WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Beers UK Limited v. Scott van Iperen, 14088959380
Case No. D2016-0167
1. The Parties
The Complainant is De Beers UK Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird LLP, Australia.
The Respondent is Scott van Iperen, 14088959380 of Sherwood, Victoria, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <forevermarkjewellers.com> is registered with Uber Australia E1 Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 23, 2016. The Respondent sent an informal communication to the Center on February 24, 2016 requesting to consolidate the present proceeding with a concurrent proceeding under the .au Domain Name Dispute Resolution Policy. On the same day, the Center replied and informed the Respondent that it is not possible under the respective policies for the proceedings to be consolidated, and further informed the Respondent that should it submit any further filings in the present matter, that such submissions would be transmitted to the Panel. The Respondent filed no further submissions in the present proceeding.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 1, 2016. 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, a subsidiary of a large well-known company, offers high quality diamond products for retail on a worldwide basis. The Complainant has many valid registrations with the proper Australian trademark authorities for the trademark, FOREVERMARK (e.g., Registration No. 843566; registered July 24, 2000).
The Respondent owns the disputed domain name, <forevermarkjewellers.com>, which was registered on October 6, 2011. The disputed domain name currently redirects Internet users to the Complainant’s website found at <forevermark.com>.
5. Parties’ Contentions
- The Complainant is a retailing subsidiary of one of the world’s oldest and largest diamond mining companies. As such, the Complainant has sold high quality diamonds to selected distributors and jewellers under the FOREVERMARK trademark on a worldwide basis. Since 2000, the Complainant has conducted extensive advertising campaigns to market its diamond products under that mark in many countries, including Australia.
- The disputed domain name, <forevermarkjewellers.com>, contains the full FOREVERMARK trademark and is therefore confusingly similar to that mark.
- The Complainant has granted the Respondent no permission to use the FOREVERMARK mark, and thus the Respondent has no rights or legitimate interests in the disputed domain name. As the website at the disputed domain name redirects users to the Complainant’s website, found at <forevermark.com>, the Respondent is using the name neither in connection with a bona fide offering of goods or services nor for legitimate noncommercial or fair use purposes.
- The disputed domain name was registered and is being used in bad faith. The Respondent’s intent is both to prevent the Complainant from registering the disputed domain name, which corresponds to the Complainant’s mark, and to then sell the name to the Complainant for considerable profit beyond the Respondent’s out-of-pocket costs related to the disputed domain name.
- In the past, the Respondent transferred the disputed domain name, <forevermarkjeweller.com>, to the Complainant. Recently, the Respondent has informed the Complainant that the Respondent registered the disputed domain name for the purpose of potentially marketing the Complainant’s products – though the Respondent has never received license to do so – but is willing to transfer the name to the Complainant for a sum in the range of USD 10,000 to USD 12,000. Clearly, these prior acts and solicitation by the Respondent are evidence of its bad faith in registering and using the disputed domain name.
The Respondent did not reply substantively to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Panel may find in favor of the Complainant in this proceeding and order a transfer of the disputed domain name, <forevermarkjewellers.com>, provided that the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s provision of clear evidence (Annex 5) of its registration for the FOREVERMARK trademark with the proper Australian authorities causes the Panel to conclude that the Complainant has sufficient rights in that mark for the purposes of Policy paragraph 4(a)(i). See, Sydney Water Corporation Limited v. CDN Properties Incorporated, WIPO Case No. D2013-1837 (“The Panel finds that the Complainant does have registered trademark rights in the mark SYDNEY WATER by virtue of its Australian trademark Registration Nos. 1164716, 1412446 and 1164718.”).
As the disputed domain name adds the descriptive word, “jewellers”, to the FOREVERMARK trademark, the Panel does not find the name to be identical to that mark. However, since the trademark is fully contained in the disputed domain name and the added descriptive term bears directly on the products sold under the mark, the Panel finds that the name is confusingly similar to the mark. See, Gregory Bros Pty Ltd, Gregory Jewellers Pty Ltd, LGR Holdings Pty Ltd v. Ann Schafer, WIPO Case No. D2013-0064 (In ruling on the disputed domain name, <gregoryjewellers.net>, the panel opined: “Insofar as the Complainants have trade mark rights in the term ‘Gregory’, the disputed domain name consists of the trade mark plus the descriptive term ‘jewellers’. This is confusingly similar to the trade mark.”); and Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899 (finding <kayjeweler.com> to be confusingly similar to the KAY trademark).
Therefore, the Panel rules that the Complainant has succeeded in demonstrating that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As the Complainant contends emphatically that it has never granted the Respondent permission to use the FOREVERMARK mark, to which the disputed domain name has been adjugded confusingly similar, the Panel believes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in that name. It is thus incumbent upon the Respondent to come forward with evidence to counter that prima facie case. See, Philip Morris USA Inc. v. yfmg, WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”); and Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”).
The Respondent has declined to submit a filing in which he might rebut said prima facie case, so the Panel will examine the record elsewhere to determine whether there is any plausable basis to reject that case, keeping in mind that all of the Complainant’s reasonable assertions should be accepted as valid. See, RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true...”); and Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398 (“Respondent has not reacted to the Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.”). In so doing, the Panel shall refer to Policy paragraph 4(c) as offering possible rationales to find in favor of the Respondent as to this issue.
With respect to paragraph 4(c)(i), the Panel accepts the Complainant’s contention that the disputed domain name resolves ultimately to the Complainant’s website. The Panel cannot consider this use to constitute “a bona fide offering of goods and services” by the Respondent, and thus paragraph 4(c)(i) is inapplicable. See, C. Crane Company Inc. v. Robbie Crossley, WIPO Case No. D2009-0815 (“The first [use] was an immediate redirection to Complainant’s website. Without Complainant’s permission, Respondent’s use in this manner is not bona fide or legitimate.”). Moreover, because the Panel discerns no reason why the Respondent, Scott van Iperen, would be commonly known as <forevermarkjewellers.com>, the Panel concludes that paragraph 4(c)(ii) fails to apply as well. Finally, the Panel percieves neither legitimate noncommercial use nor fair use of the disputed domain name in redirecting Internet users to the Complainant’s website, rendering paragraph 4(c)(iii) useless in the Respondent’s defense. See, Statoil ASA v. Domains By Proxy, LLC / John Brendon, WIPO Case No. D2013-1074 (“...the Panel agrees with the Complainant’s contention that the Respondent’s decision to direct the [disputed] Domain Name to the Complainant’s own website does not give rise to any such rights or legitimate interests on the part of the Respondent.”). As a result, the Panel finds no basis in Policy paragraph 4(c), or otherwise in the record, to rebut the Complainant’s prima facie case.
Therefore, the Panel rules that the Complainant has succeeded in demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As referred to above, the Panel accepts the Complainant’s contention that the disputed domain name resolves to the Complainant’s own website. To the Panel, this result is equivalent to asserting that the Respondent is making no use of the disputed domain name. In this vein, the Panel notes that prior UDRP panels that have found such use or nonuse of a disputed domain name to be conclusive evidence of bad faith registration and use of that name. See, Statoil ASA v. Domains By Proxy, LLC / John Brendon, supra; and CSC Holdings, Inc. v. cablevision-lightpath.com Inc., WIPO Case No. D2004-1057 (“The Panel finds that the Respondent was simply trying to avoid the appearance of bad faith when the domain name at issue automatically redirected to Complainant’s website, ‘www.lightpath.net’. If ownership of the domain name at issue remains with the Respondent, it can obviously be re-directed to another website of Respondent’s choosing. The Panel cannot conclude that bad faith is not present simply because no measurable harm has yet been done.”). The Panel sees no reason to deviate from the reasoning in those cited cases and believes that findings of bad faith in those cases should apply to this case.
Moreover, the Respondent’s solicitation of up to USD 12,000 for purchase of the disputed domain name (clearly far beyond the Respondent’s out-of-pocket costs associated with the disputed domain name), as contended with supporting evidence (page 1, Annex 8) by the Complainant, is further evidence of bad faith registration and use of that name per paragraph 4(b)(i) of the Policy.
Therefore, the Panel rules that the Complainant has succeeded in demonstrating that the disputed domain name was registered and is being used in bad faith.
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 name, <forevermarkjewellers.com>, be transferred to the Complainant.
Dennis A. Foster
Date: March 15, 2016