WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

De Beers Trademarks Limited and De Beers Diamond Jewellers Trade Mark Limited v. Sam Missoum, individually and dba AMG Diamond Conglomerate, Missoum*Aupfen Conglomerate, and/or VIP APAIRALL

Case No. D2016-1477

1. The Parties

The Complainants are De Beers Trademarks Limited and De Beers Diamond Jewellers Trade Mark Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Dentons US LLP, United States of America.

The Respondent is Sam Missoum, individually and dba AMG Diamond Conglomerate, Missoum*Aupfen Conglomerate, and/or VIP APAIRALL of Tulsa, Oklahoma, United States of America.

2. The Domain Names and Registrar

The disputed domain names <debeersjewellery.diamonds> and <debeersjewelry.diamonds> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 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 for the disputed domain names.

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 July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2016.

The Center appointed Sir Ian Barker as the sole panelist in this matter on August 24, 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 Complainants are private limited companies incorporated in the United Kingdom. Both are members of the De Beers Group of companies which have done business globally in the diamond, jewellery and gemstones industries for many years.

The Complainants own United States trademarks for the name DE BEERS. The first of these was filed on January 16, 2001 and issued on September 13, 2005.

Another member of the De Beers Group, De Beers Diamond Jewellery Limited (“DBDJ”) operates a commercial website at “www.debeers.com” offering in the United States and elsewhere diamond jewellery and related goods and services directly to customers. Through DBDJ, the De Beers Group operates retail stores in major cities including New York. The domain name <debeers.com> has been reserved to the Group since February 4, 1998. Another member of the Group, De Beers UK Limited operates another similar website available in the United States and elsewhere under the domain name <debeersgroup.com>. This domain name has been reserved to the Group since April 20, 2000.

Since 2005 in the United States and since 1982 elsewhere, the Group has marketed and promoted the sale of high-quality diamond jewellery and related goods and services. The website at “www.debeers.com” provides information about the Group’s products and collections. It has established a worldwide recognition for its diamond business.

The disputed domain names were registered by the Respondent on January 25, 2016. On April 15, 2016, the Complainants’ attorney sent a “Cease and Desist” letter to the Respondent. He replied on the same day and agreed to take down his websites but refused to transfer ownership of the disputed domain names and indicated that he would offer them for sale. He stated in an email to the Complainants’ attorney dated May 13, 2016 that he “was not seeking financial gain”. Yet he clearly intimated in that email that he was seeking financial recompense despite his claim that he had acquired the websites for “SEO Google ranking metrics”.

At websites accessed by the disputed domain names the Respondent had originally offered for sale diamond jewellery to consumers. The websites included references to the Complainants’ trademarks, photographs of the Complainant’s products and statements implying affiliation to or endorsement by the De Beers Group.

The Complainants gave the Respondent no authority to reflect their trademarks in the disputed domain names.

5. Parties’ Contentions

A. Complainants

The disputed domain names are confusingly similar to the Complainants’ registered United States trademarks. The De Beers’ reputation in the diamond business is universally known. The disputed domain names include the whole of the trademarked words. The addition of the words “jewelry” or “jewellery” in the domain names only exacerbates the confusion since anyone would automatically associate De Beers with jewellery. The additional words are descriptive and generic for the goods sold by the Complainants on the websites.

Whilst the Top-Level Domain “.diamonds” is technically not part of the comparison required to be undertaken between trademark and domain name, the choice by the Respondent of this Top-Level Domain describes a key element of the Complainants’ products.

The Respondent has used the disputed domain names to sell jewellery-related goods and services in competition with the De Beers Group. The Respondent has no rights or legitimate interests to reflect the Complainants’ trademarks in the disputed domain names.

The Respondent has not made out a case for coming within any of the situations envisaged by paragraph 4(c) of the Policy.

The Respondent has registered and is using the disputed domain names in bad faith. He must have known of the De Beers Group and its long reputation as a leading player in the diamond jewellery business. He is deemed to have knowledge of the Complainants’ trademarks.

The Respondent’s correspondence shows that he wants money before transferring the disputed domain names. He created by his website the likelihood of confusion to Internet users who may think that his websites had some affiliation with or endorsement from the Complainants. He prevented the Complainants from reflecting its registered trademarks in domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

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

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The disputed domain names are confusingly similar to the Complainants’ registered trademarks. They include all the trademarked words DE BEERS. The generic words “jewelry” and “jewellery” exacerbate the confusing similarity because the name and mark “DE BEERS” is associated with jewellery, particularly diamond jewellery. The Respondent’s choice of “.diamonds” as a Top-Level Domain suffix also contributes to the confusing similarity. Normally a Top-Level Domain like “.com” or “.org” does nothing to increase confusion. But the particular Top-Tevel Domain, “.diamonds”, confirms the view that the Respondent acted in bad faith when registering the disputed domain names utilizing such a specific Top-Level Domain.

Accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainants gave the Respondent no authority of any sort to reflect their trademarks in the disputed domain names.

This fact and the circumstances of the present case satisfy paragraph 4(a)(ii) of the Policy in the absence of any Response from the Respondent.

The Respondent could have claimed that one of the situations envisaged by paragraph 4(c) of the Policy applied to the registration of the disputed domain names, e.g., by invoking paragraph 4(c) to the satisfaction of the Panel that one of its three provisions applied in this case. However, not only has the Respondent chosen not to file a Response, but even considering such possible defense, the Complainant has met its burden here.

Furthermore, the Panel notes that in its reply to the Cease and Desist Letter, the Respondent claimed that the disputed domain names were registered for the purpose of research and experimentation; this claim is however undermined by the Respondent seeking monetary compensation and using the disputed domain names to sell competing goods.

Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

It is an inescapable inference from the above scenario that the Respondent registered the disputed domain names and is using them in bad faith. The Respondent must have known of the De Beers name, mark and reputation in the diamond business at the time of registration earlier this year.

His use of a website selling jewellery indicates this as does his choice of the Top-Level Domain of “.diamonds”.

Not only did he attempt to confuse Internet users into implying a relationship with the Complainants but he even had the effrontery to suggest a sale of the disputed domain names to the Complainants.

A clearer case of a breach of paragraph 4(a)(iii) of the Policy is hard to imagine.

7. 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, <debeersjewellery.diamonds> and <debeersjewelry.diamonds> be transferred to the Complainant De Beers Trademarks Limited.

Hon Sir Ian Barker
Sole Panelist
Date: September 1, 2016