is evidence of registration and use in bad faith, regardless of the registrant’s motivation (See, e.g., Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich,WIPO Case No. D2006-0743; Six Continents Hotels v. Seweryn Nowak,WIPO Case No. D2003-0022; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187).
In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainant’s trademark, the Respondent’s use of the Disputed Domain Name to direct users to commercial pornographic websites, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitutes bad faith.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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.
Pablo A. Palazzi
Sole Panelist
Date: October 10, 2019
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