The Complainant is Argyle Diamonds Limited, Australia, represented by Griffith Hack Lawyers, Australia.
The Respondent is Domain Manager, Australia / Argyle Diamond Investments Pty Ltd, Australia, represented by Chris Ryan Legal, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On July 16, 2021, Synergy Wholesale Pty Ltd 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 29, 2021 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 amendment to the Complaint on July 30, 2021.
The Center verified that the Complaint together with the amendment to 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 August 6, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2021. The Response was filed with the Center on August 26, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 20, 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, and its related bodies corporate, has been operating the Argyle diamond mine in Western Australia since 1983. As part of its business, the Complainant has appointed a number of Authorised Partners and Select Atelier master jewellers around the world who offer for sale and sell the products of the mine.
According to the Response, the Complainant ceased production at the Argyle diamond mine in November 2020.
According to the Complainant, the Complainant has been promoting its products and services from a website at “www.argylepinkdiamonds.com.au” since 2009. This website, and other promotional collateral used by the Complainant, use a pink, black and white colour scheme. One example of the use of this colour scheme is what the Complainant refers to as the Argyle Trade Indicia:
Although on the website referred to above, the words ARGYLE PINK are currently presented in black and DIAMONDS is in pink.
The Complainant has provided evidence of a number of registered trade marks including:
(a) Australian Registered Trade Mark No. 628889, ARGYLE, which has been registered with effect from May 1994 in respect of all goods in International Class 14 including diamonds, other precious stones and jewellery incorporating the same;
(b) Australian Registered Trade Mark No. 1090002, ARGYLE, which has been registered with effect from December 2005 in respect of a range of services in International Classes 35, 37, 40, and 42 including retailing of diamonds, gems and other precious stones, retailing of jewellery, and valuation of diamonds, gemstones, and other precious stones;
(c) Australian Registered Trade Mark No. 1222118, ARGYLE DIAMONDS, which has been registered with effect from January 2008 in respect of the range of goods and services in International Classes 14, 35, 37, 40, and 42 referred to above.1
The Complaint also includes evidence of registrations for ARGYLE PINK DIAMONDS, ARGYLE PINK DIAMONDS SELECT ATELIER and ARGYLE PINK DIAMONDS AUTHORISED PARTNER, respectively Australian Registered Trade Marks Nos 1278753, 1264598 and 1264600. In addition, the Argyle Trade Indicia referred to above is Australian Registered Trade Mark No. 1933517 which has been registered with effect from June 2018 in respect of the relevant goods and services in International Classes 14 and 35.
So far as the record in this proceeding discloses, the Respondent was incorporated under its current name on November 3, 2016. Its principal business is the retail sale of pink diamonds from the Complainant’s Argyle diamond mine. According to the Response, this business also includes advising clients about pink diamonds as investments.
On August 17, 2017, the Respondent applied to register ARGYLE PINK DIAMOND INVESTMENTS as a trade mark in Australia in respect of a range of services in International Class 36. On November 30, 2017, the Registrar of Trade Marks issued an Adverse Report raising objections to the registration of this application. The application lapsed on March 12, 2019 without the Respondent attempting to overcome the objections.
On September 6, 2018, the Respondent registered the disputed domain name. It resolves to a website promoting the Respondent’s services.
On November 7, 2019, the Respondent applied to register ARGYLE DIAMOND ANALYTICS as a trade mark in Australia in International Class 1, specifying the “goods [and services]” as “Argyle Diamond Analytics; Argyle diamonds; Buy and sell Argyle diamonds; Financial reports; certificates; Argyle certificates; Rarity reports; Data Driven Decision making; pink diamonds; blue diamonds; red diamonds; financial growth; predictive systems; statistics; value; certified; value”. An Adverse Report against this application was issued on May 19, 2020 and a second adverse report on August 14, 2020 following several submissions from the Respondent. On September 8, 2020, the Respondent requested withdrawal of this application and it was subsequently withdrawn on September 9, 2019.
On January 23, 2020, the Complainant arranged for a first cease and desist letter to be sent to the Respondent.
On February 18, 2020, the Respondent made a further application to register ARGYLE DIAMOND ANALYTICS as a trade mark in Australia for a range of goods and services in International Classes 16, 35, 36, and 42. The Registrar of Trade Marks issued Adverse Reports against this application on March 4, 2020, July 30, 2020, July 22, 2021 and August 25, 2021. The Respondent’s responses to these Adverse Reports did not overcome these objections and the application lapsed on September 10, 2021.
On July 20, 2021, the Respondent applied to register ARGYLE DIAMOND INVESTMENTS in respect of acquisition for financial investment services in International Class 36. The Registrar issued an Adverse Report in respect of this application on October 8, 2021.
According to the Complaint (and not disputed in the Response), the Complainant’s registered trade marks were the basis of the Registrar of Trade Marks objections to the registration of the Respondent’s first and third applications; the Respondent withdrew the second application after correspondence from the Complainant.
Prior to January 23, 2020 (when the Complainant’s first cease and desist letter was sent to the Respondent), the landing page of the Respondent’s website featured a logo in the following form:
This shows the form of the logo from late 2019 when the website adopted a predominantly black background on its pages (the grey background shown above was in fact black too). Through most of 2019, the website largely had a white background with black and pink lettering. On the form of the website with predominantly white backgrounds, the wording (other than Diamond) was in black lettering. On the Wayback Machine captures after January 23, 2020 including currently, the word Diamond is depicted in white, not pink.
Before the cease and desist letter was received, the Respondent’s website did include a disclaimer in the following form at the very foot of the home page:
“We are an independent diamond investment firm who offer our clients an end-to-end solution – from buying diamonds and storing to managing investment collections and re-selling.”
After receipt of the cease and desist letter, the disclaimer was expanded:
“We are an independent diamond investment firm who offer our clients an end-to-end solution – from buying diamonds and storing to managing investment collections and reselling. […]
** Argyle Diamond Investments Pty Ltd is an independent investment firm and is not associated with Argyle Diamonds Limited or the Rio Tinto Group in any way. Copyrighted logos & images used on this website remain property of their respective owners.”
5. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
For present purposes, it is sufficient to note that the Complainant has proven that it owns the registered trade marks ARGYLE and ARGYLE DIAMONDS referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd.,WIPO Case No. DAU2002-0001. This test is narrower than and thus different to the question of “likelihood of confusion” under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant however, may fall for consideration under the other elements of the Policy.
Typically and as is appropriate in this case, it is permissible to disregard respectively the Top and Second Level Domains, “.com.au”, as a functional component of the domain naming system. See for example auDA Overview of Panel Views on Selected auDRP Questions First Edition (“ auDRP Overview 1.0”), section 1.2.
Having regard to those matters, the disputed domain name is confusingly similar to at least the Complainant’s trade marks referred to above. Each of the Complainant’s trade marks, ARGYLE and ARGYLE DIAMONDS, are wholly encompassed within the disputed domain name. Both of those trade marks remain plainly visible and perceptible within the disputed domain name.
The Complainant therefore has established the first requirement under the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a 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 trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant states that the Respondent is not one of its licensed or authorised resellers. Nor is the Respondent otherwise associated with it. The Complainant further contends that the Respondent is not using the disputed domain name in good faith given:
(a) the prominence and nature of the use of the expression ARGYLE DIAMOND INVESTMENTS on the Respondent’s website;
(b) the style, font and colouring of the Respondent’s website adopts the style, font and colouring of the Complainant’s trade marks; and
(c) the word ARGYLE is distinctive of the Complainant and its goods and services.
On the other hand, the Respondent contends it has rights or legitimate interests in the disputed domain name because it reflects the Respondent’s corporate name which, in turn, reflects its principal business: the retail sale of pink diamonds sourced from the Complainant’s mine. The Respondent says further that the Complainant does not itself engage in the retail sale of pink diamonds and has not appointed any exclusive licensees. Similarly, the Respondent contends that the Complainant does not operate commercially in the field of advising clients about pink diamonds as an investment, which is a significant part of the Respondent’s business. Accordingly, the Respondent says it is using the disputed domain name in connection with a bona fide offering of goods or services in the course of a business under its name which had been adopted well before the Respondent received any notice of the dispute.
Thus, the Respondent appears to claim rights or legitimate interests in the disputed domain name on the basis of, or by analogy to, paragraphs 4(c)(i) or (ii).
The fact that the Complainant does not itself engage in the retail sale of its diamonds or provide investment advice does not assist the Respondent in this case as those activities fall within or, in the case of investment advice, if not directly covered are very closely related to the services covered by the Complainant’s registered trade marks. In addition, it is not disputed that the Complainant has exercised those rights through a network of Authorised Agents and “Select Ateliers” – in other words, independent (if not exclusive) retailers.
The Policy has been interpreted to recognise that resellers, even unauthorised resellers, can have rights or legitimate interests in a domain name which incorporates another person’s trade mark.
Generally, panels have tested claims to legitimacy as a reseller by reference to the so-called Oki Data factors:2
1. the respondent must actually be offering the goods or services that are the subject of the trade mark;
2. the respondent must only be offering those goods or services;
3. the website must accurately describe the relationship between the respondent and the trade mark owner; and
4. the respondent must not try to take all of the relevant domain names so as to deprive the trade mark owner of the ability to register its trade mark as a domain name.
In the present case, it appears that the Respondent is in fact offering for sale pink (and possibly other) diamonds sourced from the Argyle diamond mine. The Respondent’s website and the Response indicate that the Respondent may not be selling diamonds sourced exclusively from the Complainant’s mine. The Response says sales of diamonds sourced from the Complainant’s mine are approximately 95 per cent of its business. To the extent that the Respondent is offering for sale diamonds which are not sourced from the Complainant’s mine, therefore, it will be unlikely to satisfy the second Oki Data factor. And even if such can be considered de minimis so that it would not result in running afoul of this factor, the colour scheme described below clearly points in the Complainant’s favour.
As noted above, the Respondent’s website has featured a disclaimer. The Respondent also relies on its “About Us” page which indicates that the Respondent is the corporate vehicle through which the Leonards family conducts its diamond trading activities.
The disclaimer, however, is at the foot of the landing page and in comparatively small text. It is not immediately apparent upon landing on the homepage.
Most importantly, the colour scheme, text and images on the website appear very likely to convey the impression that one is dealing with an official or authorised dealer. In addition to the colour scheme, making heavy use of the black, white and pink colour scheme of the Complainant, the Respondent’s website also uses, or used, without permission a number of images such as a colour chart which the Complainant claims copyright in.
In this context, therefore, the Panel considers the disclaimer is overborne by the content of the website and especially the black, white and pink colour scheme.
In a context where the Complainant’s products are offered for sale at retail through independent Authorised Agents and Select Ateliers, the Panel does not consider the “About Us” page is sufficient to dispel a likelihood of confusion. For similar reasons, the Respondent’s arguments based on its address thousands of kilometres from the locations of the Complainant’s mine and headquarters are not adequate points of distinction.
Moreover and contrary to the Respondent’s submission, the name embodied in the disputed domain name, “Argyle Diamond Investments”, is not a name which clearly disavows association with the Complainant. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.5.1.3
Given the strong impression of affiliation or association arising from the disputed domain name and the content of the Respondent’s website overall, therefore, the Panel does not think the Respondent’s website describes the relationship between the Respondent and the Complainant sufficiently accurately to qualify as a legitimate interest under the Oki Data factors.
It seems likely that a similar conclusion would be reached under trade mark law. See e.g., Britt Allcroft (Thomas) LLC v Miller [2000] FCA 699 restraining “The Thomas Shop” in the face of Thomas the Tank Engine trade marks and reputation.
The Panel accepts that the Respondent adopted its corporate name before notice of any dispute although when it registered the disputed domain name (if not before), the Respondent was clearly on notice of the conflict with the Complainant’s trade marks given the Adverse Report of its first trade mark application.
The reference in paragraph 4(c)(i) to use (or demonstrable preparations for use) of the disputed domain name in connection with a good faith offering of goods or services before notice of the dispute with the trade mark owner serves a number of purposes. One of those purposes is to test whether the signifier has been adopted independently of the trade mark owner. Another or related purpose is as an indicator of whether the claimed right or interest is genuine or a mere pretext.
The Respondent was not known by or using the precise form of the disputed domain name before it registered the disputed domain name. Disregarding the “.com.au” Top and Second Level Domain elements, however, the disputed domain name is the same as the Respondent’s corporate name, omitting the corporate identifiers “Pty Ltd”.
The omission of “Pty Ltd” would typically qualify as use of the corporate name for the purposes of s 122(1)(a)(i) of the Trade Marks Act 1995 (Cth) which provides a defence to trade mark infringement where a person uses their own name in good faith. See e.g., Anchorage Capital Partners Pty Limited v. ACPA Pty Ltd [2018] FCAFC 6 at [208].
Accordingly, the Panel considers that the derivation of the disputed domain name from the Respondent’s corporate name could provide a basis for a claim to rights or legitimate interests. The adoption and use of the name must, however, be in good faith.
Similarly, it can be a defence to trade mark infringement to use a sign in good faith to indicate, amongst other things, the kind, quality, geographical origin or some other characteristic of the goods or services. See s 122(1)(b)(i) of the Trade Marks Act 1995 (Cth). To date, however, this provision appears to have been interpreted to apply to some objective feature of the goods or services rather than the goods’ trade mark. See e.g. Britt Allcroft (Thomas) LLC v Miller [2000] FCA 699 at [66] – [68]. The defence would not be available at all in respect of the offering for sale of goods which were not sourced from the Complainant’s mine. It is one thing to say I am Acme Trading Company and I sell Argyle diamonds. It is quite another thing, however, to say I am Argyle Diamond, or Argyle Diamond Investments,4 and I sell diamonds or even Argyle diamonds.
In addition, as with the “own name” defence, the use must also be in good faith.
In this context, good faith would typically require adoption of the name without knowledge of the Complainant’s trade mark or, if there was such knowledge, without an intention to trade on the significance of the name as the Complainant’s trade mark or take advantage of deception or confusion about a likelihood of association with the Complainant.
In the present case, the Panel infers the person, or persons, behind the Respondent were very well aware of the Complainant and its trade mark when the Respondent was incorporated in November 2016 under its present name. First, as the Respondent’s “About Us” webpage indicates, the Leonards family has been in the diamond business since 1812 in France and 1854 in the United Kingdom before opening for business in Australia in 1932. Secondly, the website claims that the Respondent is Australia’s largest supplier of Australian certified pink diamonds most of which, apparently, could be sourced only from the Complainant’s mine, a mine which had been in operation since 1983. Accordingly, the Respondent cannot be said to have adopted its corporate name independently of the Complainant and its trade marks.
Having regard to this and the considerations which have led the Panel to conclude that the Respondent has not satisfied the Oki Data factors, the Panel also considers that the adoption of the corporate name in November 2016 was likely to evoke a clear association with or endorsement by the Complainant or, at least, cause consumers to question whether there was such an association or endorsement. That state of affairs was not dispelled, or allayed, by the subsequent inclusion of the disclaimer on the website given the content and context of the website.
Accordingly, the Panel considers the Complainant has established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad FaithUnlike the UDRP, the requirements that the disputed domain name be registered or used in bad faith are disjunctive in the auDRP. That is, it is sufficient for the Complainant to show either that the disputed domain name was registered in bad faith or has been used in bad faith.
Paragraph 4(b) of the Policy provides that:
“b. Evidence of Registration or Use 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.”
As with paragraph 4(c), paragraph 4(b) is not an exhaustive listing of the circumstances in which a disputed domain name can be found to have been registered or used in bad faith. They are illustrative only.
For the reasons discussed in section 5.B above, the Panel has concluded that the Respondent was incorporated under its present name, and registered the disputed domain name, with knowledge of the Complainant and its trade marks. Also, as already noted, the Respondent was well and truly on notice about the conflict with the Complainant’s trade marks following the rejection of its first trade mark application following the Adverse Report in November 2017.
As there is a very real risk that the Respondent’s corporate name gives rise at least to an implied affiliation with the Complainant, therefore, it is likely that the registration of the disputed domain name constituted registration in bad faith under the Policy.
In any event, as discussed above, the prominent and emphasised use of “Argyle Diamond” in the logo form at the Respondent’s website indicated above and the heavy use of the black, white and pink colour scheme on the website are likely to lead to deception or confusion about a non-existent association with or endorsement by the Complainant. That is, the disputed domain name has been and is being used to take advantage of the trade mark significance of the expression “Argyle Diamond” without the Complainant’s consent.
Contrary to the Respondent’s submissions, the Panel has not found that the Respondent has a right or legitimate interest in the disputed domain name. While the Panel accepts the chronology of registration of the corporate name before registration of the disputed domain name, the Panel does not find that registration of the Respondent under its particular name confers a right or legitimate interest in the disputed domain name. Further, as discussed, the Panel considers that the use of the disputed domain name is likely to cause confusion as to affiliation or sponsorship. The disclaimer does not dispel that risk when the content of the website is considered as a whole.
In these circumstances, the Panel considers the Complainant has demonstrated that the Respondent has used the disputed domain name in bad faith as understood under the Policy.
Accordingly, the Complainant has established the third requirement under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Sole Panelist
Date: October 4, 2021
1 In line with changing practice under the Trade Marks Act 1995, the registration in class 14 is limited to cut and uncut diamonds, other precious stones, and jewellery. The registration in International Class 35 extends to retail services but does not make reference to valuation services specifically.
2 Derived under the UDRP in Oki Data Americas, Inc v. ADS, Inc,WIPO Case No. D2001-0903 applied in respect of unauthorised resellers in e.g. Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, amongst others. See also auDRP Overview 1.0, section 2.3.
3 Given the similarity of the concepts under the Policy and the UDRP, the Panel considers that reasoning under the UDRP may be applied in relation to this issue.
4 See WIPO Overview 3.0, section 2.5.1 referred to above.