The Complainant is De Beers UK Limited of London, United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"), represented by Bird & Bird LLP, Australia.
The Respondent is International Diamond Corporation Pty Ltd. / Mr. Van Iperen of Sydney, Australia, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Address Registration Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2016. The Response was filed with the Center on August 8, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 22, 2016. 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 A. Complainant
The Complainant is a company incorporated in the United Kingdom and part of the De Beers group of companies, the world's largest diamond miners and suppliers of rough diamonds by value ("De Beers"). De Beers first used the trade mark A DIAMOND IS FOREVER (the "Trade Mark") in 1949, and has been using the Trade Mark continuously since that date in relation to the marketing and sale of its diamond products worldwide. The Complainant is the owner of Australian trade mark registration number 981162 for the Trade Mark, registered since December 5, 2003 in classes 14 and 35. B. Respondent
The Respondent is a company incorporated in the State of New South Wales, Australia. C. The Disputed Domain Name
The disputed domain name was registered on February 27, 2016. D. The Website at the Disputed Domain Name
The disputed domain name has been resolved to a parking website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith. B. Respondent
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered or subsequently used in bad faith. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The Respondent made no submissions in relation to this issue, but simply provided details of the pending Australian trade mark application No. 1782955 dated July 13, 2016, filed in the name of Mr. Van Iperen, for registration of the Trade Mark in Australia in Class 36 in relation to real estate services (the "Respondent's Trade Mark Application").
The Respondent's Trade Mark Application is not relevant to the first element under paragraph 4(a) of the Policy.
The disputed domain name is identical to the Trade Mark.
Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent seeks to rely on the Respondent's Trade Mark Application and asserts in the Response as follows:
"As the complainant clearly demonstrated that they showed no commercial interest in the domain name, we commercially speaking considered alternate appropriate uses for this name and have made application to utilize and register a trademark 'adiamondisforever' in context of the Real Estate Industry Class 36 – to ensure that there is no infringement on Debeers Trademark Class 14 and 35. At this stage we are awaiting further approvals before we move forward with and further development works utilizing this domain name".
The above assertion does not sit well with the name of the Respondent, "International Diamond Corporation Pty Ltd", which suggests that the Respondent is involved in the diamond industry.
The Panel also notes that the Respondent's Trade Mark Application was filed on the same date of the Complainant herein – which casts serious doubt on the Respondent's assertions of genuine rights or legitimate interests in respect of the disputed domain name.
In any event, the Respondent has not provided any evidence to support the above bare assertion of its plans to use the Trade Mark in relation to real estate services.
The Panel finds that the mere fact of Mr. Van Iperen having recently filed an application for registration of the Trade Mark cannot, of itself, give rise to any rights or legitimate interests on the part of the Respondent (or of Mr. Van Iperen) in the disputed domain name. A pending trade mark application does not, of itself, confer any trade mark rights on the applicant in respect of the applied-for mark. Given the overall circumstances of this case (i.e., the Respondent's Trade Mark Application is identical to the Trade Mark, the Respondent's (conceded) history of bad faith use of domain names which are confusingly similar or identical to the Complainant's trade marks (see Section C below), and the Respondent's stated rationale for filing the Respondent's Trade Mark Application), the Panel considers that such Trade Mark application was done by the Respondent primarily to circumvent the application of the Policy.
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The disputed domain name has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish genuine rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy. C. Registered or Used in Bad Faith
The Complainant contended that Mr. Van Iperen has a history of registering domain names which infringe the Complainant's trade mark rights, and exhibited copies of the decisions in two previous domain name proceedings brought by the Complainant against Mr. Van Iperen - one under the Policy involving four "." domain names (see De Beers UK Limited v. Scott van Iperen,WIPO Case No. DAU2016-0004), and one under the Uniform Domain Name Dispute Resolution Policy involving one ".com" domain name (see De Beers UK Limited v. Scott van Iperen, 14088959380,WIPO Case No. D2016-0167) – in favour of the Complainant and ordering transfer of the relevant domain names.
The Respondent does not dispute the Complainant's evidence in this regard, stating in the Response (which was signed and filed by Mr. Van Iperen):
"The complainant mentioned that previously I was associated with registering domain names and using them in bad faith. This is partly correct as we do currently own over 400 domain names (.com, .) that we utilize them in the Real Estate, Diamonds, Jewellery business sectors".
The Respondent has conceded that it was aware of the Complainant and of its prior rights in the Trade Mark prior to the Respondent's registration of the disputed domain name.
The Panel finds that, in all the circumstances, the Respondent's passive use of the disputed domain name, together with the factors outlined above (and also the facts outlined under Section B above), are sufficient to amount to bad faith registration for the purposes of the third limb under paragraph 4(a) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered in bad faith. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 5, 2016
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