WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Greed Jewellery Limited v. Privacy--Protect.org/Milan Kovac
Case No. D2011-1532
1. The Parties
The Complainant is John Greed Jewellery Limited of Lincoln, United Kingdom of Great Britain and Northern Ireland, represented by Kingsley Napley LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Privacy--Protect.org of Shanghai China / Milan Kovac of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <johngreed.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2011. On September 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2011. On September 16, 2011, the Center transmitted an email communication to the parties in both Slovak and English regarding the language of the proceeding. On September 16, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 September 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 26, 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. Language of the Proceedings
The language of the registration agreement is Slovak. Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties or otherwise specified in the registration agreement, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The Complaint was filed in English and the Complainant has requested that the language of the proceedings should be English. In support of its request the Complainant states that the Respondent has a history of registering domain names which corresponds to English language brands, often involving a combination of the brand name and other elements which form a coherent combination, and the Respondent’s “chosen e-mail domain <worstwineever.com>” suggests that the Respondent has a good command of the English language. Further, the Complainant states that the contents and links in the English language on the web sites of domain names registered by the Respondent suggest that he is not only familiar with the English language but also strikes deals with Anglophone companies to whose websites he links. The Complainant, referring to prior UDRP decisions concerning the Respondent, also states that previous lack of submissions regarding the choice of language of proceedings infer that the question of language is not an issue of interest to the Respondent.
In this case the Panel accepts the Complainant’s submissions, noting that the Respondent has not objected to English as the language of the proceedings. In fact Respondent has not responded to the Complaint at all, notwithstanding that in correspondence from the Center to the Respondent communications in both English and Slovak were provided.
Therefore the Panel, having regarded the circumstances of the proceeding, decides that language of the proceeding shall be English.
5. Factual Background
The disputed domain name was registered on August 22, 2009.
The Complainant was previously called John Greed Design Limited but changed its name to John Greed Jewellery Limited on Marsh 9, 2010. The company is still the same legal person.
The Complainant is a designer and retailer of jewellery and has registered Community Trademark (Reg. No. 009065491) for the mark JOHN GREED JEWELLERY in classes 14 and 37 on April 29, 2010.
6. Parties’ Contentions
The Complainant is a well known designer and retailer of jewellery and its name reflects the name of its founder, John Greed. The Complainant has used the marks JOHN GREED, JOHN GREED DESIGN and JOHN GREED JEWELLERY as its primary marks since 2003. The domain names <johngreed.co.uk> and <johngreedjewellery.co.uk> were registered in 2008 and the Complainant has operated web sites at these domain names since.
The mark JOHN GREED is, inter alia, used prominently on the Complainant’s business cards and other marketing material. The Complainant’s advertising costs under the mark JOHN GREED has had the total sterling sums of GBP186,151, year to June 30, 2009; GBP673,512, year to June 30, 2010; and GBP1,199,485 year to June 30, 2011.
As a result of inter alia the Complainant’s marketing operations, substantial reputation and goodwill has been developed under the mark JOHN GREED. The mark JOHN GREED is to many people in the particular business distinctive of the Complainant’s products and business. There are also examples of press coverage and the Complainant’s nomination for an award. As a result of the above the Complainant has unregistered rights in the mark JOHN GREED under the common law of the United Kingdom as well as the registered right.
The disputed domain name is essentially identical and confusingly similar to the Complainant’s mark JOHN GREED. The suffix “.com” should be discounted.
The Respondent is not commonly known by the disputed domain name, nor is he making a legitimate noncommercial or fair use of it. The Respondent has not used the disputed domain name or any corresponding name in connection with a bona fide offering of goods or services, but is merely allowing the disputed domain name to be used for an automatically generated website containing click-through links to other web pages which relate to jewellery and fashion items provided by competitors of the Complainant and which provide the Respondent with commercial gain through a domain monetization service. This violates the rights of the Complainant and does not give rise to rights or legitimate interests to the Respondent within the meaning of the Policy. The Complainant sent a letter to the Respondent Privacy--Protect.org on June 15, 2011 asking for a transfer of the disputed domain name due to lack of legitimate interest. but did not receive any response.
The disputed domain name was registered and is being used in bad faith. The use of a privacy shield together with the registration of a domain name which combines a Christian name and surname, which is not a common combination, and the absence of a legitimate noncommercial offering, together show an obvious attempt to exploit an established brand in order to obtain commercial gain in the form of click-through commission using a domain monetization service. This, together with the lack of response to the letter sent to resolve the matter is strong evidence of bad faith. Further, the Respondent is using the domain name to confuse Internet users for the purpose of commercial gain and are reinforcing the confusion by the banner heading “Johngreed.com” on the home page of the website. Even if Internet users realizes that the website at the disputed domain name is not connected with the Complainant, the Respondent’s use still takes an unfair advantage of the Complainant’s mark and unfairly harms it. Moreover, evidenced by prior UDRP decisions, the Respondent Milan Kovac has a history of registering and exploiting domain names in which he has no legitimate interest.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Complainant has relied on the trade mark registration of the mark JOHN GREED JEWELLERY and submitted documents in order to prove established common law rights in the mark JOHN GREED. The Panel finds that the Complainant has proved its right to the trade mark JOHN GREED JEWELLERY, inter alia by the submitted registration certificate of the Community Trade Mark (Reg. No. 009065491), and that the prior registration date of the disputed domain name is irrelevant for the assessment of confusing similarity (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1).
The design elements of the registered mark are not relevant to the decision of confusing similarity (see Hero v. The Herioc Sandwich, WIPO Case No. D2008-0779) and, in accordance with the consensus view, the Panel does not regard the top-level domain suffix “.com” when deciding if the disputed domain name is identical or confusingly similar with the Complainant’s trademark. In accordance with this, the disputed domain name and the Complainant’s registered trade mark only differ by the descriptive word “Jewellery”. The Panel finds the name “John Greed” to be the prominent feature of the registered trade mark.
Due to the fact that the prominent feature of the registered trademark is recognizable in the disputed domain name, the Panel finds it likely that the disputed domain name may cause Internet user confusion. For the fulfillment of paragraph 4(a)(i) of the Policy this finding makes further reasoning of possible common law rights to the mark JOHN GREED unnecessary. It may however be of relevance under the assessment of bad faith, see further below under section C.
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered trade mark in the meaning of the Policy, paragraph 4(a)(i) and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii) and then the burden shifts to the Respondent to prove its rights or legitimate interests.
The Panel finds, based on the WhoIs information on record and the Registrar’s verification, that the Respondent’s name is apparently different from the disputed domain name, and thus the Respondent may probably be not commonly known by the disputed domain name. Further, the submitted screen shots of the disputed domain name’s web site shows that they primarily contain commercial links relating to jewellery and fashion items provided by third parties, including competitors of the Complainant.
The disputed domain name consists of a combination of a Christian name and a surname and the Panel therefore finds that it may have a potential generic use. However, the web site’s content does not show any use in connection with the name as such, nor has the Respondent demonstrated an intention for such use. Since the web site at the disputed domain name is used for providing links to the Complainant’s competitors it indicates that the intention of the domain name registration, rather than a generic use, was to take advantages of the name’s association with the Complainant’s business. In this Panel’s view, such use does not constitute a legitimate interest (see St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 and WIPO Overview 2.0, paragraph 2.2).
In the light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. And the Respondent failed to produce evidence to rebut it. Therefore the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The UDRP Policy 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name was registered prior to the Complainant’s registered Community trade mark JOHN GREED JEWELLERY. As a general rule in order to prove a domain name was registered in bad faith, there must be a prior right to the trademark. Alternatively, according to the WIPO Overview 2,0, paragraph 3.1: “[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”
As to the Complainant’s common law rights to the mark JOHN GREED at the time of the disputed domain name’s registration (August 22, 2009), the WIPO Overview 2.0, paragraph 1.7 states: “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
The evidence submitted originated before the time of the disputed domain name registration in support of the Complainant’s common law rights to JOHN GREED mainly consists of documentation of the Complainant’s name change from “John Greed Design Limited” to “John Greed Jewellery Limited” in March 9, 2010 and registrations of the domain names <johngreed.co.uk> on June 13, 2008 and <johngreedjewellery.co.uk> on February 5, 2008. However, the examples submitted of later press coverage supports the Complainant’s presented information of length, substantial reputation and goodwill under the trade mark. The Panel finds that the evidence submitted is sufficient to successfully establish that the name “John Greed” is being used since 1994 in connection with the Complainant’s jewellery business (see Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322) and that the prerequisite for common law rights are fulfilled.
Further, the Panel notes that the Respondent has been a respondent in other UDRP cases of similar nature. (see for example Specsavers International Healthcare Limited v. Milan Kovac/WWW.SPECSAVERS.COM Privacy-Protect.org, WIPO Case No. D2011-1084; Barclays Bank PLC v. BARCLAYSCAPITALCAREERS.COM Privacy-Protect.org/Milan Kovac, WIPO Case No. D2011-1015; Comerica Incorporated v. Milan Kovac WIPO Case No. D2011-0894; and Revlon Consumer Products Corporation v. Privacy-Protect.org, WIPO Case No. D2010--1806).
The Panel finds it highly improbable that the Respondent has selected arbitrarily the word combination “John Greed” without having prior knowledge of the Complainant’s rights. The fact that the Respondent is using an identical name in combination with identical goods, together with the Respondent’s use of a privacy shield, is sufficient in this Panel’s view to indicate both registration and use in bad faith. It is the Panel’s view that the Respondent has registered the disputed domain name in awareness of the Complainant with the clear aim of taking advantage of the confusion between the disputed domain name and any potential rights of the Complainant.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <johngreed.com> be transferred to the Complainant.
Dated: November 9, 2011