WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Beers Intangibles Limited v. Romano Mudano
Case No. D2017-0323
1. The Parties
The Complainant is De Beers Intangibles Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Bird & Bird LLP, UK.
The Respondent is Romano Mudano of Rome, Italy.
2. The Domain Names and Registrar
The disputed domain names <adiamondisforever.cloud> and <adiamondisforever.store> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <adiamondisforever.cloud>. On February 17, 2017, 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 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Center received two email communications from the Respondent on February 24, 2017, and a third email communication on March 16, 2017.
On March 24, 2017, the Center received a request from the Complainant to add one more domain name, <adiamondisforever.store>. On March 29, 2017 and April 1, 2017, the Center received email communications from the Respondent.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 28, 2017. 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.
Following the Complainant’s request of March 24, 2017 to add the domain name <adiamondisforever.store> (“Additional Domain Name”) to the proceeding, on April 5, 2017, the Panel issued a Panel Order requesting the Center to obtain registrar verification for the Additional Domain Name, to notify the Respondent that the Additional Domain Name has been added to the proceeding and to grant the Respondent five calendar days to submit its potential comments in relation to the Additional Domain Name. On April 3, 2017, 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 Respondent did not submit a Response.
4. Factual Background
The Complainant, part of the De Beers group of companies, is one of the world’s largest diamond mining companies and suppliers of rough diamonds. 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.
The Complainant and De Beers have an extensive worldwide portfolio of intellectual property rights protecting the mark A DIAMOND IS FOREVER, including inter alia the registered European Union Trademark No. 003430279 for the word mark A DIAMOND IS FOREVER filed on October 30, 2003 and registered on May 13, 2005 covering goods and services in classes 14 and 35.
The Complainant holds numerous domain names incorporating its A DIAMOND IS FOREVER mark, such as <adiamondisforever.com>, <adiamondisforever.eu> and <adiamondisforever.co.uk>.
The disputed domain name <adiamondisforever.cloud> was registered by the Respondent on August 12, 2016, respectively the disputed domain name <adiamondisforever.store> was registered on March 2, 2017.
Prior to commencing this proceeding, on January 19, 2016 the Complainant sent a cease-and-desist letter to the Respondent in relation to a third domain name incorporating Complainant’s trademark A DIAMOND IS FOREVER, i.e., <adiamondisforever.us>; in reply to such letter the Respondent registered the domain name <adiamondisforever.it>. The Complainant forwarded another letter to the Respondent, to which the later replied on August 5, 2016 and September 17, 2016 by offering to sell <adiamondisforever.us> and <adiamondisforever.it> for the amount of EUR 400,000.
Furthermore, the Respondent continued to register domain names incorporating Complainant’s trademark as follows: on August 12, 2016 the Respondent registered the disputed domain name <adiamondisforever.cloud> and on March 2, 2017 Respondent registered the disputed domain name <adiamondisforever.store>.
At the time of filing the Complaint, the disputed domain name <adiamondisforever.cloud> was used in relation to a website displaying, inter alia, pictures of two gold De Beers medals, one medal having the inscription “De Beers … A Diamond is Forever” with a picture of a diamond.
At the time of the Complainant’s request to add the Additional Domain Name, <adiamondisforever.store>, the corresponding website, inter alia, hosted a link under “a diamond is forever” that redirect Internet users to another webpage at “www.adiamondisforever.us” where there was a fanciful virtual bill in the right corner indicating, inter alia, that the disputed domain name <adiamondisforever.store> is offered to the Complainant for the amount of EUR 200,000.
5. Parties’ Contentions
The Complainant alleges that it has been using the slogan trademark A DIAMOND IS FOREVER since 1949 and that it has built up significant goodwill in this mark. The Complainant contends that the slogan and associated trademark are widely recognized and associated with the Complainant and its products.
The Complainant contents that the disputed domain names are identical or confusingly similar to its trademark, the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the disputed domain names were registered and are being used in bad faith, knowing and targeting Complainant’s trademark A DIAMOND IS FOREVER.
The Complainant requests the Panel to transfer the disputed domain names to it and to order that the Respondent disclose all domain names which he has registered and contain Complainant’s trademarks.
The Respondent did not submit a Response to the Center, but rather provided several email communications arguing particularly the following:
- that the disputed domain names were registered because they were available on the market,
- he is the rightful owner of the disputed domain names and the Complainant should buy them from him for the amount of EUR 200,000 each, amount which represents a value of “a handful of De Beers’ diamonds”; and
- questions the authority of the UDRP procedure and Panel.
After being notified of the Complaint, the Respondent registered the Additional Domain Name, <adiamondisforever.store>, and offered to sell it to the Complainant. He followed the same pattern as for the previous two domain names registered prior to commencing the present proceeding and including Complainant’s trademark without approval.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed 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 in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel shall further analyze the potential concurrence of all the above factors.
A. Preliminary Issue: Addition of a Domain Name to the Proceeding
The Panel’s decision to accept the addition of the Additional Domain Name, <adiamondisforever.store>, to this proceeding is based on consideration of the following:
- The addition of domain names after the filing of a Complaint has been allowed in the past in other UDRP proceedings, e.g., A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172; PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033;
- Paragraphs 10(a), 10(b) and 10(e) of the Rules, entitled “General Powers of the Panel” explicitly provide the following:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”; and
- In the proceeding at issue, the Complainant and the Respondent are the same with respect to both domain names, the additional and initial Complaints are closely connected as to the factual background in a way that it is expedient to hear and determine them together in order to avoid the potentially varying decisions resulting from separate proceedings and to incur supplemental unnecessary costs for the Complainant.
B. Identical or Confusingly Similar
The Complainant holds trademark registrations for the trademark A DIAMOND IS FOREVER. The disputed domain names <adiamondisforever.cloud> and <adiamondisforever.store> incorporate Complainant’s trademark in its entirety and without any addition or alteration.
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level Domains (“gTLDs”) such as “.cloud” and “.store” are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain names are virtually identical or at the very least confusingly similar to the Complainant’s trademark A DIAMOND IS FOREVER, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not its affiliate nor has received any authorization or other right to use or register its trademark, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services.
In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent. See paragraph 2.1 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
According to the evidence before it and when visiting the relevant websites, the Panel noted that on the website corresponding to the disputed domain name <adiamondisforever.cloud> the Respondent is displaying two gold metals with Complainant’s name and Complainant’s trademark A DIAMOND IS FOREVER. Further on, on the website corresponding to the disputed domain name <adiamondisforever.store>, inter alia, there is a link for “a diamond is forever” where Internet users are diverted to another webpage at “www.adiamondisforever.us” where it appears a fanciful bill indicating, inter alia, that the disputed domain name <adiamondisforever.store> is offered to the Complainant for EUR 200,000.
The above is not a legitimate noncommercial or good faith use of the disputed domain names, as provided under the Policy, paragraph 4(c). According to the case file documents, the Respondent is well aware of the Complainant, its business and trademark A DIAMOND IS FOREVER and therefore has engaged in the pattern of registering domain names incorporating Complainant’s trademark in particular for the purpose of reselling them to the Complainant for an amount far exceeding the out-of-pocket costs.
The Respondent states in its communications that the disputed domain names were acquired by him because they were available on the market and therefore he can further sell them to anyone, including the Complainant for a “market price”, irrespective of the trademark rights or other regulations which are not applicable in the online area, according to the Respondent.
Such arguments cannot be accepted by this Panel. The business of reselling domain names may be a legitimate activity, unless such domain names consist of third-party trademarks, and are resold for un unjust benefit capitalizing on the associated trademark value.
In the present case, the Complainant’s trademark A DIAMOND IS FOREVER is known worldwide and the Respondent was clearly aware of it, in fact it was targeting the Complainant in order to resell the disputed domain names to the Complainant for a very high price per each domain name, while registering more domain names incorporating the Complainant’s trademark in order to generate more potential revenues for the Respondent.
Further, the Respondent claims that there are no rules on the Internet, trademark principles do not apply and Respondent challenges the authority of any UDRP panel. Again, this Panel must disagree and remind the Respondent that the agreements he concluded with the relevant Registrar for the disputed domain names explicitly include provisions that he will not infringe third-party intellectual property rights and furthermore, in case of a dispute, the Respondent is bound by all ICANN consensus policies, including, the UDRP as indicated in paragraph 11 of the Registration Agreement for the registration of the disputed domain names.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The Complainant holds trademark registrations for A DIAMOND IS FOREVER and is extensively using the mark as its slogan since 1948.
The Respondent registered the disputed domain names <adiamondisforever.cloud> on August 12, 2016 and <adiamondisforever.store> on March 2, 2017.
According to the case file documents there was correspondence between the parties before the Respondent registered the disputed domain names, as detailed in Section 4 above.
Therefore, it is irrefutable that the Respondent was well aware of the Complainant’s trademark and goodwill associated to it and it was targeting the Complainant when registering the disputed domain names.
Further, in all its communications to the Complaint and in the present proceeding, the Respondent has claimed the amount of EUR 200,000 for each disputed domain name or domain name incorporating A DIAMOND IS FOREVER trademark, thus the disputed domain names appear to have been registered for the main purpose of reselling them to the Complainant for an amount well in excess of the documented out-of-pockets costs.
Therefore, the Panel deems perfectly applicable the paragraph 4(b)(i) of the Policy in the present case because there are clear circumstances indicating that the Respondent has registered the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names.
By using the Complainant’s trademark without authorization, registering domain names incorporating Complainant’s trademark A DIAMOND IS FOREVER and claiming excessive amounts of money for the transfer of the same to the trademark holder arguing there is no rule on the Internet, is definitely indicative of the Respondent’s bad faith intent and a clear case of cybersquatting. These are the cases for which the Policy was designed, establishing expedited administrative proceedings to address disputes alleged to arise from abusive registrations of domain names.
For the above, the Panel finds that there is no doubt that the registration and use of the disputed domain names are in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
E. Other requests made by the Complainant for this Panel
The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies, transfer/cancellation of a domain name or denial of the complaint.
Accordingly, although the Complainant has succeeded in its Complaint, in the present administrative proceeding the Panel has no powers to order the Respondent to disclose its other registrations infringing Complainant’s intellectual property rights, accordingly such requests remain to be addressed in the relevant common law courts.
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 <adiamondisforever.cloud> and <adiamondisforever.store> be transferred to the Complainant.
Date: April 15, 2017