WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Birks & Mayors Inc. v. Berc Divrikli, Aqua Diamond
Case No. D2011-1155
1. The Parties
The Complainant is Birks & Mayors Inc. of Montreal, Quebec, Canada, represented by Borden Ladner Gervais, LLP, Canada.
The Respondent is Aqua Diamond of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <birksjewelry.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 8, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On July 11, 2011, Melbourne IT Ltd. 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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Response was filed with the Center on August 2, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 11, 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.
4. Factual Background
According to the WhoIs, the disputed domain name was registered on July 8, 2005. The owner is Aqua Diamond and the Administrative Contact is Berc Divrikli.
The Complainant is a Canadian company which owns a Canadian trademark registration for BIRKS for goods including jewelry dating from 1933 and claims use of the trademark since 1914. The Complainant also owns a number of other trademarks including BIRKS in Canada, the United States of America and in other countries and claims use of the trademark in the United States since 1981. It claims that it is a global brand and a leading Canadian luxury brand designer and manufacturer of jewelry operating both online and through a chain of retail stores. It also owns the domain names <birks.com> and <birks.ca>.
The Response was filed by and in the name of Berc Divrikli; no other information is available as to the relationship between the Respondent and Mr. Divrikli. Mr. Divrikli claims to be the owner of the disputed domain name. He states that he is a designer and manufacturer of high quality jewelry operating under the disputed domain name for seven years. He claims to produce only one or two rings or earrings per month. As at November 26, 2010 the disputed domain name resolved to a webpage advertising a range of rings, earrings and necklaces and giving an email address, “[…]@birksjewelery.com”. It also provided a link to a website at ‘www.aquadiamond.com”. Mr. Divrikli is also the owner of the domain name <tiffany-jewelry.com>.
Although there is no definite information as to the relationship between Aqua Diamond and Mr. Divrikli it is reasonable to assume that the name Aqua Diamond is a name under which Mr. Divrikli carries on business. Accordingly, Mr. Divrikli and Aqua Diamond will hereinafter be referred to jointly as "Respondent" except where it is necessary to distinguish between them.
The Complainant states that it became aware of the existence of the disputed domain name in November 2010. On December 1, 2010 the Complainant's attorneys sent a cease and desist letter to the Respondent and to Mr. Divrikli. In reply Mr. Divrikli stated:
(…) "From 2005-07-08 to 2010-12-07 [64 months] – My monthly costs [$104.95] this inculding monthly serch enghin optimization, monthly live domain hosting, domian name registration and maintenance" (…)
The Complainant apparently construed that statement as an offer to sell for that amount. The offer was rejected and following further correspondence and a telephone discussion the Complainant made a final offer on February 18, 2011 to purchase the disputed domain name for USD 3,000. Mr. Divrikli did not reply to that offer.
5. Parties’ Contentions
The Complainant's submissions may be briefly summarized as follows:
It is the owner of the trademark BIRKS by virtue of extensive and continuous use of the trademark in Canada, the United States and on the Internet and is the owner of registrations of trademarks consisting of, or including BIRKS in each of those jurisdictions.
The first term of the disputed domain name is identical to its BIRKS trademark and the addition of the non-distinctive suffix "jewelry" is irrelevant to the assessment of similarity between the disputed domain name and the trademark.
The Respondent is not commonly known by the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name and its use to direct to a website offering items of jewelry in competition with the Complainant is an infringement of the Complainant's rights in its trademarks.
The Respondent's use of the disputed domain name to direct to a site through which, among other things, jewelry can be purchased does not constitute use of the disputed domain name in connection with the good faith offering of goods or services.
The Respondent has engaged in a pattern of conduct of registering a domain name in order to prevent the trademark owner from reflecting the trademark in the corresponding domain name. Complainant cites the Respondent's registration of the domain name <tiffany-jewelry.com> as evidence of a pattern of such conduct.
The Complainant had established rights and a well-known reputation in Canada and the United States before the disputed domain name was registered and the Respondent knew, or should have known, of such rights and reputation when he registered the disputed domain name.
By using the disputed domain name to direct to a website offering goods in direct competition with the Complainant, the Respondent has done so for the purpose of disrupting the business of the Complainant and has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks. In particular, the Complainant cites the fact that the website at the domain name contained a banner which referred to the disputed domain name and was clearly attempting to associate its products with the BIRKS trademarks.
The Respondent's submissions, in the name of Mr. Divrikli, are as follows:
The disputed domain name is his personal property and is not for sale at any price or to anyone.
The Complainant has never been known as <birksjewelry.com> and there is no possibility Internet users will access his website at the disputed domain name by typing Complainant's well-known names.
His email in response to the Complainant's letter of demand was not an offer to sell the disputed domain name but to show that he did not steal said domain name but bought it and was paying USD 104.95 per month for it.
He is a designer and maker of high quality fine jewelry, making one or two rings per month, and there is no way the Complainant's name and his website can be confused.
He has been known for seven years as <birksjewelry.com> and it is part of his email address “[…]@birksjewelry.com”.
He denies that the disputed domain name is used to divert consumers or to tarnish any trademark and requests that the Complaint be denied and a finding of reverse domain name hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly demonstrated rights in the trademarks BIRKS by virtue of its trademarks registrations in Canada and the United States and by extensive use in those jurisdictions for very many years. The addition of the descriptive word "jewelry" to a trademark used extensively by the Complainant in respect of goods including jewelry does nothing to distinguish the disputed domain name from the trademark. The use of that domain name to direct to a competitive site also offering jewelry must inevitably add to the capacity of the disputed domain name to cause confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made a strong prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and that the use of that domain name constitutes illegitimate. In response, the Respondent asserts that said domain name is his personal property and that for seven years he has been known as <birksjewelry.com> and has used <birksjewelry.com> as part of his email address. Although not stated as such, it is inherent in the Response that the Respondent relies on the defence afforded by paragraph 4(c)(i) of the Policy, that prior to notice to him of the dispute he had used the domain name in the bona fide offering of his goods.
The essence of the Respondent's case is therefore that because he registered the disputed domain name and has used it to direct to his website and as part of his email address, he has rights and a legitimate interest in it.
The Respondent acknowledges in the Response that the Complainant's name is well-known. It is apparent from the Complainant's United States trademark registrations, dating from well prior to the Respondent's alleged first use, that his use of the disputed domain name in the promotion of his jewelry is prima facie illegitimate.
As to the Respondent's assertion that he has been known by the domain name for seven years there is no evidence to support this. The Respondent's personal name is Berc Divrikli and the name under which he apparently trades, and in which the disputed domain name is registered, is Aqua Diamond. There is nothing to indicate that the Respondent is commonly known by the disputed domain name or that he has been so known for seven years. The Complainant became aware of the disputed domain name only in November 2010. Further, while not conclusive, the Panel notes that the only hits recorded for the disputed domain name at “www.archive.org” are for 2008; each of which state that the website at the domain name is "under construction".
The Respondent has offered no explanation as to why he chose to use the Complainant's name and trademark, a name which he acknowledges to be well-known, as the principal component of the disputed domain name. Neither has the Respondent provided any evidence on which it could be said that the offering of his competing goods at the website to which the disputed domain name resolves can be a use in the bona fide offering of his goods. In Harvey Norman Retailing Pty Ltd v gghome.com Pty Ltd, WIPO Case No. D2000-0945, learned panel said:
"This Administrative Panel concludes that such offering of services by the Respondent was not bona fide, in the manner in which that term is used in paragraph 4(c)(i) of the Uniform Policy. It is of significance that the Respondent has provided no explanation for why it chose the words "harvey norman" for its domain name. The Complainant's registered trademark HARVEY NORMAN is long-established and widely known in Australia, which is the location of the Respondent. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant's rights in the trademark can be imputed to the Respondent at the time of its registration of the domain names. Further, the words "harvey norman" bear no obvious relationship to the business or other activities of the Respondent, and no such relationship was even asserted by the Respondent. Thus, the inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant. Accordingly, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name "harveynorman.com".
The words of the learned panel are apposite to this case, all the more so since in this case, as distinct from Harvey Norman, supra, the goods being offered by the Respondent are in direct competition with those of the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent does not dispute that he was aware of the Complainant's trademarks when he registered the domain name, and he has no rights or legitimate interests in the disputed domain name. It is apparent also for the reasons discussed above, that the Respondent has registered and used the disputed domain name intentionally to attract users to his website by creating a likelihood of confusion with the Complainant's trademarks and that he has done so for commercial gain. No other reason can logically be assigned to his selection of a competitor's well-known trademark for his domain name.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. It follows from that conclusion that the Respondent's request for a finding of reverse domain name hijacking is denied.
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 <birksjewelry.com> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: August 24, 2011