WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Beers Intangibles Limited v. Whois privacy services provided by DomainProtect LLC / Dennis Biryukov, N/A
Case No. D2019-1451
1. The Parties
The Complainant is De Beers Intangibles Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Whois privacy services provided by DomainProtect LLC, Russian Federation / Dennis Biryukov, N/A, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <de-beers.com> (“Domain Name”) is registered with Nicco Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2019 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 July 3, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 8, 2019. 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 following facts are undisputed.
The Complainant is part of the De Beers group of companies, which is is one of the world’s largest diamond mining companies and suppliers of rough diamonds. The Complainant has conducted world-renowned diamond advertising and promotional campaigns for over half a century.
The Complainant has an extensive, worldwide portfolio of intellectual property rights protecting the mark DE BEERS, including registered marks, unregistered rights and domain name registrations. The Complainant’s rights include the European Union Trade Mark registration No. 001793421 DE BEERS word mark, registered April 3, 2002 for a wide range of goods and services (the “Trademark”).
Furthermore, the Complainant is also the registrant of a number of domain names, including <debeersgroup.com>.
The Domain Name was registered by Respondent on November 30, 2006.
The Domain Name was resolving to a website containing several pay-per-click links. Furthermore the Domain Name was offered for sale.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name was registered by the Respondent on November 30, 2006. However, the Complainant believes that the Domain Name was available as of November 2018 and was again registered by the Respondent on December 1, 2018. In any event, at all such times the Complainant’s trademark portfolio was well established.
The Domain Name is confusingly similar to the Trademark. The Domain Name contains the substantial and distinctive element of the Trademark, namely “de beers” and the Trademark has been used in its entirety by the Respondent in the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not known by the Domain Name nor does it hold any trademark or other intellectual property rights in the Domain Name. The Respondent is not making legitimate noncommercial or fair use of the Domain Name. The Domain Name does currently not resolve to a proper, functioning website. Moreover, the Domain Name is offered for sale. Furthermore, on February 26, 2019 the Domain Name redirected to a website that was being used for phishing purposes and/or to deliver malware content. The goodwill associated with the Trademark has not been assigned in favor of the Respondent. There is no intention to make use of the Domain Name for a legitimate purpose.
The Domain Name was registered and is being used in bad faith. Given the strong reputation of the Trademark, the Respondent must have been aware that in registering the Domain Name it was misappropriating the valuable intellectual property of the owner of the Trademark.
The Domain Name is for sale; consequently, the Respondent has acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complaint or to a competitor. The registration of the Domain Name has prevented the Complainant from registering a domain name, which corresponds to the Trademark. The Respondent attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Trademark. The Respondent will never be capable of using the Domain Name for a legitimate purpose as the notoriety of the Complainant is such that members of the public will always assume there is an association between the Respondent and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of 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; and
(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 Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name consists of the Trademark, with the addition of a hyphen between the two verbal elements of the Trademark. Hence, the Panel finds that the Domain Name consists of the Trademark in its entirety. Therefore, the Domain Name is identical to the Trademark. The addition of the hyphen does not prevent a finding of confusing similarity between the Domain Name and the Trademark.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name, see decisions Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Thus, the Panel finds that the Domain Name is identical to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the evidence submitted.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights of legitimate interests in the Domain Name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the Panel’s view, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. For its part, the Respondent failed to submit any evidence or arguments that it has any right or legitimate interest in the Domain Name.
The Respondent does not seem affiliated with the Complainant in any way. There is no evidence that “De-Beers” is the Respondent’s name or that the Respondent is commonly known as “De-Beers”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating any of the Complainant’s Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods and services. According to the evidence submitted by the Complainant, the Domain Name was used to host a parked page comprising pay-per-click links and was offered for sale. The Panel finds that the use of the Domain Name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the Trademark or otherwise mislead Internet users.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant.
Furthermore, the Panel finds that the Respondent has intentionally attempted to attract users to its website by creating a likelihood of confusion with the Trademark.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the 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, <de-beers.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: August 22, 2019