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and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Gem Society v. Spencer Minta
Case No. D2006-0897
1. The Parties
Complainant is American Gem Society, Las Vegas, Nevada, United States of America, represented by Lewis, Rice & Fingersh, L.C., United States of America (“Complainant”).
Respondent is Spencer Minta, Sherman Oaks, California, United States of America (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <agsdiamonds.com> (the “Disputed Domain Name”) is registered with Go Daddy Software (the “Registrant”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2006. On July 14, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name) at issue. On July 14, 2006, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint by e-mail on July 25, 2006; a hard copy was received on August 2, 2006. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on August 25, 2006.
The Center appointed Steven Auvil as the sole panelist in this matter on September 5, 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
Complainant has been a leader and key participant in the diamond, gem and jewelry industry (the “Diamond Industry”) for over seventy (70) years. “AGS” is an acronym for “American Gem Society.” Since 1934, Complainant has been using the name and mark AGS (the “AGS Mark”) in the Diamond Industry for, among other things: (i) operating a trade association of jewelers, jewelry manufacturers and suppliers; (ii) educating jewelers, professionals in the Diamond Industry, and consumers on matters relating to diamonds, jewelry and other precious stones; (iii) promoting the highest professional standard of ethics, education, and service in the Diamond Industry; (iv) developing proprietary and respected examination and grading standards for diamonds; and (v) certifying jewelers and jewelry-related firms. Complainant represents that it, together with its affiliated companies, spent approximately $5 million (U.S.) advertising and promoting gem-related services under the AGS mark and related marks.
Complainant owns and operates the “www.ags.org” web site. Complainant represents that the “www.ags.org” web site averages more than 7,100 unique visitors per month (or, 250 unique visitors per day) from Internet users around the world. Complainant provided documentation evidencing its longstanding, continuous and uninterrupted use of the AGS Mark. In addition, Complaint provided copies of a number of Certificates of Registration and filing receipts for applications for the AGS Mark, including several AGS-related marks with the United States Patent and Trademark Office in the United States of America.
On September 18, 2003, Respondent registered the Disputed Domain Name with the Registrar. Complainant contends that the Disputed Domain Name has in the past resolved to a web site containing hyperlinks to several third party web sites offering a wide variety of goods and services, including services that are substantially similar to, and/or competing with, those offered by Complainant. Indeed, as of the date of this Decision, the Disputed Domain Name resolves to a web site containing hyperlinks to several third party web sites offering the sale of diamonds or diamond-related services, such as “www.BuyDiamondsDirect.com”, “www.goldbuyer.com”, “www.LooseDiamondsGuide.com”, and “www.4AntwerpDiamonds.com”.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar to the AGS Mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. Complainant requests that the Disputed Domain Name be transferred to Complainant.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and
(3) that the domain name registered by Respondent has been registered and used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed representations, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The Panel is persuaded that Complainant has trademark rights in the AGS Mark and did so at the time that Respondent registered the Disputed Domain Name. First, Complainant has a number of worldwide trademark registrations for AGS-related marks, including the following United States registrations: Reg. No. 964,462 for AGS (and Design); Reg. No. 2,971,321 for AGS TRIPLE ZERO; Reg. No. 2,981,311 for AGS 0; Reg. No. 3,015,850 for AGS IDEAL; and including the following United States applications: App. No. 78/572,498 for AGS PERFORMANCE GRADING SOFTWARE; and App. No. 78/746,086 for AGS THE SYMBOL OF TRUST (and Design). In light of the AGS Mark’s longstanding use by Complainant, the Panel is also persuaded that Complainant has common law rights in the AGS Mark. It is well-settled that common law rights can provide the basis of a valid complaint under the Policy. See, e.g., Georgia Gulf Corp. v. The Ross Group, WIPO Case No. D2000-0218 (June 14, 2000).
The Disputed Domain Name is comprised of essentially two components: the “ags” component and the “diamonds” component. It is well-settled that adding the “.com” suffix does not cause an otherwise confusingly similar domain name from being confusingly similar to a trademark. Baumberger v. SAND Webnames, WIPO Case No. D2001-0502. Further, previous panels have found that, where a domain name takes a mark of a company and then adds words merely descriptive of the services provided by such company, the result is a domain name that is confusingly similar to the subject mark. See, Blue Nile, Inc. v. Mrs. Jello, LLC, WIPO Case No. D2005-0639 (September 26, 2005) (finding that the domain name <bluenilediamond.com> was confusingly similar to the mark BLUE NILE in the diamond industry); My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276 (January 31, 2006) (holding that the descriptive term “diamond” in the domain name <leodiamond.com> adds to the likelihood of confusion between the domain name and complainant’s LEO marks in the diamond industry). Similarly, in the present case, the “diamonds” component of the Disputed Domain Name is also merely descriptive of the services Complainant provides in the Diamond Industry.
The Panel, therefore, concludes that the Disputed Domain Name is confusingly similar to the AGS Mark, a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Complainant contends that the Disputed Domain Name bears no relationship to a bona fide offering of services, and Respondent has not presented any arguments in rebuttal.
Nothing in the record suggests that Respondent has at any time used the Disputed Domain Name in connection with a bona fide offering of goods or services, or that Respondent is commonly known by the Disputed Domain Name. Respondent has not presented any arguments or evidence that it is making a legitimate noncommercial or fair use of the Disputed Domain Name, and it does not appear that it could make such a showing. Further, previous panels have found that the use of a domain name in connection with an Internet web site that merely lists hyperlinks to numerous unrelated third-party web sites offering a wide variety of goods and services, including those that are substantially similar to those offered by the complainant, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name. See, e.g., My Diamond Place, Ltd. v. Domains Ventures, supra (“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.”); Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that a respondent’s diversionary use of complainant’s mark to attract Internet users to its own web site, which contained a series of hyperlinks to unrelated web sites, was neither a bona fide offering of goods and/or services nor a legitimate noncommercial or fair use of the disputed domain names).
For these reasons, the Panel concludes that Respondent has no rights or legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Finally, Complainant persuasively argues that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that, with actual knowledge of Complainant’s trademark rights, Respondent purposefully created a likelihood of confusion with Complainant’s trademark in order to attract web traffic and be paid a royalty each time an Internet user “clicked through” on one of the “diamond” company-related hyperlinks on the web site. At least one other panel has found bad faith in substantially similar circumstances. See Blue Nile, Inc. v. Mrs. Jello, LLC, WIPO Case No. D2005-0639 (September 26, 2005) (finding it reasonable to infer that respondent registered <bluediamonds.com> with full knowledge of complainant’s BLUE NILE marks, and with the intent to create its own confusingly similar domain name to divert traffic to respondent’s unrelated web site for commercial gain).
The Panel is persuaded that Respondent was aware of the “American Gem Society” organization and its rights in “AGS” when Respondent registered the Disputed Domain Name. Complainant provided evidence indicating that, at one time, Respondent’s web site contained the hyperlinks “AGS 000”and “Ideal Cut Diamonds,” which are similar to Complainant’s federally registered trademarks AGS TRIPLE ZERO, AGS IDEAL, and AGS 0.
This constitutes strong circumstantial evidence that Respondent registered and used the Disputed Domain Name in bad faith. Respondent has not presented any arguments or evidence in rebuttal.
For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.
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 <agsdiamonds.com> be transferred to Complainant.
Dated: September 19, 2006