WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Admiral Insurance Services Limited v Diamond Trust Consultancy (UK) Limited
Case No. DBIZ2002-00232
1. The Parties
The Complainant is Admiral Insurance Services Limited, Capital Tower, Greyfriars Road, Cardiff, CF10 3AZ, United Kingdom.
The Respondent is Diamond Trust Consultancy (UK) Limited, 70 Upper Richmond Road, London SW15 2RP, United Kingdom.
2. The Domain Name and Registrar
The Domain Name is <diamond.biz>.
The Registrar is Total Web Solutions D.B.A. Total Registrations.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on May 15, 2002, and in hardcopy form on May 22, 2002. On June 17, 2002, the Center issued a STOP Complaint Deficiency Notification. The Amended Complaint was received by the Center on June 18, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy (the "STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules") and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On June 26, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was July 16, 2002.
On July 19, 2002, the Response was received by the Center by email and on July 29, 2002, in hardcopy form.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel.
4. Factual Background
Admiral Insurance Services Limited (the "Complainant") is engaged in the field of motor insurance which it sells under various brand names, including, since 1997, the mark DIAMOND.
The Complainant has a UK trademark registration of a word and device mark, which includes the word DIAMOND, but no registration of the word DIAMOND (per se). However, the Respondent does not dispute that the Complainant has rights (unregistered rights) in the mark DIAMOND in relation to insurance products/services.
Diamond Trust Consultancy (UK) Limited (the "Respondent") claims to have been trading as DIAMOND in the UK since 1990. It has a UK trademark registration of the word mark DIAMOND TRUST. The company, together with its beneficial owner, Mr. Nick Diamond, is engaged in the field of inter alia, Internet marketing services.
The Respondent registered the Domain Name on March 27, 2002.
5. Parties’ Contentions
The Complaint is very short. The substance of it reads as follows:-
"V. Factual and Legal Grounds
(STOP, paras. 4(a), (b), (c); STOP Rules, para. 3)
[13.] This Complaint is based on the following grounds:
- The complainant is a nationally well-known company in the field of motor insurance, which it sells under different brands, including the DIAMOND brand. The DIAMOND brand was launched in June 1997 and now has 160,000 policyholders.
- In accordance with STOP Rules, para. 3(c)(viii), the Complaint is based on the fact that trademark ‘Diamond’ is registered to the Complainant. The services used under this trademark are Motor and non-marine general insurance services. The trademark ‘DIAMOND’ incorporating the words ‘DIAMOND’ as part of the mark was registered on 16th June 2000. (Annex 3)
- The Respondent has the registered trademark ‘DIAMOND TRUST’ in two words (Annex 4) and has also registered the domain names <diamondtrust.co.uk>, <diamondtrust.biz> and <diamondtrust.org.uk> (Annex 5).
- The Respondent does not trade as Diamond Trust but as Chain Reaction Limited owning and using the web address chain-reaction.net as the main Internet presence.
- The Claimant owns <diamond.co.uk> and <diamond.uk.com>. The Claimants potential and actual customers could be confused by ‘Diamond Trust’ owning and using <diamond.biz>. Over that last month 20% of the people visiting the "diamond.co.uk" site used ‘DIAMOND’ as the search keyword. This will undoubtedly produce increased amounts of Internet users visiting the Respondents website in error if the Respondent retains <diamond.biz>.
- The Respondent is commonly known as Diamond Trust and not Diamond.
- Attached to this documentation, in Annex 6 is a copy of our company letterhead."
The Respondent acknowledges that the Complainant has rights in the trademark, DIAMOND, for motor insurance services.
The Respondent states that it registered the Domain Name "in order to use the domain to promote the various commercial interests of the Respondent and Mr. Diamond".
The Respondent claims that Mr. Diamond, its beneficial owner, commenced trading personally under the DIAMOND name in 1979. It is claimed that Mr. Diamond conducts business personally in the UK, South Africa, The Netherlands, Mozambique, Tanzania, Kenya, China, Russia, Dubai, Hong Kong and the United States of America.
The Respondent and Mr. Diamond "intend to use the <diamond.biz> domain to market Mr. Diamond’s Internet marketing services internationally, also to market his hotel and tourism consultancy to developing countries, and to market his business-planning consultancy internationally."
The Respondent identifies the various circumstances set out in paragraph 4(b) of the STOP contending that none of them are applicable here.
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that
(i) The Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
For the purposes of the STOP, the Complainant cannot rely upon its registered rights in the name DIAMOND, because its registered rights are not for the word DIAMOND (per se). Accordingly, the Domain Name is not identical to a registered trademark in which the Complainant has rights.
However, for this purpose the Complainant’s relevant rights are not restricted to registered rights. Those rights may be unregistered rights. The Respondent has acknowledged that the Complainant has trademark rights (albeit unregistered rights) in the mark DIAMOND for motor insurance services.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
Respondent’s Rights and Legitimate Interests
Given that the Respondent is a distinct legal entity from its beneficial owner, Mr. Nick Diamond, and given the lack of particularity as to the extent to which the interests of each are identical or overlap, there is scope for doubt as to whether or not the Respondent can reasonably be said to have rights or legitimate interests in respect of the Domain Name. However, in light of the finding below, in respect of the bad faith claim, it is not necessary for the Panel to address this issue for the purposes of the Complaint.
However, this is a case where there are multiple IP claimants and it is therefore necessary under sub-paragraphs 4(l)(2)(ii) and (iii) of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the Domain Name.
While the Panel accepts that the selection of the Domain Name was in good faith, the Respondent’s "legitimate rights" appear to the Panel on the evidence before the Panel to be restricted to the Respondent’s name in full and the abbreviation "Diamond Trust". While in paragraph 20 of the Response the Respondent states "Diamond Trust Consultancy UK Limited has been trading as "Diamond" in the UK since 1990 …", there is nothing in the evidence before the Panel to substantiate that claim.
In the circumstances, the Panel is not satisfied that the Respondent has done enough to prove "legitimate rights" to the Domain Name and has no alternative, therefore, but to permit further challenges.
For a Complainant to succeed in proving that the Domain Name was registered in bad faith or is being used in bad faith, the Complainant has to show at the very least, that when registering it or using it the Respondent had or has the Complainant in mind.
All the examples of bad faith set out in paragraph 4(b) of the STOP necessarily involve a bad faith intent towards the Complainant. While that list of examples is non-exhaustive, the Panel is in no doubt that for the Complainant to succeed, it has to be able to show that the Respondent intended by registration, and/or intends by use to cause damage to or to take unfair advantage of the Complainant or its trademark rights.
Manifestly, the sole determining factor, which led to the Respondent’s choice of domain name, was the surname of the Respondent’s beneficial owner, Mr. Nick Diamond. There is nothing before the Panel to suggest that the Respondent had the Complainant in mind at any relevant stage.
In the result, the Complaint has to fail. The Complainant has not satisfied the Panel that the Respondent registered the Domain Name in bad faith or is using it in bad faith.
The Complaint is dismissed. In accordance with Paragraphs 4a (1) (ii) (3) of the STOP and 15 (e) of the STOP Rules, the Panel permits subsequent challenges under the STOP against the disputed domain name.
Dated: August 9, 2002