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and Mediation Center
American Gem Society v. John Marusenko
Case No. D2006-0898
1. The Parties
The Complainant is American Gem Society, Las Vegas, Nevada, United States of America represented by Lewis, Rice & Fingersh, L.C., United States of America.
The Respondent is John Marusenko, AGS Certified Diamonds, Inc, Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <agscertifieddiamonds.com> is registered with
Schlund & Partner.
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 Schlund & Partner a request for registrar verification in connection with the domain name(s) at issue. On July 18, 2006, Schlund & Partner 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 the 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 July 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent of its default on August 16, 2006. No Response has since been received. The Panel therefore proceeds to determine this Complaint on the basis of the Complaint alone.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 25, 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 of the fee Rules paragraph 7.
There are no interlocutory matters outstanding. The
language of the proceedings is English.
4. Factual Background
According to the Complainant it has been a leader and key participant in the diamond, gem and jewellery industry for over 70 years. It submits that since at least as early as 1934, it has been using the name and mark AGS in the industry for among other things;
(i) operating a trade association of jewellers, jewellery manufacturers and suppliers;
(ii) educating jewellers, professionals in the industry and consumers on matters relating to diamonds, jewellery and other precious stones;
(iii) promoting the highest professional standard of ethics, education and service in the jewellery industry;
(iv) developing proprietary and respected examination and grading standards for diamonds;
(v) certifying jewellers and jewellery related firms.
In 2005 the Complainant and its affiliated companies spent approximately US$5,000,000 to advertise and promote its services in the industry on advertising bearing the AGS mark and related marks.
The Complainant owns and operates the website “www.ags.org”. This averages more than 7,100 unique visitors per month which is close to 250 unique visitors per day from Internet users throughout the world.
The Complainant exhibits at annexes 3 to 9 to the Complaint evidence of its use of the mark AGS including at annex 3 a copy of its Internet home page and at annex 4 a copy of its web page “The Ags Story”. The Panel has considered the annexures.
The Complainant points out that during its continuous and uninterrupted use of the mark AGS since as early as 1934 its right to use the mark has never been challenged or opposed. It has aggressively policed the unauthorised use of the AGS mark throughout the world.
The Complainant owns a portfolio of trademark registrations and trademark applications for the mark AGS throughout the world. Annexed at Annex 10 is a list of the Complainant’s marks that incorporate AGS together with copies of certificates of registration and filing receipts.
There is evidence of trademark registrations using AGS in Australia, Benelux countries, Canada, China, Hong Kong (SAR of China), India, Israel, Italy, Japan, Taiwan (Province of China) and United States. Most of these registrations involve AGS in combination with other words such as AGS IDEAL or AGS in conjunction with a logo.
In Canada, it owns the following registrations:-
AGS IDEAL - no. TMA622233
AGS ZERO - no. TMA621962
AGS PERFORMANCE GRADING SOFTWARE - application no. 265423.
In the absence of evidence to the contrary from the
Respondent the Panel accepts the truth of the above.
5. Parties’ Contentions
(i) The Complainant submits that it owns and has the rights to the mark AGS in the relevant industry and that the Respondent’s domain name is confusingly similar in sound, appearance, connotation and commercial impression to the mark AGS.
(ii) The Respondent should be considered as having no rights or legitimate interest in respect of the domain name. In particular, it submits that the Complainant has not licensed or otherwise authorised the Respondent to use the AGS name and marks or any other similar mark nor is there any business or other relationship between the Complainant and Respondent.
(iii) The domain name was registered and is being used in bad faith because the Respondent registered the domain name in order to attract for commercial gain Internet use of the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source of sponsorship, affiliation or endorsement of the Respondent’s site.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
General Principles under the Policy and the Rules
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present:
(i) That the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn:
A Identical or Confusingly Similar
The Complainant relies both upon its registered rights referred to above and set out in Annex 10 to the Complaint. It also relies upon unregistered rights because of its long and continuous use of the mark AGS in the jewellery industry.
It submits that the domain name is comprised of essentially two components; the element AGS and the descriptive and generic element “Certified Diamonds”. The gtld “.com” should be disregarded in this context.
It points out that the AGS element of the disputed domain name is identical to the Complainant’s mark AGS and that where this is used with words which are merely descriptive of the services it provides the domain name is confusingly similar to the mark. The use of the words “Certified” and “Diamonds” are merely descriptive of a service the Complainant provides in the diamond industry.
The Panel accepts this submission and takes the view that the evidence of confusing similarity is strengthened by the use of the descriptive words “Certified” and “Diamonds” which draws attention to an activity of the Complainant.
Support for this view is given by the two decisions cited by the Complainant;
Blue Nile, Inc v. Mrs Jellow LLC, WIPO
Case No. D2005-0639 (September 26, 2005) and by Diamond Place Limited
v Domains Ventures, WIPO Case No. D2005-1276
(January 31, 2006).
It follows that the Complainant has succeeded in relation to this element.
B Rights or Legitimate Interests
In support of this element the Complainant relies upon the fact that the Complainant has not licensed or otherwise authorised the Respondent to use the AGS name or any other similar mark. There being no response, there is no evidence to the contrary.
At paragraph 26 to the Complaint the Complainant submits that “upon information and belief” the Respondent selected the domain name in dispute, prominently displayed the AGS logo and other registered trademarks confusingly similar to the Complainant’s trademarks upon its website. It also submits that the Respondent reproduced photographs and documents proprietary to and copyrighted by the Complainant so as to give rise to the impression and misrepresentation that the Respondent is associated with the Complainant. The difficulty from the Panel’s point of view in considering this submission is that there is no evidence adduced as to this activity. Annex 19 to the Complaint is referred to as evidence of the Respondent’s sites but it is in fact a series of Whois searches of other domain names owned by the Respondent.
The Complainant’s submissions would undoubtedly be stronger if evidence had been adduced as to the Respondent’s websites and trading activity using those websites. At present the Panel only has the assertion and submission set out in paragraph 26. In the absence of such evidence the Panel considers that it is not in a position to decide this element based upon these assertions.
The question that then arises is whether the Panel is entitled, in the absence of submissions or evidence to the contrary to find for the Complainant based upon the inference that it is not licensed or otherwise authorised by the Respondent to use the AGS name and marks or any other mark similar thereto.
The Panel considers that it is entitled to take into account the fact that the Complainant has not licensed or otherwise authorised the Respondent to use the AGS name and mark which is protected worldwide. In the absence of a Response there is no evidence of the factors set out in paragraph 4(c) of the Policy which might otherwise demonstrate a legitimate right or interest on the part of the Respondent. In the Panel’s view it is also able to take into account the fact that the domain name in dispute does not merely incorporate the mark AGS but also the descriptive words “Certified” and “Diamonds” thus drawing attention to an actual commercial activity of the Complainant.
Therefore taking the matter as a whole and bearing in mind that there is no response the Panel finds for the Complainant in relation to this element.
C. Registered and Used in Bad Faith
The Complainant expressly incorporates in its submissions relating to bad faith its submissions relating to the identical or confusingly similar nature of the mark and in relation to rights or legitimate interests in the domain name.
In particular, the Complainant submits that the Respondent registered the domain name in order to attract for commercial gain Internet users for the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks and that it has linked to the domain name a website that clearly and prominently displays the AGS marks.
It submits that at the bottom of each page of the “www.agscertifieddiamonds.com” website are numerous links that purport to offer for sale diamonds or are otherwise relevant to the industry. It adduces in evidence Annex 19 to the Complaint. Annex 19 consists of Whois searches in relation to <canadadiamonds.com>, <idealdiamonds.com>, <certifieddiamondsdirect.com>, <certifiedwholesalediamonds.com>, <canada-diamonds.com>, <wholesale-canadian-diamonds.com>. All of these domain names are registered in the name of the Respondent.
The Complainant submits that the Respondent registered the domain name in dispute in order to funnel traffic intended to the Complainant to the Respondent’s sites or to create the impression that the Respondent is a member of the Complainant’s organisation.
There is no evidence before the Panel of the content of the Respondent’s site. The Panel therefore has to decide the issue of bad faith upon the following evidence:-
(i) the confusing similarity between the domain name and the Complainant’s marks;
(ii) the Respondent’s constructive knowledge of the Complainant’s rights arising as a result of the worldwide registration of AGS as a trademark;
(iii) the existence of the Respondent’s other domain name registrations as evidenced by Annex 19;
(iv) the submission that the Respondent has engaged in a pattern of conduct.
This is evidenced by the parallel registration of the domain name <ags-diamonds.com>. That registration has also been made by John Marusenko and Canada Diamonds Inc who on the Whois search exhibited at Annex 22 have registered the domain name <ags-diamonds.com> at the address of the Respondent, Vancouver, British Colombia. In the absence of a Response there is no reason given by the Respondent as to why it has registered this domain name.
In the Panel’s view it is entitled to take the Respondent’s registration
of the two domain names as evidence both of bad faith and as a pattern of conduct
in registering another infringing domain name. <ags-diamonds.com> is prima
facie confusingly similar to the Complainant’s mark AGS. This is also
the finding of the Panel in the parallel Complaint American Gem Society v.
Canada Diamonds, Inc. WIPO Case No. D2006-0896
dated September 8, 2006.
The Panel therefore finds for the Complainant that the domain name in dispute
was registered and is being used in bad faith.
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 < agscertifieddiamonds.com > be transferred to the Complainant.
Clive Duncan Thorne
September 8, 2006