The Complainant is Gemological Institute of America, Inc.（美国宝石学院), United States of America (“United States” or “U.S.”), represented by DLA Piper LLP (US), United States.
The Respondent is 陈家伟（Chen Jia Wei), 广西梧州市星悦珠宝有限公司(Guang Xi Wu Zhou Shi Xing Yue Zhu Bao You Xian Gong Si), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2021, 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 27, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 8, 2021, the Complainant filed an amended Complaint in Chinese and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 18, 2021. 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 BackgroundThe Complainant is a non-profit institute established in the U.S. and was established in 1931 to promote research and education in the field of gemology and jewelry arts. The Complainant owns a portfolio of trademarks protecting the mark GIA (word and device marks), including, amongst others, the following trademark registrations: U.S. trademark registration 2236549 for the GIA word mark, registered on April 6, 1999 and U.S. trademark registration 6019290 for the GIA device mark, registered on March 24, 2020.
The disputed domain name was registered on May 12, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an active webpage, where the Respondent is advertising itself as a “third-party gem inspection and supervision institution established in accordance with the law”, and is also offering diamond grading and identification services.
5. Parties’ Contentions A. ComplainantThe Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for GIA, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant states that it is the leading source of knowledge, standards, and education in gems and jewelry, including diamonds, colored stones, and pearls, and that it established the “4Cs” standard of diamond grading, which, it states, remains the global standard for evaluating diamond quality.
The Complainant provides evidence that the disputed domain name is linked to an active webpage, where competing services are offered to the public by the Respondent. The Complainant essentially contends that such use does not confer any rights or legitimate interests on the Respondent in respect of the disputed domain name, and constitutes use in bad faith of its trademarks for GIA. The Complainant also contends that the Respondent is using the Complainant’s GIA mark to capitalize on the goodwill that the Complainant has developed in the mark, and to draw customers away from the Complainant’s legitimate offerings.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the ProceedingPursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
According to the Registrar’s verification response, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed its Complaint in English and filed its amended Complaint in Chinese, and requests that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.
The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: (i) the Complainant’s request that the language of the proceeding be English; (ii) the lack of comment on the language of the proceeding, and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center in the notification of the Complaint email sent in both English and Chinese to present its response and arguments in either English or Chinese, but chose not to do so); (iii) the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; (iv) the fact that the website linked to the disputed domain name is entirely in English, from which the Panel deducts that the Respondent is able to understand and communicate in English; (v) and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this proceeding shall be English.
6.2. Discussion and Findings on the Merits A. Identical or Confusingly SimilarThe Panel finds that the Complainant has shown that it has valid rights in the mark GIA, based on its use and registration of the same in a number of trademark registrations.
Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark for GIA, combined with the term “jewelry”, preceded by a hyphen. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which remains easily recognizable. The addition of the term “jewelry” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel also finds that the hyphen may be disregarded as it is considered merely a punctuation mark (see also Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui),WIPO Case No. D2021-1685).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate InterestsOn the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Moreover, upon review of the facts, the Panel notes that the disputed domain name directs to an active webpage, where the Respondent is advertising itself as a “third-party gem inspection and supervision institution established in accordance with the law”, and is also offering diamond grading and identification services, which are services that are in direct competition to the Complainant’s services. This shows the Respondent’s intention to divert consumers for commercial gain to such website, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for GIA.
Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks and containing the entirety of the Complainant’s trademark combined with the descriptive term “-jewelry” that is related to the Complainant’s business, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad FaithThe registration of the disputed domain name, which contains the entirety of the Complainant’s trademarks, was clearly intended to mislead and divert consumers to the disputed domain name. Given the distinctiveness of the Complainant’s trademark and the combination of such trademark in the disputed domain name with the descriptive term “-jewelry” that is related to the Complainant’s business, the Panel finds that the registration of the disputed domain name was obtained in bad faith as it clearly targets the Complainant’s trademark. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in GIA and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith by the Respondent, the Panel notes that the disputed domain name directs to an active webpage, where the Respondent is advertising itself as a “third-party gem inspection and supervision institution established in accordance with the law”, and is also offering diamond grading and identification services, which are services that are in direct competition to the Complainant’s services. The Panel finds that this means that the Respondents intentionally and actively attempt to attract Internet users, for commercial gain, to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks. The Panel finds that this is clear evidence that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.
7. DecisionFor 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,
Deanna Wong Wai Man
Sole Panelist
Date: November 1, 2021