Complainant is The Gem Palace of Jaipur, India, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondents are Satish Parihar of Edmonton, Canada and Akshat Kasliwal of Jaipur, India, self-represented (Respondents in this proceeding will hereinafter be referred to collectively as "Respondent" in the singular form). 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 13, 2018. The Center received informal email communications from Respondent on July 13, 2018, and August 10, 2018.
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 Respondent of the Complaint, and the proceedings commenced on July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. Respondent did not submit a formal response. Accordingly, the Center notified the Parties on August 10, 2018, that it would proceed to panel appointment.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 17, 2018. 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. Preliminary Issue Regarding the Request for Consolidation of Respondents
Complainant has submitted a request for consolidation of Respondents Satish Parihar and Akshat Kasliwal in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant's contention that the disputed domain names are subject to common control. The websites at the disputed domain names have (i) featured the same logo for "Kaliswal Gem Palace," (ii) used some of the identical wording to describe their businesses, (iii) used the same contact address and telephone number, and (iv) used some of the same images. In addition, in the July 13 and August 10, 2018, informal email communications received from Respondent, it is asserted that the disputed domain name was registered on behalf of Respondent Ashkat Kasliwal, who is the registrant of disputed domain name. Thus it appears that Respondent Akshat Kasliwal controls both disputed domain names. Under the circumstances, the Panel finds that consolidation would be fair and equitable to all parties. 5. Factual Background
Complainant, The Gem Palace, is a partnership that operates under the name THE GEM PALACE with a principal place of business in Jaipur, India. Complainant manufactures, buys and sells and/or otherwise deals in jewelry and ornaments. Complainant's business was established in 1852 by the Kaliswal family of Jaipur. Complainant owns a trademark registration for THE GEM PALACE in the European Union that was filed on May 29, 2013 and issued to registration on November 26, 2013 (Registration No. 011854536). Complainant also owns and uses the domain name to provide about Complainant's THE GEM PALACE products and services.
Respondent is a distant member of the Kaliswal family and is not connected to Complainant. Respondent registered the disputed domain name on August 1, 2013, and disputed domain name on December 5, 2015. The disputed domain names have been used with websites that display and offer jewelry for sale. Currently, the disputed domain name resolves to a "website under construction" web page. 6. Parties' Contentions A. Complainant
Complainant asserts that it is the owner of all rights in the name and mark THE GEM PALACE by virtue of Complainant's extensive use of THE GEM PALACE mark since 1852 in connection with the manufacturing, buying, selling or dealing in jewelry and ornaments. Complainant contends that THE GEM PALACE mark is known worldwide as a source of jewelry products in the jewelry industry and amongst consumers interested in high-end jewelry. In support of that contention, Complainant has provided examples of letters, documents, invoices, and articles showing recognition of Complainant as a source of jewelry, some of which date back to the late 1930s.
Complainant argues that the disputed domain names are identical or highly similar to Complainant's THE GEM PALACE mark as they fully incorporate "Gem Palace," which is the dominant and distinctive element of Complainant's THE GEM PALACE mark. Moreover, in the case of disputed domain name, Complainant argues that the disputed domain is identical to Complainant's THE GEM PALACE mark, as it consist of Complainant's THE GEM PALACE mark in its entirety.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) has no connection to Complainant, (ii) has no authorization, license or entitlement from Complainant to use THE GEM PALACE mark, (iii) is not commonly known by the disputed domain names, and (iv) has not made any legitimate noncommercial or fair use of the disputed domains given that Respondent has used the disputed domain names to attract consumers to Respondent's websites to offer jewelry products for sale.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain names in bad faith. Complainant maintains that Respondent was clearly aware of Complainant's right in THE GEM PALACE mark when it registered the disputed domains as the websites at the disputed domain names specifically refer to Complainant and recite the history of Complainant's business. Complainant also argues that the disputed domain names are being used to exploit the reputation and goodwill in Complainants' THE GEM PALACE mark to redirect web users to Respondent's websites to sell Respondent's jewelry products. Complainant also contends that Respondent's actions in registering disputed domain names that are identical to Complainant's THE GEM PALACE mark are meant to disrupt Complainant's business. B. Respondent
Respondent did not reply to Complainant's contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant's claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent's default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0, section 4.3; see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a trademark registration for THE GEM PALACE mark in the European Union (and had filed for such before Respondent registered the disputed domain name). Complainant has also provided sufficient evidence, none of which is contested by Respondent, that it developed common law or unregistered rights in THE GEM PALACE mark in connection with its jewelry products and services well before Respondent registered the disputed domain names. WIPO Overview 3.0 at section 1.3.
With Complainant's rights in THE GEM PALACE mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain or country code Top-Level Domain such as ".com" or ".co") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are identical or confusingly similar to Complainant's THE GEM PALACE mark as they each incorporate GEM PALACE, the dominant component of Complainant's mark, and in the case of disputed domain name THE GEM PALACE mark in its entirety. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's marks and in showing that the disputed domain names are identical or confusingly similar to those trademarks. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, and Respondent's failure to file a response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names. It is evident that Respondent was, and is, aware of Complainant and THE GEM PALACE mark given that Respondent's websites at the disputed domain names essentially impersonate Complainant, or at least create an impression of affiliation with Complainant, in order to offer competing jewelry products that do not originate from Complainant. Indeed, the fact that the disputed domains names are identical or closely similar to Complainant's THE GEM PALACE mark, and have been registered with the ".co" extension, suggests that Respondent is either attempting to pass off the disputed domain names and associated websites as an official website of Complainant, which is located at , or that Respondent is attempting to capture web users who are trying to access Complainant's website at but mistakenly fail to type the "m" in the ".com" extension and simply type ".co." In total, Respondent's actions support the conclusion that Respondent is not making a bona fide use of the disputed domain names and does not have any legitimate rights or interests in the disputed domain names.
Given that Complainant has established with sufficient evidence that it owns rights in THE GEM PALACE mark, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(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 the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, 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 the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
In the present case, Respondent was clearly aware of Complainant when Respondent registered the disputed domain names, given that Respondent has used each of the disputed domain names to attract Internet users to websites that impersonate Complainant or suggest a connection to or affiliation with Complainant. As the disputed domain names fully incorporate or play upon Complainant's THE GEM PALACE mark, it is evident that Respondent opportunistically targeted Complainant and its trademarks for commercial gain. This is particularly so in view of Respondent's use of the disputed domain names with websites that offer competing jewelry products unrelated to Complainant.
Accordingly, the Panel finds that Complainant succeeds under this element 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 names and be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: September 2, 2018
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