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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

My Diamond Place, Ltd v. Domains Ventures

Case No. D2005-1276

 

1. The Parties

The Complainant is My Diamond Place, Ltd, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by fJ Cleveland, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Domains Ventures, Xiamen, Fujian, China.

 

2. The Domain Name and Registrar

The disputed domain name <leodiamond.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2005. On December 9, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 17, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2006.

The Center appointed Nathalie Dreyfus as the Sole Panelist in this matter on January 17, 2006. 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 is one of the leading fine diamond companies in the world. The Complainant is the owner of several Trademarks registrations:

- US Trademark LEO n°76186498 of December 27, 2000

- Community Trademark LEO n°002012920 of December 21, 2000

- UK Trademark LEO n°0816189001 of March 24, 2000

- Chinese Trademark LEO n°1604619 of July 21, 2001

- US Trademark THE LEO DIAMOND n°76322939 of October 9, 2001

- US Trademark LEO SCHACHTER THE WORLD’S DIAMONDAIRES n°76322940 of October 9, 2001.

The Complainant is also the owner of the domain name <theleodiamond.com>.

The Respondent registered the disputed domain name <leodiamond.com> on May 17, 2003. The Respondent is using the disputed domain name as a parking website.

The Complainant informed the Respondent per fax, mail and registered letter of his previous trademark rights on October 24, 2005. No response was received to that letter.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following allegations.

The Complainant is the proprietor of a range of trademarks including the sign Leo. The Respondent has simply combined the word “diamond” which is descriptive of the goods registered and used under the Complainant’s LEO trademark with the Complainant’s registered trademark LEO such that there is a likelihood of confusion between the Complainant’s trademarks and the Respondent’s domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name Leo Diamond and he is not making a legitimate non-commercial or fair use of the domain name.

The Complainant contends that the domain name was registered and used in bad faith. He alleges that the Respondent attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion. Customers of the Complainant when reaching the Respondent’s website are diverted to other related websites some of them are competitors of the Complainant which thereby diverts business from the Complainant. In addition the Respondent is presumably obtaining “click through” fees from visitors who are mislead into clicking on its website but who then are directed somewhere else.

The Complainant requests a decision that the Domain Name be transferred to him.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is therefore in default.

 

6. Discussion and Findings

The Panel is satisfied that the Center took all reasonable steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

(i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

(i) Identical or Confusingly Similar

It is clear that the Complainant has registered rights in the marks LEO, THE LEO DIAMOND and LEO SCHACHTER THE WORLD’S DIAMONDAIRES in numerous countries.

The components of the disputed domain name are identical to the trademarks LEO and THE LEO DIAMOND of the Complainant in that it simply reproduces Complainants’ trademarks. The mere adjunction of the term “diamond” is not sufficient to avoid confusion between the domain name at issue and the Complainant’s trademark. The confusion is only heightened by adding the generic word “diamond” by the Respondent, because the term is precisely descriptive of the goods or services marketed by the Complainant in relation to the trademark (see e.g. ACCOR, Sociйtй Anonyme а Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625; ACCOR SA v. AURUM Hotelbetriebs mbH, WIPO Case No. D2003-0547; ACCOR v. VVNW Inc., WIPO Case No. D2005-0026).

The Panel considers that the domain name <leodiamond.com> is confusingly similar to the Complainant’s trademarks.

The Panel finds that Policy 4(a)(i) has been satisfied.

(ii) Rights or Legitimate Interests

The Policy, paragraph 4(c)(i) provides that a use is legitimate if, before any notice of the dispute, Respondent used, 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.

As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.

The Complainant has asserted that the Respondent has never been commonly known in any business matters under the name LEO DIAMOND.

Thus, the Panel is convinced that the Respondent has not received any express or implied license or consent to use the THE LEO DIAMOND or the LEO trademark in the disputed domain name.

The Complainant has also provided evidence that the Respondent has directed the disputed domain name to a website offering among other things, advertising and sponsored links for products and retailers that are in direct competition with the Complainant’s products. The Panel is of the opinion that the Respondent was not making any legitimate non-commercial or fair use of the disputed domain name.

In addition, the Panel finds inconceivable that the Respondent would have any rights or legitimate interests in the use of a domain name that is strictly identical to a trademark in connection to the marketing of such competing products.

In accordance with the above, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name in accordance with Paragraph 4(a)(ii) of the Policy.

(iii) Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name 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 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 website 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.”

It should be noted that the circumstances of bad faith are not limited to the above.

Due to the Complainant’s fame and worldwide activities, it is the Panels conviction, that when registering the domain name at issue, the Respondent knew of the existence of the Complainant’s trademarks.

Moreover the Panel believes that the domain name was registered in bad faith, because the domain name is composed of the Complainant’s trademark to which is added the generic term “diamond”, which evokes precisely the services/goods offered by the Complainant and associated with the mark. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would register the domain name at issue.

These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by the Respondent.

The Respondent, by registering a domain corresponding to a trademark the Respondent knew about , intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. This conduct constitutes evidence of bad faith use, since the Respondent is trying to hire profit from the Complainant’s trademarks reputation, by increasing the traffic on its website thanks to the exact reproduction of somebody else’s trademark, this constitutes obviously a bad faith use of the domain names in dispute (The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).

The Respondent apparently did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name <leodiamond.com> with sponsored links to competitors. The Respondent is presumably obtaining “click through” fees from visitors who are mislead into clicking on its site.

Furthermore the Complainant provided evidence of another domain name registration made by the Respondent, which infringes well-known trademark.

Consequently, in view of the above it is established the Respondent did both register and use the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

 

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 domain name <leodiamond.com> be transferred to the Complainant.


Nathalie Dreyfus
Sole Panelist

Dated: January 31, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2005/d2005-1276.html

 

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