WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

De Beers Intangibles Limited v. Chetan Doshi

Case No. D2019-0170

1. The Parties

The Complainant is De Beers Intangibles Limited of London, the United Kingdom, represented by Bird & Bird LLP, the United Kingdom.

The Respondent is Chetan Doshi of Rowland Heights, California, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <debeerslabdiamonds.com>, <debeerslabjewelery.com>, <debeerslabjlry.com>, <debeerslightbox.com> and <lightboxbydebeers.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 26, 2019, the Center received an email communication from the Respondent. The Complainant filed an amended Complaint on January 28, 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 February 1, 2019. On February 19, 2019, the Respondent sent an email to the Center offering to cancel or transfer the disputed domain name to the Complainant. On January 20, 2019, the Center sent an email communication inviting the Parties to explore settlement negotiations, to which the Complainant did not reply.

In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. The Respondent did not submit any formal response.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 1, 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 Complainant is part of a British group of companies in the diamond field (including also Lightbox Jewelry Ltd, a subsidiary of the Complainant), which operates internationally and plays a leading role in the diamond exploration, mining, retail, trading, and industrial manufacturing sectors. It has operated for over hundred years, trading under the mark DE BEERS, which coincides with its company name and its companies’ group name. Since September 2018, a new company belonging to its group operates in the artificial diamond jewelry under the mark LIGHTBOX, selling its products online.

The Complainant and its subsidiary use the mark DE BEERS and the mark LIGHTBOX to identify and promote its respective products and services, holding rights to several trademark registrations for these marks, alone or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:

European Union Trademark No. 1793421 for DE BEERS, word mark, registered April 3, 2002, in classes 3, 9, 14, 16, 18, 20, 25, 35, 37, 40 and 41;

International Trademark No. 741492A for DE BEERS, word mark, registered August 4, 2000, in classes 3, 6, 8, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 34, 35, 36, 37, 38, 39, 40, 41 and 42, which is based on a Swiss Trademark and covers Antigua and Barbuda, China, Cuba, Georgia, Iceland, Japan, Kenya, Liechtenstein, Morocco, Monaco, Republic of Moldova, Norway, Serbia, Russian Federation, Sierra Leone, Turkmenistan and Turkey;

European Union Trademark No. 17373771 for LIGHTBOX, word mark, registered March 15, 2018, in classes 14 and 35.

The Complainant and its group also own several domain names comprising its trademarks, which are linked to corporate websites used in connection with its products and services, including <debeersgroup.com> registered on April 20, 2000, and <lightboxjewelry.com> registered on October 19, 2017.

The disputed domain names were registered on June 14, 2018 by the Respondent. All resolve to similar parking pages provided by the Registrar, which include various links, via redirection, to third parties’ websites mainly in the diamond, precious gems, gold and jewelry sectors, and some websites related to diverse sectors, like advertising, construction or insurance services, flowers, cheap flights, etc. These parking pages offer as well the selling of the respective disputed domain names.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Through the Complainant’s extensive use over more than a hundred years of its DE BEERS mark, as well as large sums invested in advertising and promotional campaigns worldwide for over half a century, this mark has become a distinctive identifier associated with its group of companies, garnering substantial global goodwill and acquiring international reputation.

Similarly, the LIGHTBOX mark and its related project have received substantial investment over the last four years in technology, a new production facility, as well as in promotion. In May 29, 2018, the launch of the mark LIGHTBOX was announced to the press with worldwide coverage. In addition, in November 2018, a pop-up shop for LIGHTBOX products in New York City was widely reported in the press. Therefore, the Complainant’s name as well as its mark DE BEERS have become associated with the LIGHTBOX mark, acquiring goodwill and reputation.

The disputed domain names show a clear intention on behalf of the Respondent to associate itself with the Complainant’s group, its new and innovative lab-grown diamonds project, and the goodwill and reputation in the DE BEERS and LIGHTBOX marks. The similarities between the disputed domain names and the targeted marks lead to believe that there is an affiliation or association with the Complainant, particularly emphasized by the use of the DE BEERS mark in its entirety in all of the disputed domain names.

Given the strong reputation of the DE BEERS mark, particularly in relation to diamonds and jewelry, no trader would choose the disputed domain names unless with the intention to create a false impression of association in order to defraud the public, attract business from the Complainant, or to tarnish the Complainant’s reputation.

The Respondent is not known by any of the disputed domain names, nor does it hold any trademark or other intellectual property rights for the terms “de beers” or “lightbox”. Further, the Respondent is not making legitimate noncommercial or fair use of the disputed domain names, which resolve to holding pages including pay-per-click links.

The disputed domain names were registered and are being used in bad faith. Their registration through a privacy protection service presumably has the intention to conceal the Respondent’s identity. Given the strong reputation of the DE BEERS mark and the timing of the disputed domain names registration, it is inconceivable that the Respondent was not aware that it was misappropriating the Complainant’s valuable intellectual property.

The registration of the disputed domain names has prevented the Complainant from registering domain names that correspond to its marks, contrary to paragraph 4(b)(ii) of the Policy.

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites linked to the disputed domain names by creating a likelihood of confusion with the Complainant or its trademarks in breach of paragraph 4(b)(iv) of the Policy.

Due to the notoriety of the Compliant and its trademarks, the Respondent would never be capable of using the disputed domain names for any legitimate purpose, as the public would always assume there is an association with the Complainant or its marks DE BEERS and/or LIGHTBOX.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In various communications to the Center, the Respondent offered to cancel or transferred the disputed domain names to the Complainant, providing its contact details and requesting information on how to proceed. Further, the Respondent admitted not having the intention to open any website or do any business with the disputed domain names, expressively refusing to respond to the Complaint, and, in a last communication, indicated it was unemployed and would appreciated any job offer in the Complainant’s group.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered mark DE BEERS. The disputed domain names either incorporate the mark DE BEERS in its entirety followed by terms clearly related to the Complainant’s market sector and the line of artificial or “lab-grown” diamonds (“labdiamonds”, “labjewelery” or “labjlry”), or incorporate both DE BEERS and LIGHTBOX trademarks joining them together as “debeerslightbox” or with the expression “lightboxbydebeers”, and in all cases the same gTLD “.com” is added. The Complainant’s mark DE BEERS is recognizable in all the disputed domain names, in two of them, the mark LIGHTBOX is also recognizable, and the gTLD “.com” adds no distinctive meaning, being a technical requirement disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant has asserted that the Respondent has not been authorized to use the trademarks DE BEERS and LIGHTBOX. Furthermore, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain names, has any other rights, or made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose.

This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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”.

The evidence provided by the Complainant shows the disputed domain names are linked to parking pages, via redirection, which include pay-per-click links to several websites, mainly competing websites in the same market sector as the Complainant, and others belonging to nonrelated sectors, none of them affiliated with or authorized by the Complainant.

The Respondent has expressively refused to reply to the Complaint, stating that it had no intention to open any business or identify any website with the disputed domain names. Furthermore, the Respondent has offered to cancel or transferred the disputed domain names to the Complainant, indicating that it is unemployed and would be willing to accept any job offer available in the Complainant’s group.

All these circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.

At the time of the disputed domain names’ registration or its acquisition by the Respondent, this Panel considers unlikely that the Respondent did not know about the DE BEERS trademark as well as the new trademark LIGHTBOX, and did not have them in mind.

Several factors in this case lead to the above conclusion, namely (i) the extensive use and promotion of the DE BEERS trademark over more than a century, worldwide, including in the United States where the Respondent is located; (ii) the extensive presence of the DE BEERS mark over the Internet; (iii) the worldwide press coverage of the LIGHTBOX mark launch, as well as its extensive presence over the Internet; (iv) the identical reproduction of DE BEERS and/or LIGHTBOX marks in the disputed domain names; (v) the addition, in some domain names, of words that clearly relate to the Complainant’s business and its artificial or “lab-grown” diamond line (“labdiamonds”, “labjewelery” or “labjlry”); and (vi) the fact that the Respondent has registered all five disputed domain names incorporating the reputed trademark DE BEERS, targeting this mark as well as the new line of artificial diamonds identified by the LIGHTBOX mark, with no intention, as it has specifically recognized, to use them in connection with any business or identify any website with the disputed domain names.

This conclusion is corroborated by the disputed domain names’ current use redirecting to parking pages, which contain pay-per-click links to third parties’ websites, via redirection, some of them operated by businesses in the same or related field as the Complainant.

The Policy’s non-exhaustive list of circumstances of bad faith in paragraph 4(b) includes the following:

“[…](iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel considers that it is more likely than not that the disputed domain names were registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademarks, misleadingly attracting Internet users to the Respondent’s websites for the purpose of obtaining a commercial gain derived from pay-per-click links, and disrupting the Complainant’s business.

All the above-mentioned facts lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element of the Policy.

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 <debeerslabdiamonds.com>, <debeerslabjewelery.com>, <debeerslabjlry.com>, <debeerslightbox.com>, and <lightboxbydebeers.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: March 14, 2019