WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Beers Centenary AG / De Beers UK Limited v. Whois Privacy Protection Service, Inc. / ICS INC.
Case No. D2013-0816
1. The Parties
The Complainant is De Beers Centenary AG / De Beers UK Limited of London, United Kingdom of Great Britain and Northern Ireland represented by Bird & Bird LLP, United Kingdom.
The Respondent is Whois Privacy Protection Service, Inc. of Panama City, Panama / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <wwwforevermark.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, 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 May 14, 2013 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 May 17, 2013.
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 May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2013.
The Center appointed Jon Lang as the sole panelist in this matter on June 14, 2013. 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 part of the De Beers group of companies (“De Beers”). De Beers is one of the world’s largest diamond mining companies and supplier of rough diamonds. De Beers’ diamond brand is FOREVERMARK which operates across the world through subsidiary companies Forevermark Limited and Forevermark US, Inc, (together, the “Forevermark companies”) via a network of licensed third party jewellers retailing diamonds and diamond jewellery. FOREVERMARK diamonds are selectively distributed through this network of authorised distributors and retailers.
The Complainant is the registered proprietor of a variety of UK registered and Community registered trade marks for FOREVERMARK in a range of classes including in relation to jewellery design and retail and wholesale services in the field of jewellery (the “Marks”). The Marks are licensed to the Forevermark companies by the Complainant. The Marks have been registered in over 80 jurisdictions by the Complainant, for instance UK trade mark (for FOREVERMARK) No. 2238689, registered on August 17, 2001 (with a priority date of April 14, 2000).
The Complainant and De Beers enjoy significant goodwill and reputation in the Marks. De Beers is one of the most famous traders of diamonds in the world. Through its sales and marketing arm, De Beers sorts and values some two-thirds of the global diamond supply by value, and has conducted world-renowned diamond advertising and promotional campaigns for over half a century. Since 2000, one of the key sales and marketing initiatives of De Beers has been the development of the FOREVERMARK brand. As a result, the Complainant’s Marks are well recognised in the market and have garnered extensive goodwill. The Forevermark companies have a presence in approximately 1000 jewellery stores worldwide. De Beers invests significantly in marketing for the Forevermark companies, spending over USD 85 million on marketing in 2012, resulting in nearly 2.5 million unique visitors to the “www.forevermark.com” website in 2012.
Another one of the De Beers group of companies operates under the trading name, Diamond Trading Company (DTC). DTC is the registrant of the domain names <forevermark.com> and <forevermarkdiamond.com>, which De Beers uses to promote FOREVERMARK. The <forevermark.com> domain name was registered in 2011 and the <forevermarkdiamond.com> domain name was registered in 2004.
The disputed domain name (the “Domain Name”) was registered on December 10, 2012.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Domain Name contains a word which is identical to the name FOREVERMARK. Further, the Domain Name is almost identical to De Beers’ domain name, <forevermark.com>, except that the Respondent’s Domain Name starts with the letters ‘www’ (to make it <wwwforevermark.com>), presumably in the hope that Internet users will search for De Beers’ website by entering <wwwforevermark.com>, forgetting to include a full stop after the “www”, which would thereby navigate them away from the De Beers website to the Respondents’ website (the “Website”). The Domain Name is therefore confusingly similar to the Marks and to the De Beers domain name. The similarity indicates that the Respondent intends to confuse consumers looking for the De Beers website into believing that the Domain Name and corresponding Website is related to the Complainant’s FOREVERMARK trade mark. This is highlighted by the fact that the homepage of the Website (to which the Domain Name resolves) refers to diamond engagement rings, other jewellery, and “Beers Diamonds”, which must also be intended to create an association with the Complainant and De Beers and the characteristics of the FOREVERMARK brand.
Given the strong reputation of the name FOREVERMARK, no trader would choose the Domain Name unless having the intention of creating a false impression of association with the Complainant in order to attract business from the Complainant and De Beers, or misleadingly to divert the public to the Respondent.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Website contains a number of jewellery and diamond related sponsored links for competitor products and services to those offered by De Beers. The Website is being used to redirect Internet traffic intended for the Complainant and De Beers away from them and to competitor products and services, with the intention of generating income for the Respondent. The content on the Website is tailored to match De Beers’ core goods and services. When Internet users view the content displayed on the Website and click one of the sponsored links, revenue is generated directly from the initial interest arising from the use of the name FOREVERMARK in the Domain Name.
To the best of the Complainant’s knowledge, the Respondent is not known by the Domain Name.
It is clear that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The content found at the Domain Name is pay per click sponsored links which relate to jewellery services. Such activity does not qualify as noncommercial or fair use.
No entity outside of the De Beers’ group of companies has been authorised to use the Marks in the manner being used by the Respondent. The Respondent has never asked for, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark.
The goodwill associated with the Marks is the property of the Complainant and cannot pass to any third party without a formal assignment. No such assignment in favour of any third party outside De Beers has taken place and therefore the Respondent has no rights in the Marks.
In the circumstances, it is not possible for the Respondent to have acquired legitimate rights to use the Domain Name since its registration. The Complainant took action in relation to the Domain Name as soon as it was aware that the Domain Name was registered and being used in bad faith.
The Domain Name was registered and is being used in bad faith.
Given the strong reputation of the FOREVERMARK trade mark, the Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of the owner of the FOREVERMARK trade mark.
The Respondent’s registration of the Domain Name has also prevented the Complainant from registering a domain name which corresponds to the Complainant’s trade marks contrary to paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trade marks in breach of paragraph 4(b)(iv) of the Policy.
The Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of FOREVERMARK, the Complainant and De Beers is such that members of the public will always assume that there is an association between the Respondent, the Complainant and De Beers, and/or between the Respondent and the FOREVERMARK trade marks.
It is anticipated that the Domain Name will divert potential customers from De Beers’ (including the Complainant’s) business due to the presence of links to competitor websites on the Website.
The Domain Name mimicks the De Beers’ domain name <forevermark.com> by removing the ‘.’ to become <wwwforevermark.com>. This is a classic typosquatting tactic intended to capture Internet traffic from Internet users who mistype the De Beers’ domain name address when entering it into a web browser. It is anticipated that the Respondent intends to capture Internet traffic intended for the Complainant and/or De Beers. This pattern of conduct is highly suggestive of bad faith.
Furthermore, bad faith can be inferred from the lack of a response to a cease and desist letter sent on behalf of the Complainant on February 18, 2013, by the Complainant’s outside counsel, Minter Ellison Rudd Watts.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant clearly has rights in its FOREVERMARK trade marks.
The Domain Name incorporates the Complainant’s FOREVERMARK trade mark in its entirety and is clearly its dominant element, being a well-known mark.
However, as the Complainant’s mark and the Domain Name are not absolutely identical, (albeit the only difference being the addition of “www” before “forevermark” without a full stop or anything else for that matter to separate “forevermark” and the preceding “www”), the issue of confusing similarity should be considered. Under the Policy, the test for confusing similarity typically involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
Given that the FOREVERMARK trade mark is the only word in the Domain Name, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s FOREVERMARK trade mark.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the domain name in issue and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact associated in some way with the Complainant. The inclusion of “www” in the Domain Name, does not of course distinguish it from the Complainant and its mark (thus reducing the likelihood of confusion), but rather appears designed to increase the likelihood of confusion by making the Domain Name look even more similar to a domain name that Internet users would expect to be used by the owner of the FOREVERMARK trade mark, and almost identical (bar the full stop between the “www” and “forevermark”) to the domain name <forevermark.com> owned by the De Beers company, (trading as DTC), referred to earlier. This is a classic typosquatting case.
The Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, as previous UDRP panels have held, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so by way of a Response and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name.
Nevertheless, the Panel considers it appropriate to comment on the issue of rights or legitimate interests in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case in this proceeding, the respondent is not licensed by or affiliated in any way with the Complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, there is no evidence here to suggest that the Respondent is known by the Domain Name, nor of any legitimate noncommercial or fair use. As far as the latter point is concerned, in the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the Website, given the links to commercial third-party sites that one finds there. Moreover, the Domain Name is confusingly similar and so it would be difficult to maintain that there is no risk of a misleading diversion of consumers. As to the former point, whilst the Respondent is not known by the Domain Name, it should be mentioned that the landing page of the Website displays the Domain Name at the top in a prominent position. Regardless of whether it could be said that the Domain Name is being used as a business name of the Respondent (such that there is an issue to consider as to whether the Respondent is commonly known by the Domain Name), the Panel should make clear that use of a domain name as a business name, will not automatically establish rights or legitimate interests in that domain name. If the contrary was the case, respondents would always be able to avoid the consequences of their otherwise wrongful actions by doing something the Policy was designed to prohibit, namely taking unfair advantage of another’s mark to build a business. As the panel stated in Drexel University v. David Brouda, WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. But promoting competing goods or services using a domain name confusingly similar to a complainant’s mark, is not a bona fide offering of goods or services. There is ample support for this proposition. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said:
“To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001).”
The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website 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 the website or of a product or service on the website.
In the decision in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 it was said:
“Using a domain name ‘to redirect Internet users to websites that host links to external websites, including websites of [c]omplainant’s competitors,’ is evidence of bad faith. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031.”
This appears to be the position in this Complaint.
In the decision in Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:
“It has been held that actual or constructive knowledge of the [c]omplainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights.
Previous cases have also established that the deliberate choice and registration of a famous mark as [the] domain names suggests, in the absence of an explanation from the [r]espondent, that the registrations were made in bad faith.”
It seems clear to this Panel, given the use to which the Domain Name has been put, that the Respondent knew of the Complainant’s FOREVERMARK trade mark prior to the relatively recent registration of the Domain Name on December 10, 2012. It is a famous mark and it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of the Domain Name. In short, it seems designed to confuse, or to capitalise on Internet users typing mistakes when they omit the full stop between “www” and “forevermark”, when looking for the official site of De Beers. In all the circumstances, it is difficult to arrive at a conclusion other than that the Domain Name has been registered to take unfair advantage of the Complainant’s rights.
In all the circumstances, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website, which contains links to sites of competitors, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Website. It matters not that once Internet users arrive at the Website it is clear (because of it being a pay-per-click site, or otherwise), that it is unconnected with the trade mark owner. The Internet user will have been confused, at least initially, as to the relationship between the Website and trade mark owner and that is enough to establish bad faith. In these circumstances, there is little need to explore and make findings in relation to other aspects of the Respondent’s conduct, such as the failure to respond to the cease and desist letter sent on behalf of the Complainant, save to say that nothing in the case materials presented to the Panel would seem to mitigate against a finding in favour of the Complainant.
Accordingly, the Panel finds, for the purposes of the Policy, that the Domain Name was registered and is being used in bad faith.
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 <wwwforevermark.com> be transferred to the Complainant.
Date: June 28, 2013