WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Argyle Diamond Sales Limited v Silverado, Pete Lancashire

Case No. D2000-0345

 

1. The Parties

The complainant is Argyle Diamond Sales Limited, a corporation organized and existing under the laws of Australia and having its principal place of business in West Perth, Western Australia ("the Complainant").

The respondent is an entity trading as Silverado owned by Pete Lancashire who resides in Portland, Oregon, USA ("the Respondent").

 

2. The Domain Name and Registrar

The domain name the subject of this dispute is <argylediamonds.com> ("the Domain Name"), which was first registered on February 11, 1999.

The Registrar of the domain name is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic form on April 27, 2000 and by hard copy on May 1, 2000. The letter was accompanied by payment in the required amount for a single Panelist.

On May 5, 2000 an Acknowledgment of Receipt (Complaint) was sent to the Complainant.

On May 5, 2000 a Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, providing full details of the holder of the Domain Name and advising the current status of the Domain Name.

On May 10, 2000 the Registrar confirmed that it had received a copy of the Complaint from the Complainant and that the domain name was currently registered with it. It provided a copy of the requested Whois details and advised that the status of the Domain Name was "Active". It stated that the Policy was in effect by virtue of Network Solutionsí 5.0 Service Agreement. The Panelist notes that clause 8 of this Agreement (http://www.networksolutions.com/legal/service-agreement.html) incorporates the Policy into the Agreement.

On May 10, 2000 the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory.

On May 16, 2000 the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent by email, fax and courier and also to the Complainant and Registrar, advising that the Response was due by June 4, 2000.

On May 17, 2000 the Notification was resent to the Respondent by email due to a technical problem with the earlier transmission.

On June 6, 2000, not having received a Response from the Respondent, WIPO issued a Notification of Respondent Default.

On June 7, 2000, in view of the Complainantís designation of a single panelist, WIPO invited Clive Elliott ("the Panelist") to serve as a Panelist in this Administrative Proceeding.

On June 7, 2000 a Request for Declaration of Impartiality and Independence was transmitted to the Panelist.

On June 8, 2000 a Statement of Acceptance and Declaration of Impartiality and Independence was received by WIPO from the Panelist.

On June 9, 2000 a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the partiesí requests, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr Clive Elliott ("the Panel"), and advised that the decision should be forwarded to WIPO by June 22, 2000.

Having reviewed the communications records the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.

 

4. Factual Background

Complainant

The Complainant has asserted and provided evidence that the Complainant is the registered proprietor of US trade mark registration No. 1,755,860, for the word mark ARGYLE DIAMONDS in class 42 in respect of the distribution of diamonds and the provision of advice relating to diamonds ("the Trade Mark"). The Panel accordingly accepts this assertion.

The Complainant has asserted but has not provided evidence that the Complainant has operated a business distributing and providing advice relating to diamonds in association with the name ARGYLE DIAMONDS since 1981 and is the owner of substantial goodwill in the name ARGYLE DIAMONDS. The Panel has independently confirmed that the Complainant is a registered company in Australia and notes that there are currently eleven registered companies in Australia that include the words ARGYLE DIAMONDS in their company name. The Complainant has filed required documents, including annual returns since at least 1993. In the absence of conflicting evidence or circumstances and on the basis of the Panelís own investigation, the Panel accepts the Complainantís assertions.

Respondent

The Respondent has not filed a Response in this Proceeding.

 

5. Assertions

Complainant

The Complainant asserts that the Domain Name is confusingly similar to the Trade Mark, that the Domain Name is not being used legitimately, and that the Domain Name was registered and is being used in bad faith.

In support of its assertion that the Domain Name is confusingly similar to the Trade Mark, the Complainant points out that the only differences between the Trade Mark and the Domain Name are the space between the words ARGYLE and DIAMOND and the addition of .com. The Complainant refers to WIPO Case No. D99-0001, where the Panel found that such differences were not relevant and that it was "clear beyond cavil" that the domain name worldwrestlingfederation.com was confusingly similar to the trade mark World Wrestling Federation.

In support of its assertion that the Domain Name is not being used legitimately, the Complainant asserts that the Respondent is not a licensee of the Complainant and is not authorised to use the Trade Mark. Further, it asserts that the Respondent has no trade mark registration for ARGYLE DIAMONDS which is not, to the best of the Complainantís knowledge, the nickname of the Respondent or name of any family member or pet and is not in any other way identified with or related to a legitimate interest of the Respondent.

The Complainant also asserts that a lack of legitimate right to the Domain Name can be inferred from the failure by the Respondent to respond to any of the Complainantís or Registrarís requests for confirmation of rights in the Domain Name, and from a message on a webpage attached to the Domain Name, which stated, "For information about the availability of this site contact petel@teleport.com.". The Complainant asserts that this message indicates an attempt to sell the Domain Name.

In support of its assertion that the Domain Name was registered and is being used in bad faith, the Complainant has made a number of assertions.

First, the Complainant asserts that the Domain Name was registered in an attempt to attract, for commercial gain, Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website, products, and services, as per para 4(b)(iv) of the Policy.

In support of this assertion, the Complainant notes that on May 14, 1999 the Domain Name was attached to a website prominently and repeatedly using the words ARGYLE DIAMONDS and offering diamonds and custom jewelry featuring diamonds. Copyright notices on that website were in the name of ARGYLE DIAMONDS.

Secondly, the Complainant asserts that the Respondent registered the Domain Name in order to disrupt the business of a competitor, as per para 4(b)(iii) of the Policy.

In support of this assertion, the Complainant alleges that on March 30, 2000 the Domain Name featured a Ďdivertí that redirected Internet users to the website of Abbot & Rinehart Jewelers, which is in some respects a competitor of the Complainant. The Complainant has not provided evidence in support of this assertion.

Thirdly, the Complainant asserts that the Respondent registered the Domain Name in order to prevent the Complainant reflecting the Trade Mark in a corresponding domain name and has engaged in a pattern of such behaviour, as per para 4(b)(ii) of the Policy.

In support of this assertion, the Complainant has provided evidence showing that the Respondent has registered at least six other domain names that reflect trade marks or other marks associated with other entities, such as playstationtwo.net and mgibson.com. The Complainant has referred to WIPO Case No. D2000-0012 and WIPO Case No. D2000-0032 as evidence for the proposition that the registration of other well-known third parties is evidence of bad faith registration.

Finally, the Complainant asserts that the Respondent registered the Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant or one of the Complainantís competitors for valuable consideration in excess of the Respondentís out-of-pocket costs related to the Domain Name, as per para 4(b)(i) of the Policy.

In support of this assertion, the Complainant refers to the previously described message attached to the Domain Name regarding its availability, and the failure of the Respondent to reply to the Complainantís requests to transfer the Domain Name at cost.

On the basis of these assertions, the Complainant requests that the Administrative Panel order the transfer of the Domain Name to the Complainant.

Respondent

The Respondent has not filed a Response in this Proceeding.

 

6. Discussion and Findings

Para 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the Trade Mark; and

(ii) The Respondent has no right or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Para 4(b) of the Policy sets out four illustrative circumstances which, if proved, constitute evidence of bad faith as required by para 4(a)(iii) referred to above.

Para 4(c) of the Policy sets out three illustrative circumstances which, if proved, constitute evidence of a right or legitimate interest as described in para 4(a)(ii) referred to above.

(i) Identical or confusingly similar

The Domain Name is prima facie identical to the Trade Mark. Accordingly, para 4(a)(i) of the Policy is satisfied.

(ii) Rights or legitimate interest

The Complainant has alleged that the Respondent is not a licensee of the Complainant, is not authorised to use the Trade Mark, has no trade mark registration for ARGYLE DIAMONDS, does not have a nickname, family member or pet with the name ARGYLE DIAMONDS and is not in any other way identified with or related to a legitimate interest of the Respondent. The Respondent has also been provided with a number of opportunities to provide evidence of such an interest, by the Complainant, the Registrar, and in the course of this Proceeding.

The Respondent has chosen to ignore these opportunities. Such failure leads the Panel to the view, on the evidence and assertions before it, that the Respondent cannot justify its choice of the Domain Name and has no legitimate right or interest therein. Accordingly, para 4(a)(ii) of the Policy is satisfied.

(iii) Bad faith

The Panel considers that the association of the Domain Name with any website offering goods or services relating to diamonds or similar goods or services is likely to create confusion in the minds of Internet users as to the source, sponsorship, affiliation, or endorsement of those goods or services by the Complainant. The Complainant has alleged that the website that was attached to the Domain Name on at least May 14, 1999 was likely to cause such confusion and constitutes an attempt to attract, for commercial gain, Internet users to the Respondentís website. The Panel notes that there is no proof that the Domain Name was registered in the name of the Respondent at that time and likewise no proof that the Respondent was responsible for that website. However, the Respondent has been granted the opportunity to challenge the Complainantís assertions but has chosen not to do so. On the evidence, the Panel accepts the Complainantís assertions and finds that para 4(b)(iv) of the Policy is satisfied. Accordingly, para 4(a)(iii) of the Policy is satisfied.

While unnecessary for this decision, for the sake of completeness the Panel wishes to record its findings in relation to the other grounds of bad faith alleged by the Complainant.

The Panel considers that the association of the Domain Name with any website owned or associated with a competitor of the Complainant is likely to disrupt the business of the Complainant. In particular, the website allegedly attached to the Domain Name on at least March 30, 2000 is likely to disrupt the Complainantís business. Accordingly, para 4(b)(iii) of the Policy would be satisfied if evidence in support of this assertion was provided.

The Panel adopts the proposition put forward in WIPO Case No. D2000-0012 and WIPO Case No. D2000-0032, that the registration of domain names featuring the names or products of other well-known third parties is evidence of bad faith, and accepts that the Respondent registered the Domain Name in order to prevent the Complainant reflecting the Trade Mark in a corresponding domain name. However, the issue of whether the Respondent has engaged in a pattern of such behaviour requires further consideration.

The Domain Name is registered in the name of Silverado, of 1217 SW Stark St, Portland. The administrative contact is Pete Lancashire, of PDX Engineering, 123 NW 22nd PL, Portland, email petel@pdxeng.com. The billing contact is ĎBilling Departmentí at Silverado, email flossie@silveradopdx.com. The Complainant asserts that Silverado is a trading name used by the Respondent.

The Panel accepts that Silverado is a trading name or similar used by Pete Lancashire, and also presumes that Mr Lancashire is employed by or owns PDX Engineering. Accordingly, any domain name registrations clearly identifiable as associated with those two entities must be considered to have been registered with a legitimate right or interest and will not constitute part of a pattern of behaviour involving the bad faith registration of domain names.

The Complainant discloses domain name registrations for the following in the name of Silverado, with Pete Lancashire as the contact person: abbot-rinehart.com, gembank.com, gembanc.com, estatebuying.com.

The Complainant discloses domain name registrations for the following in the name of PDX Engineering, with Pete Lancashire as the contact person: playstationtwo.org, playstationtwo.net, mgibson.com, flossie.com, pdxeng.com, pdxengineering.com, nwportland.com, shopnwportland.com, jackobcrow.com.

The Panel notes also a registration of silveradopdx.com in the name of Jacobson, with an administrative contact of Thomas Breazeale, Kon-Tiki t/a The Silverado Bar, 1217 SW Stark St, Portland, email flossie@silveradopdx.com and a technical and zone contact of Pete Lancashire.

Disregarding pdxeng.com and pdxengineering.com as involving a genuine interest, it appears that the Respondent is at least involved in, if not the actual registrant of, a number of domain names not having any clear link to the Respondent. In the absence of evidence to the contrary, the Panel accepts that these other domain name registrations provide at least prima facie evidence of a pattern of behaviour of the type contemplated by the Policy. Accordingly, para 4(b)(ii) of the Policy is satisfied.

The Panel does not consider that the mere inclusion of a statement evidencing an interest in selling or leasing a Domain Name, by itself, indicates that such selling or leasing would be in exchange for valuable consideration exceeding the Respondentís relevant costs. However, when combined with the failure of the Respondent to reply to the Complainantís requests to transfer the Domain Name in exchange for the Respondentís costs, the Panel infers that it is likely to be the Respondentís intention to sell, rent, or otherwise transfer it for greater consideration. Accordingly, para 4(b)(i) of the Policy is satisfied.

 

7. Decision

On the evidence filed, the Domain Name is identical to the Complainantís trade marks, the Complainant has shown that the Respondent had no right or legitimate interest in the Domain Name and that the Domain Name was registered and is being used in bad faith.

Accordingly the Panel orders that the Domain Name be transferred to the Complainant.

 


 

Clive L. Elliott
Panelist

Dated: June 20, 2000