WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gassan Diamonds B.V. v. Internet-Dating.Com
Case No. D2011-0774
1. The Parties
The Complainant is Gassan Diamonds B.V. of Amsterdam, Netherlands, represented by Bingh Law Firm, Netherlands.
The Respondent is Internet-Dating.Com of Mission, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <gassan.com> is registered with GoDaddy.com, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on May 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2011. The Response was filed with the Center on June 1, 2011.
The Center appointed David H. Bernstein as the sole panelist in this matter on June 16, 2011. 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.
On June 29, 2011, the Panel issued the Administrative Panel Procedural Order No. 1, which provided, in relevant part:
“A. This is a refiled case. The parties participated in a UDRP proceeding in 2000 involving the Domain Name before eResolution (Case No. DeC AF-0149). The parties have submitted to this Panel a copy of the decision in the prior case, but they have not submitted copies of the Complaint and Response filed in the 2000 action.
B. In the Complaint, the Complainant states that ‘Gassan Diamonds B.V. is (among other trademark registrations) the owner of the registrations GASSAN as provided in Annex I to this Complaint.’ The registration document provided at Annex I is in Dutch. The Respondent has requested that this document be translated into English.
C. In the Complaint, the Complainant states that ‘by e-mail 4 December 2010 Mr. Van Etten contacts Complainant (through it’s trademarks agent ‘Elzas Norrdzij’); Mr. Van Etten invites Complainant to make an offer for the domain name (Annex XXVII).’ The email submitted as Annex XXVII is in Dutch.
D. In the Complaint, the Complainant states that ‘by e-mail 21 December 2010 Complainant offers an amount of $ 1.000,-USD for the domain name (Annex XXVIII).’ The email submitted as Annex XXVIII is in Dutch.
E. The Respondent has attached, at Annex IV, a copy of the Registrar’s WHOIS database relating to the Domain Name. However, the Respondent has not included any information indicating the date or dates on which the registration for the Domain Name was last renewed.
Pursuant to paragraph 12 of the Rules, the Panel hereby requests that the Complainant and the Respondent file additional submissions addressing the following requests:
1. The Complainant is requested to submit the following information and documents to the Center, with a copy to the Respondent, on or before July 8, 2011:
a. A copy of the submissions to the Panel in the prior eResolution proceeding related to the domain name (including, if Complainant has them, the Complaint and Response).
b. A certified translation into English of the Dutch trademark registration for GASSAN attached to the Complaint as Annex I.
c. A certified translation into English of the email attached to the Complaint as Annex XXVII.
d. A certified translation into English of the email attached to the Complaint as Annex XXVIII.
e. Any information available to the Complainant concerning the date on which the Respondent most recently renewed the Domain Name
f. The Complainant may, but is not required to, submit further comment and documentation relating to the materials requested in this Order, and concerning the applicability of paragraph 2 of the Policy to the issues in this proceeding. Additional submissions relating to issues outside those referenced in this Procedural Order will be disregarded.
2. The Respondent is requested to submit the following information and documents to the Center, with a copy to Complainant, by July 15, 2011:
[a]. Any additional documents or translations to supplement those requested above in paragraphs 1(a)-(d) and those submitted by Complainant with its supplemental submission.
[b]. Information concerning the date on which the Domain Name was last renewed, along with any documentation within Respondent’s control evidencing the renewal date.
[c]. The Respondent may, but is not required to, submit further comment and documentation relating to the materials requested in this Order, and in response to the additional materials and information submitted by Complainant, and concerning the applicability of paragraph 2 of the Policy to the issues in this proceeding. Additional submissions relating to issues outside those referenced in this Procedural Order will be disregarded.
In light of this Procedural Order, pursuant to paragraph 10(c) of the Rules, the date by which the Panel will transmit its decision to the Center is hereby extended to July 29, 2011.”
On July 8, 2011, Complainant submitted a supplemental submission in response to the Panel’s request. The supplemental submission included certified English translations of 1) Complainant’s trademark registration for GASSAN, 2) email from Respondent to Complainant, dated December 4, 2010 and 3) email from Complainant to Respondent, dated December 21, 2010. In addition, the Complainant stated that, to the best of its knowledge, <gassan.com> had most recently been renewed on October 29, 2010. The Complainant stated it was no longer in possession of the documents it submitted in the prior eResolution arbitration. The Complainant did not include additional arguments in its supplemental submission.
Respondent submitted its supplemental submission on July 13, 2011. The submission consisted of a receipt showing Respondent had last renewed the registration for <gassan.com> on October 29, 2010. Respondent did not submit any of the materials it had submitted in the prior eResolution arbitration. Respondent did not include additional arguments.
4. Factual Background
The Complainant in this case is Gassan Diamonds B.V., a Netherlands corporation. The Respondent is Internet-Dating.Com of Mission, British Columbia, Canada.
On March 21, 2000, the Complainant commenced a UDRP proceeding through eResolution (Gassan Diamonds v. Van Etten Bernardus Jacobus, Case Nos. AF-0149a; AF-0149b). That proceeding concerned two domain names registered by Respondent: <gassandiamonds.com> and <gassan.com>.
Because the Complainant and Respondent were unable to provide any of the documents they submitted to the eResolution arbitration, it is unclear what precise claims were made in that proceeding. Among other things, it appears that the Complainant asserted the Respondent acted in bad faith by demanding USD 110,000 to transfer <gassandiamonds.com> to the Complainant, and that, as to <gassan.com>, Respondent acted in bad faith because Respondent had registered this domain name reflecting the Complainant’s mark as well as a number of domain names relating to major Dutch newspapers.
Based on the short report in the eResolution decision, it appears that Respondent defended against Complainant’s allegations by asserting that it was in the business of registering and buying domain names for clients, and that it registered <gassan.com> in good faith for a family with the surname “Gassan.” Respondent apparently did not try to defend its registration of <gassandiamonds.com> and indicated that that domain name could be transferred to the Complainant.
Because Respondent had not effectuated the transfer of <gassandiamonds.com> to the Respondent, the eResolution panel decided to address both domain names in its May 25, 2000 decision. The panel found that the Respondent had acquired and used <gassandiamonds.com> in bad faith and ordered it transferred to the Complainant. As to <gassan.com>, however, the Panel found that the Complainant had failed to prove that the Respondent had no legitimate interest in the domain name and that the Respondent had acquired and used the domain name in bad faith. The panel thus denied the Complaint as to <gassan.com>.
Nearly eleven years later, Complainant filed this refiled Complaint against Respondent with a renewed challenge against the <gassan.com> domain name.
5. Parties’ Contentions
Complainant is a diamond trading company, based in Amsterdam, Netherlands, that has been in business since 1945. Complainant has operated under a variety of names, including “Samuel Gassan Diamonds House” and “Samuel Gassan N.V.” in addition to the current name “Gassan Diamonds B.V.”. Currently, Complainant has offices in Belgium, the United Kingdom of Great Britain and Northern Ireland, the United States of America, Israel, Japan, Hong Kong, Singapore and Indonesia.
Complainant has used the trade name “Gassan” for an extensive period of time. As a result, the name “Gassan” has become closely linked with the company. Complainant successfully registered the GASSAN trademark on September 29, 2005.
Complainant argues that, taking into account the fact that the .com suffix is indistinctive, the disputed domain name is identical to both the trade name “Gassan” and the trademark GASSAN.
Complainant alleges that the Respondent has no right or legitimate interest in <gassan.com>. Complainant states that Respondent has not used <gassan.com> in connection with any legitimate purpose. In support, Complainant submits screenshots from “www.archive.org” showing that, after the eResolution decision, Respondent used the domain name in the following ways over the course of the ensuing decade:
1. Domain name fails to resolve to any website or resolves to a website that states that it is “under construction.”
2. Domain name redirects to Complainant’s website, <gassandiamonds.com>.
3. Domain name redirects to <metrocasino.com>, a gambling website.
4. Domain name hosts a copy of the 2000 eResolution decision and negative statements about Complainant.
5. Website displays a map of “Van Etten Junction.”
6. Domain name redirects to Internet-Dating.com.
7. Domain name hosts angry statements regarding domain dispute process.
8. Domain name redirects to the website of Coster Diamonds, a competitor of Complainant.
9. Domain name hosts negative comments regarding Complainant’s “shady attempts” to acquire the domain name.
10. Domain name redirects to “www.diamonds.com”, a competitor of Complainant.
11. Domain name redirects to a website for Gassan Golf courses, a series of golf courses located in Southeast Asia.
Complainant argues that these new uses of the disputed domain name constitute new facts that make it appropriate for the Panel to consider this refiled case.
Finally, Complainant alleges that Respondent registered and used the domain name in bad faith. In support of this allegation, Complainant claims that, in 1999, Respondent requested USD 110,000 for the domain name <gassandiamonds.com>. Complainant further argues that, on multiple occasions since 2001, the domain name <gassan.com> has redirected visitors to websites belonging to Complainant’s competitors in the diamond trade. Complainant alleges that Respondent also has used <gassan.com> to disparage the Complainant. In addition, Complainant submitted to this Panel an email dated December 4, 2010, in which Respondent invited Complainant to make an offer for the domain name <gassan.com> through GoDaddy.com’s “Domain Buy Service.” Complainant responded via email and offered Respondent USD 1,000 in exchange for <gassan.com>. Respondent did not accept this offer.
Respondent claims that it registered <gassan.com> in good faith. The Respondent points out that it first registered <gassan.com> in 1998, seven years before the Complainant registered the GASSAN trademark.
Respondent argues that GASSAN is generic because it is a common Hebrew name and is the name of a mountain, of a school, and of a series of golf courses. Respondent also states that Complainant has no need for the domain name <gassan.com> because the Complainant is already strongly identified with the domain name <gassandiamonds.com>. Respondent further alleges that Complainant has no real interest in the disputed domain name because Complainant has failed to register the word “gassan” in other generic top level domains (“gTLDs”) including .com, .net, .biz, .me and .mobi. Respondent argues that the Complainant’s lack of interest is further shown by the fact that the Complainant failed to register “gassandiamonds” in many of these gTLDs as well. Respondent supplies evidence that the Respondent has registered the names “gassan” and “gassandiamonds” in conjunction with a number of these gTLDs.
Respondent states that it has a legitimate interest in the domain name <gassan.com>. Respondent claims that it has a free speech right to register and possess the disputed domain name. Respondent argues that <gassan.com> redirects to the website of Gassan Golf, a group of golf clubs in Southeast Asia, and that this is proof that the Respondent has a legitimate interest in the domain name.
Finally, the Respondent argues that this filing is an unauthorized attempt to overturn the valid eResolution arbitration decision.
6. Discussion and Findings
A. The Re-filed Complaint
A complaint will be considered a re-filed complaint if it is a “subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint.” Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. Complainant does not dispute that its Complaint in this case is a re-filed complaint.
Before considering the merits of the Complaint, the Panel must thus first consider whether the Panel should render a decision on the Complaint at all, given that it is a re-filed Complaint. For the reasons explained below, the Panel concludes that consideration of this re-filed Complaint is appropriate.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus view on re-filed complaints as follows:
“A refiled case involves the Complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the Complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the Complainant during the original case.”
WIPO Overview 2.0 § 4.4 (citing Creo Products Inc. v. Website In Development, supra; Maruti Udyog Ltd. v. maruti.com, WIPO Case No. D2003-0073; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527). Additionally, the grounds that allegedly justify entertaining the re-filed complaint should be clearly identified in the re-filed complaint. Creo Products Inc. v. Website In Development, supra.
With those consensus principles in mind, the Panel notes that the only basis for acceptance of its refiled Complaint on which the Complainant relies in this case is the first that “relevant new actions have occurred since the original decision.” Specifically, Complainant has alleged a series of new uses of <gassan.com> that are inconsistent with Respondent’s previous uses and that are inconsistent with Respondent’s assertion in the 2000 eResolution proceeding that Respondent registered the domain name for use by the Gassan family. Complainant has also alleged that Respondent offered to sell <gassan.com> to Complainant in 2010.
When a party alleges “relevant new actions” as justification for accepting a refiled Complaint, those actions must not be, “in substance, the same as the acts on which the previous complaint was based.” Creo Products Inc. v. Website In Development, supra. As noted above, neither party was able to provide the Panel with the submissions from the eResolution arbitration, and thus the Panel is hampered in its ability to definitively assess the extent to which the allegations in the instant proceeding are new. That said, based on the short discussion of the parties’ submissions in the eResolution panel decision, and the screen shots that Complainant has submitted showing the subsequent use Respondent has made of the disputed domain name, and the representations the parties have made in the present action, the Panel finds that Complainant’s allegations in this case are substantively different from the allegations made in the eResolution proceeding.
Another new fact is that Respondent has offered to sell the <gassan.com> domain name to the Complainant, and Respondent subsequently refused to accept payment of USD 1,000, which indicates that Respondent is looking to sell the domain name for an amount greater than its registration costs. (The Panel has disregarded, though, Complainant’s allegations that Respondent previously offered to sell <gassandiamonds.com> for USD 110,000; first, that is not the domain name at issue in this proceeding, and second, that allegation was made before the eResolution panel and thus it is not a new fact on which this Panel can or should rely).
Accordingly, the Panel finds that the Complainant has satisfied its burden of establishing that the Panel should consider this refiled Complaint.
Turning to the merits, according to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
As Complainant properly notes, the gTLD is generally disregarded in assessing the similarity between the domain name and the relevant trademark. Here, the domain name <gassan.com> is identical to Complainant’s trademark GASSAN. That “Gassan” is a common Hebrew name and may refer to a mountain, a school or a golf course is immaterial to the determination of this issue.
C. Rights or Legitimate Interests
To prevail under the second factor, the Complainant must establish that the Respondent has no rights or legitimate interests in the domain name. Although the burden of proof rests with the Complainant, panels have recognized the difficulty of proving a negative proposition. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (citing Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). Therefore, the consensus view is that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. . . . If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” WIPO Overview 2.0, paragraph 2.1.
A respondent may demonstrate rights or legitimate interests in a domain name by showing, inter alia, that (i) before any notice of the dispute, 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) respondent has been commonly known by the domain name, even if it has not acquired trademark or service rights; or (iii) respondent is 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. Policy, paragraph 4(c).
Complainant alleges that the Respondent has no rights or legitimate interest in the domain name <gassan.com> because Respondent has used the domain name for a variety of illegitimate, non-business-related uses including: 1) to critique Complainant; 2) to critique the previous eResolution decision; 3) to display a map of “Van Etten Junction”; and 4) to redirect visitors to the websites of competitors of the Complainant.
There is an interesting question as to whether Respondent’s criticism of Complainant and of the eResolution decision constitutes an illegitimate use. Under United States legal principles, such criticism, if in good faith and noncommercial, would normally be seen as a fair use. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. However, in a case like the instant one, between a European Complainant and a Canadian Respondent, it is not clear which law should apply and whether the relevant law would treat such criticism postings as fair or illegitimate. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
The Panel need not decide that issue because Respondent’s use of the domain name to redirect visitors to the websites of Complainant’s competitors is clearly illegitimate. Redirection to unrelated websites, such as Internet dating sites, is similarly reflective of a lack of legitimacy. As such, Complainant has provided sufficient evidence to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the domain name <gassan.com>.
Respondent attempts to rebut this showing by arguing that it is use <gassan.com> in connection with a bona fide offering of goods. Specifically, the Respondent points to the redirection of <gassan.com> to the website of Gassan Golf as indicative of the Respondent’s legitimate use of <gassan.com>.
If anything, that argument actually undermines Respondent’s assertions. There is no showing of any relationship whatsoever between Respondent and the operator of the Gassan Golf course. Rather the temporary linkage to the Gassan Golf websites (which in any event has since been disabled, and the website now resolves back to <Internet-Dating.com>) smacks of a pretextual move done soley to support Respondent’s arguments in this proceeding.
Similarly without merit are Respondent’s assertions that Complainant has no need for <gassan.com> because Complainant already uses another mark. The question here is whether Respondent has a legitimate right or interest in <gassan.com>, not whether this is a mark that Complainant covets.
In sum, the Panel finds that Complainant has sustained its burden of showing that Respondent has no rights or legitimate interests in <gassan.com>.
D. Registered and Used in Bad Faith
The final factor in a UDRP Complaint is whether the Complainant can show that the Respondent has registered and used the domain name in bad faith. AB Svenska Spel v. Andrey Zacharov, supra. As the Policy explains, a complainant may demonstrate a respondent’s bad faith by, inter alia, showing that the respondent “registered or . . . 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Paragraph 4(b).
The Respondent in this case registered <gassan.com> in 1998, decades after the Complainant’s adoption of the GASSAN trademark. Although the Respondent indicated during the course of the eResolution proceeding that it registered the domain name for use by the Gassan family, the fact that the Respondent has not put the domain name to that use in the decade since calls that assertion into serious doubt.
The Respondent’s true intentions appear to have been laid bare by the Respondent’s attempt in 2010 to sell <gassan.com> to Complainant. That offer to sell the domain name is itself bad faith use, and it also gives rise to an inference that the domain name may well have been registered in bad faith as well (an inference that is supported by the fact that the Respondent also registered <gassandiamonds.com> at that time, and that the Respondent subsequently used the domain name to redirect to the websites of Complainant’s competitors). (See also, e.g. regarding inferences drawn from offers of sale, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, and other decisions on point referenced in paragraph 3.6 of the WIPO Overview 2.0.)
Had the Respondent not changed the nature of its use of the domain name since the eResolution decision, the offer to sell would not have constituted sufficient evidence to find bad faith. That is because the eResolution panel found that the Respondent had a legitimate interest in the domain name, and whether or not this Panel would have ruled the same way on the evidence presented, there would be no basis for this Panel to reconsider that ruling. Since this Panel would be constrained to defer to that finding, the Panel would have to accept that the Respondent had a legitimate interest in the domain name, and as such, it would have the right to offer to sell property in which it has a legitimate interest without giving rise to an inference of bad faith. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654.
Once the Respondent changed the nature of its use, though, it reopened, for this Panel to consider, the question of whether the Respondent’s use of the domain name still was a protected legitimate interest. Having found that the Respondent did not have any rights or legitimate interests in the domain name based on some of the uses it has made of the domain name since the eResolution decision, the Panel concludes that the Respondent’s offer to sell the domain name to the Complainant for a cost in excess of its registration expenses constitutes classic cybersquatting.
The Panel therefore finds the Complainant has succeeded on balance in showing bad faith registration and clear bad faith use of the domain name <gassan.com> by the Respondent. In addition, to the extent that renewal of the domain name should be treated as a relevant time period under paragraph 2 of the Policy, see Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688, bad faith renewal is also apparent in this case. Respondent renewed the registration in <gassan.com> on October 29, 2010. Just over a month later, without having made any legitimate use of the domain name in the period since renewal, Respondent contacted Complainant and offered to sell <gassan.com>. The timing of the offer, coming immediately upon the heels of the renewal, supports a finding that the renewal was in bad faith and, as such, violated paragraph 2 of the Policy which states that, “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” (Emphasis added.)
The Panel in any event concludes for the reasons mentioned earlier that the Complainant has succeeded in showing that the Respondent registered and used the domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name <gassan.com> be transferred to the Complainant.
David H. Bernstein
Dated: July 29, 2011