WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

De Beers Intangibles Limited v. Philipp Baume, Baume Energy Services Ltd / Nathan Sharkey

Case No. D2018-1140

1. The Parties

The Complainant is De Beers Intangibles Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird LLP, United Kingdom.

The Respondent is Philipp Baume, Baume Energy Services Ltd of Cranbrook, British Columbia, Canada / Nathan Sharkey of Dhahran, Saudi Arabia.

2. The Domain Names and Registrar

The disputed domain names <debeersdrilling.com> and <debeersmining.com>are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. On May 28, 2018, the Respondent sent an email communication to the Center. The Respondent did not submit a substantive response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on June 18, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on June 28, 2018. 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

The Complainant is a part of the De Beers Group of Companies (“De Beers”), a diamond mining and drilling company and supplier of rough diamonds for more than 100 years. De Beers through the Complainant holds registrations for its DE BEERS mark in various countries and jurisdictions, including the European Union, Canada, South Africa, and Tanzania. The Complainant also holds an International Registration for the DE BEERS mark with registration number 741492A, registered on August 4, 2000.

The disputed domain names were registered on December 29, 2017. Each of the disputed domain names resolves to a parked web page with “related links” to mining and mining jobs. Internet users visiting the websites are invited to “learn how you can get this domain.”

According to the Registrar’s WhoIs records, as of May 22, 2018, the disputed domain name <debeeersmining.com> was registered in the name of Philipp Baume, Baume Energy Services Ltd; and the disputed domain name <debeersdrilling.com> was registered in the name of Nathan Sharkey. That has not always been the case. The Complainant has submitted WhoIs search results reflecting that as of March 6, 2018, Philipp Baume, Baume Energy Services Ltd was listed as the registrant of both of the disputed domain names. Following the Complainant’s March 7, 2018, cease and desist letter to the Respondent Baume, however, the WhoIs records were updated on March 22, 2018, to list Nathan Sharkey as the registrant of that disputed domain name <debeersdrilling.com>.

On May 28, 2018, Nathan Sharkey sent an email to the Center, stating “I am the legal owner of both of the disputed domain names mentioned in this complaint”. Mr. Sharkey asserted that his entire career has concerned drilling and mining, and represented that he would not surrender the disputed domain names without a “very long and public dispute” because he had “legitimate business intentions” for them. Nevertheless, Mr. Sharkey stated that the Complainant could purchase his business interests in the disputed domain names if a “fair and equitable” agreement could be reached. Otherwise, Mr. Sharkey said he would contact to press to seek support for this “David and Goliath” case, and then if necessary retain legal counsel.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names <debeersdrilling.com> and <debeersmining.com> are confusingly similar to the Complainant’s well-known DE BEERS mark, in which the Complainant claims rights through registration in multiple jurisdictions and use in commerce for more than a century. According to the Complainant, the addition of the descriptive words “drilling” and “mining” does not dispel the confusing similarity of the disputed domain names to the Complainant’s DE BEERS mark, and creates a clear association with the Complainant’s goodwill in the mining and drilling industries.

The Complainant maintains that the Respondent has no rights or legitimate interest in respect of the disputed domain names. According to the Complainant, the Respondent is not known by the disputed domain names and does not own trademarks or other intellectual property rights of the Complainant’s marks. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and that the disputed domain names do not resolve to any functioning website. The Complainant explains that it issued a cease and desist letter to the Respondent upon becoming aware of the disputed domain names, to which the Complainant received no reply. The Complainant submits it is inconceivable that the Respondent could use the disputed domain names for any legitimate purpose. The Complainant asserts, given the notoriety of the DE BEERS mark, that the public necessarily will assume there is an association between the Respondent and the Complainant.

The Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith. The Complainant contends that the Respondent must have been aware of the Complainant and the strong reputation of the DE BEERS mark when registering the disputed domain names. The Complainant asserts that the Respondent’s registration of the disputed domain names has prevented the Complainant from registering domain names corresponding to the DE BEERS mark, and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s DE BEERS mark as to source, sponsorship or affiliation.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. As noted above, however, Nathan Sharkey emailed the Center on May 28, 2018, claiming ownership of the disputed domain names and offering to transfer the disputed domain names to the Respondent “if a fair and equitable” agreement could be reached for the purchase of his business interests.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and the Respondents

The Complainant has requested that the disputed domain names registered by the Respondent(s) and identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

The facts in the instant record strongly suggest that the disputed domain names are subject to common control. The disputed domain names were registered on December 29, 2017, and resolve to identical parking pages with “related links” to mining and mining jobs. As noted earlier, WhoIs search results reflect that as of March 6, 2018, Philipp Baume, Baume Energy Services Ltd was listed as the registrant of both of the disputed domain names. Subsequently, on March 7, 2018, the Complainant dispatched a cease and desist letter to the Respondent Baume, and shortly thereafter the WhoIs data for <debeersdrilling.com> was updated to list Nathan Sharkey as the registrant. On May 28, 2018, Nathan Sharkey sent an email to the Center, claiming to be the “legal owner” of both the disputed domain names.

Given the foregoing factors, the Panel considers that the disputed domain names likely were registered by a single individual, but assuming multiple registrants the Panel finds the Complainant has been the target of common conduct directly affecting the Complainant’s rights. Taking into account identifiable commonalities in the registrations, the use of the disputed domain names directly affecting the Complainant’s rights, and finding that common questions of law and fact are predominant, the Panel concludes that consolidation would be procedurally efficient, and fair and equitable to all parties. The Panel will proceed to a decision on the merits.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the DE BEERS mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s DE BEERS mark is clearly recognizable in the disputed domain names.² The inclusion of the descriptive terms “mining” and “drilling” do not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ Top-Level Domains generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s DE BEERS mark. Regardless, the Respondent registered the disputed domain names, which are confusingly similar to the Complainant’s DE BEERS mark. The disputed domain names resolve to parking pages with “related links” to mining and mining jobs, and invites Internet visitors to “learn how you can get this domain.” The Respondent further has invited the Complainant to purchase the disputed domain names at a price acceptable to the Respondent or face a “very long and public dispute.”

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

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

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel concludes that the Respondent in all likelihood was aware of the Complainant and the Complainant’s DE BEERS mark when registering the disputed domain names. Internet users could easily expect that the disputed domain names would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. The Respondent, although claiming he has “legitimate business intentions”, has not brought forward any evidence of rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191. The Panel further concludes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names for purposes of paragraph 4(c)(iii) of the Policy, has not been authorized to use the Complainant’s DE BEERS mark, and has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating 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 (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The record is convincing that the Respondent had the Complainant’s DE BEERS mark in mind when registering the disputed domain names. The Panel concludes that the Respondent in all likelihood registered the disputed domain names seeking to profit from and exploit the Complainant’s trademark rights, whether by selling the disputed domain names to the Complainant at an exorbitant price, generating pay-per-click revenue on the Respondent’s parking pages, or otherwise monetizing the disputed domain names.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <debeersdrilling.com> and <debeersmining.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: July 9, 2018

¹ See WIPO Overview 3.0, section 1.7.

² Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

³ See WIPO Overview 3.0, section 1.8 and cases cited therein.

⁴ See WIPO Overview 3.0, section 1.11.2 and cases cited therein.