WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Argyle Diamond Sales Limited v. eINFO Pty Ltd

Case No. D2001-0112

 

1. The Parties

The Complainant is Argyle Diamond Sales Limited of 2 Kings Park Road, West Perth, Western Australia 6005, Australia.

The Respondent is eINFO Pty Ltd of 37 Erskine Street, Dubbo 2830, NSW, Australia.

 

2. The Domain Name and Registrar

The domain name on which the Complaint is based is <argylediamond.com>.

The registrar with which the domain name is registered is Melbourne IT Ltd of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2001.

3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated January 29, 2001 that:

- The Complaint was filed in accordance with the requirement of the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").

- Payment for filing was properly made.

- The Complainant has complied with the formal requirements.

3.4 The Panel accepts these findings and it finds further that:

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail on January 29, 2001.

- Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on February 19, 2001.

- On March 8, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by March 21, 2001.

- The Administrative Panel was properly constituted.

 

4. Factual Background

4.1 According to the Complaint (page 5), the Complainant has distributed and provided advice concerning diamonds under the service mark ARGYLE DIAMONDS since 1988. It is alleged that the Complainantís use of the mark has been the subject of numerous magazine articles and publicity, and that the latter has become closely associated with the Complainant. Furthermore, in 1993, the Complainant registered ARGYLE DIAMONDS as a service mark in the US (US Registration Number 1,755,860) in respect of "distributorships featuring diamonds and providing advice concerning the quality, color, size and cost of diamonds" (Complaint, Exhibit G).

4.3 According to the WHOIS database maintained by Network Solutions, Inc, of Herndon, Virginia, for the Aunic as well as the WHOIS database maintained by Internet Names Worldwide of Melbourne, Victoria, Australia, the Respondent is listed as the Registrant of the domain name <argylediamond.com> (Complaint, Exhibits A, B & C), having been registered on September 28, 2000 until

May 5, 2001.

This registration was created with Melbourne IT Ltd, and Scott James Hull of PO Box 1907, Dubbo 2830, Dubbo, NSW, Australia, was listed as administrative and technical contact (Complaint, Exhibit C).

 

5. Partiesí Contentions

A. Complainant

The Complainant addresses each of the elements described in paragraph 4(a) of the Policy as follows.

- With respect to the element described in paragraph 4(a)(i), the Complainant asserts that it owns the service mark ARGYLE DIAMONDS, and refers to its use of the mark in relation to advice services concerning diamonds (presumably in Australia) as well as its US service mark registration (see above). It contends further that the domain name <argylediamond.com> is confusingly similar to its ARGYLE DIAMONDS service mark, on the basis that the only relevant differences between the two are the absence of the space between "argyle" and "diamond", the deletion of the "s" and the addition of the appendage ".com" in the domain name.

- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain name <argylediamond.com>. The Respondent owns no trade mark or service mark registration for "Argyle Diamond" or "ArgyleDiamond" and has no licence from the Complainant to use the latterís mark. The Complainant also contends that there is no evidence that the domain name is a nickname for the Respondent or in any other way identified with or related to a legitimate interest of the Respondent. The Complainant notes also that, since October 26, 2000, and continuing through to January 12, 2000 [sic], the URL <argyldiamond.com> has automatically redirected Internet users to a website at www.directoryaustralia.com (Complaint, Exhibit J). This website indicates that it is controlled by eINFO Pty Ltd (Complaint, Exhibit K) and the administrative contact is given as "hull, scott (SH14994) dubbo@LJH.COM.AU motels australia 27 eden park avenue, dubbo, NSW 2830, AUSTRALIA" (Complaint, Exhibit K).

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the disputed domain name was registered by the Respondent for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Registrantís documented out-of-pocket expenses directly related to the domain name. In support of this contention, it refers to various communications from the Respondent offering to transfer the domain name for such a consideration. The Complainant further contends that the Respondent registered the domain name for the purpose of attracting, for commercial gain, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís www.directoryaustralia.com web site, products and services. In addition, the Complainant refers to the likelihood of confusion arising with respect to the Respondentís planned Gemstones.com.au and GemstonesAustralia.com.au websites as part of the DirectoryAustralia.com domain.

B. Respondent

As noted above, the Respondent has not filed a Response to the Complaint.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar

As noted in paragraph 4.1 above, the Complainant has provided evidence of registration of its service mark in the USA. It asserts further that the mark has been extensively used in relation to products and services and has also been the subject of numerous magazine articles and "other extensive publicity", but does not state where this has occurred or provide direct evidence of the extent of this use. Presumably, the last-mentioned use has occurred in Australia, but this is not expressly stated. Nonetheless, the registration of the US service mark provides sufficient evidence on its own to establish that the Complainant has rights in a trade or service mark, as required by paragraph 4(a)(i) of the Policy.

The next question is whether the disputed domain name is confusingly similar to the Complainantís mark. In this regard, the Complainant points to the slight differences between the two: the absence of the space between "argyle" and "diamond", the deletion of the "s" and the addition of the appendage ".com" in the domain name. In several earlier decisions cited by the Complainant, Panels have found confusing similarity where there have been similar small differences between domain names and trade or service marks: World Wrestling Federation Entertainment Inc v Michael Bosman WIPO CaseNo D99-0001 (January 14, 2000) (worldwrestlingfederation.com and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc v Registrar Administrator Lew Blank, WIPO Case No D2000-0069 (April 3, 2000) (INFOSPACES.COM and INFOSPACE). Each case, of course, is dependent upon its own facts, but in the present proceeding the Panel has no difficulty in concluding that the disputed domain name <argylediamond.com> is confusingly similar to the ARGYLE DIAMONDS service mark, and that the requirements of paragraph 4(a)(i) have been satisfied.

6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, 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; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <argylediamond.com> in connection with any bona fide offering of goods and services (subparagraph (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)). Indeed, the evidence adduced by the Complainant is that from at least as early as October 26, 2000, and continuing through to January 12, 2000, the URL www.argylediamond.com automatically redirects Internet users to another website connected with the Respondent, www.directoryaustralia.com. Thus, the effect of use of the disputed domain name is to increase Internet traffic to another website and there is no independent offering of goods or services by the Respondent under the disputed domain name.

Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "Argylediamond" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)). In this regard, the Complainant refers to an email dated October 29, 2000, in which Mr Hull, the CEO of eINFO states that "domain has not been used in the context of the jewellery industry" but that eINFO had considered "the sale of such in the future in the diamond and precious stone area" (Complaint, Exhibit M) and a later email dated November 12, 2000, from Mr Hull in which he states that eINFO intends to use it as part of two other websites, Gemstones.com.au and gemstonesaustralia.com. Both these messages confirm that no bona fide use of the name "argylediamond" had been made to date by the Respondent.

Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response and evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case D 2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case D2000-0615.

In the light of the above, the Complainant contends that the circumstances set out in subparagraphs are (i) and (iv) are present.

Acquisition for purpose of sale or rent at a valuable consideration

The Complainant points to a number of circumstances from which it can be inferred that the registration of the domain name was made for the purposes of resale or rental at a consideration in excess of the Respondentís documented out-of-pocket expenses. These are:

- The admissions by Hull in the two email message dated October 29, 2000 and

November 12, 2000 referred to above under 6.2.

- The eINFO website, which makes it clear that it "develops attractive domain names and then partners with or licenses the use of these domain names to other entities to use as an internet retail presence" (Complaint, p 8). More specifically, the eINFO website (Complaint, Exhibit L) states that eINFO has some "3,000 domain names registered in total. 2000 make up DirectoryAustralia.com and an additional 1000 generic domain names will be developed as eCommerce sites by way of joint ventures and strategic partnership to bolt on to the DirectoryAustralia.com framework." Ö The Complainant (Complaint, p 8) states that the DirectoryAustralia.com website explains this "business model" further, namely that its "concept" was "to structure the Internet using 2000 domain names as separate Internet directories (portals). DirectoryAustralia was one of the first to move in the rush for domain names and is Australiaís largest individual holder of domain names" (Complaint. Exhibit Q). An email message dated November 15, 2000 from Tony Paterson of eINFO (Complaint, Exhibit P) provides further background on the business activities of the Respondent, but strenuously maintains that the latter has the highest "Ethical Standards" and does not engage in cybersquatting. In general, it cannot be inferred from the preceding statements that eINFO is in the business of registering other partiesí trade marks as domain names. On the other hand, they make it clear that eINFO has a business of registering and then (possibly) selling or renting out domain names as part of its overall DirectoryAustralia "internet environment".

- An email message of November 5, 2000, from Hulls to the Complainant in which eINFO offered to transfer the domain name, providing that Argyle pay "eINFO $US2000 being for registration, delegation, hosting fees, administration, legal fees, transfer and labour" (Complaint, Exhibit N).

- An email message of November 12, 2000, from Hulls to the Complainant in which he (Hull) states that the registration cost was $180, with no indication of whether this was in Australian or US dollars (Complaint, Exhibit O). In the same message, Hull explains that the $2000 charge comprises a "delegation and setup fee" (there is no explanation of what this means), a hosting fee (EINFO charges clients $700 per annum) and the cost of his own time in communicating with the Complainant as well as legal fees.

In the light of the above, while it would not be reasonable to conclude that the Respondent is systematically engaging in the activity described in subparagraph 4(b)(i), in the specific case of <argylediamond.com> this does appear to be so. Thus, the fees charged in addition to the registration cost seem quite arbitrary and there is no explanation or justification given for them. In the absence of any Response by the Respondent, it is open to the Panel to infer that these charges are only added in by way of giving colour to a demand for a sum that is clearly in excess of the documented out-of-pocket expenses. In this regard, it is worth noting that the Panel in the World Wrestling Federation case, WIPO Case No D99-0001

(January 14, 2000), found that this element of paragraph 4(b) was made out when a consideration of $US1,000 was requested. Accordingly, the Panel finds in the present proceeding that the <argylediamond.com> domain name was registered and used in bad faith by the Respondent within the meaning of subparagraph 4(b)(i).

Acquisition in order to attract Internet users

Evidence presented by the Complainant indicates that, from at least October 26, 2000, to January 12, 2001, Internet users who accessed the URL www.argylediamond.com were automatically redirected to the website at www.directoryaustralia.com (Complaint, Exhibit I). This is a commercial website developed by eINFO (see above) and there is also evidence that eINFO is planning to develop a website dealing specifically gemstones that are to be part of the DirectoryAustralia website (Complaint, Exhibits O and Q), although it does not appear that it is presently selling or providing goods or services relating to gemstones. In the light of this, it is difficult to escape the conclusion that the Respondentís use of the disputed domain name has been an intentional attempt to attract, for commercial gain, Internet users to its web site or location, through the creation of a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of that web site or location. Accordingly, the Panel finds that there has also been registration and use in bad faith of the disputed domain name within the meaning of subparagraph 4(b)(iv).

6.4 Conclusions

The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.

 

7. Decision

The Administrative Panel accordingly directs that the registration of the domain name <argylediamond.com> should be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: March 21, 2001