The Complainant is De Beers UK Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Bird & Bird LLP, Australia.
The Respondent is International Diamond Corporation Pty Ltd. 2. The Domain Name and Registrar
The disputed domain name is registered with Synergy Wholesale Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 16, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2017. The Center received an email communication from the Respondent on December 29, 2016. The Respondent did not file a formal Response.
The Center appointed David Stone as the sole panelist in this matter on January 24, 2017. 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, part of the De Beers group of companies, is one of the world’s largest diamond mining companies and suppliers of rough diamonds by value. In this respect, the Complainant is the proprietor of the registered trade mark A DIAMOND IS FOREVER in Class 14 (jewellery) and Class 35 (retail services in the field of jewellery) in Australia, registered from December 5, 2003.
The disputed domain name was registered by the Respondent on October 1, 2016 and was used to offer jewellery for sale. The Respondent has filed applications for Australian trade marks “ADIAMONDISFOREVER” in Class 36 for services relating to real estate and “DIAMOND IS FOREVER” in Class 14 (jewellery). These were applied for after the Complainant sent an auDRP complaint to the Respondent in relation to the domain name, . 5. Parties’ Contentions A. Complainant
The Complainant alleges that it has been using the slogan “A diamond is forever” since 1949 and that it has built up significant goodwill in the mark. The Complainant contends that the slogan and associated trade mark are widely recognised and associated with the Complainant and its products.
The Complainant’s contentions are as follows:
- That the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights, namely the slogan and registered trade mark A DIAMOND IS FOREVER. The disputed domain name contains almost all of the words contained in the slogan;
- That the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name is being used for a website promoting the sale of diamond jewellery and therefore misleadingly diverts Internet traffic away from the Complainant; and
- That the disputed domain name was registered and is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The email communication from the Respondent, received by the Center after the notification of the Complaint, simply confirmed the Respondent’s contact details. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Panel may find in favour of the Complainant in this proceeding and order a transfer of the disputed domain name, , provided the Complainant demonstrates that:
(i) The disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its registration and use of the trade mark A DIAMOND IS FOREVER including in Australia where the Respondent is based. The Complainant’s trade mark is very similar to the disputed domain name, differing only in the addition of the single letter word “a”, at the beginning. The Panel finds that the absence of a single letter word which does not alter the meaning or interpretation of the mark is not sufficient to vitiate the finding that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel finds that the Complainant has satisfied the condition set out in the Policy, paragraph 4(a)(i), and that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the non-exhaustive criteria which determine whether a domain name registrant has rights or legitimate interests in a domain name, including if it has:
(i) Prior bona fide offering of goods or services;
(ii) Common association with the disputed domain name; or
(iii) Legitimate non-commercial use.
In relation to paragraph 4(c)(i) above, the Respondent is using the site to promote the sale of diamond jewellery. The Complainant alleges that the Respondent has no prior affiliation with the sale of jewellery and has applied for a trade mark corresponding to the disputed domain name in a class relating to real estate in an attempt to legitimise its interests. This does not correspond with the Respondent’s name “International Diamond Corporation Pty Ltd”. The fact that this trade mark was applied for on the same day as the Complainant launched other auDRP proceedings against the Respondent casts doubt on the legitimacy of the use of the disputed domain name.
The Panel notes that in previous decisions where the overall circumstances demonstrate that the trade mark was not obtained for legitimate use, there has been a finding of no legitimate interest even where the respondent has registered a trade mark (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847).1
With regards to paragraph 4(c)(ii) above, the Complainant contends that the Respondent has no common association with the disputed domain name and the Respondent has not provided evidence to rebut this.
The Respondent appears to have been using the disputed domain name to trade off the reputation of the Complainant and for the purpose of diverting Internet traffic away from the Complainant’s business and therefore has no identifiable legitimate non-commercial use for the name under paragraph 4(c)(iii) above.
The Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant has established this, the burden shifts to the Respondent to show that it has such rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Respondent has declined to offer a response. Consequently the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for a finding of bad faith, which include registering the disputed domain name to:
(i) Sell, rent or otherwise transfer the disputed domain name to the complainant for a profit;
(ii) Prevent the owner of the trade mark from reflecting the mark in a corresponding domain name;
(iii) Disrupt the business of a competitor; or
(iv) Intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, affiliation or endorsement of a website or location or of a product or service on a website or location.
Further, evidence of bad faith will include where the representations or warranties as to eligibility or third‑party rights given on application or renewal are, or subsequently become, false or misleading.
The Panel notes that the Complainant contends that this is not the first instance of the Respondent registering a domain name which incorporates the Complainant’s trade marks and has provided evidence that Scott van Iperen, the registrant’s contact for the Respondent, has been subject to several previous proceedings with similar facts before the Center and in each case has been ordered to transfer the domain name(s) to this Complainant.
The Panel notes that when there have been previous decisions on similar facts, in order to operate in a fair, effective and predictable manner, the decisions should be consistent (Geobra Brandstätter GmbH & Co KG v. Only Kids Inc,WIPO Case No. D2001-0841).
One such prior instance was in relation to the domain name (see DeBeers UK Limited v. International Diamond Corporation Pty Ltd.,WIPO Case No. DAU2016-0030), which is almost identical to the disputed domain name in these proceedings and is identical to the Complainant’s trade mark. From this the Panel infers that the Respondent is aware of the Complainant and its trade marks and intended to confuse Internet users and disrupt the business of the Complainant. Previous panels have found that the conduct of a respondent in registering multiple third-party trade marks as domain names is in itself evidence of bad faith (Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010).
Further, in offering jewellery for sale from the disputed domain name, the Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel finds that the criteria in paragraph 4(b) of the Policy are fulfilled and that there is sufficient evidence to find that the Respondent registered and is subsequently using the disputed domain name in bad faith. 7. Decision
For all 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.
David Stone
Sole Panelist
Date: February 7, 2017
1 The Panel, noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), has referred to cases decided by panels under the UDRP where it considers it appropriate.
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