The Complainant is De Beers Intangibles Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Data Protected Limited, China, self-represented.
The disputed domain name <forevermark.luxe> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
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 disputed domain name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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. On June 28, 2019, the Center received an email communication from the Respondent.
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 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. On July 24, 2019, the Center received an email communication from the Respondent, indicating an agreement has been reached to transfer the disputed domain name. On the same date, the Center sent a communication regarding possible settlement to the Parties. On July 25, 2019, the Center received a further communication from the Respondent regarding negotiating “a reasonable transfer agreement”. The Center received the Complainant’s email communications on July 30, 2019, and on August 2, 2019, indicating, among other things, its preference to continue with the UDRP proceeding. On August 5, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Joseph Simone as the sole panelist in this matter on August 12, 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.
The Complainant De Beers Intangibles Limited is part of the De Beers Group of Companies (hereinafter “De Beers”, inclusive of the Complainant unless stated otherwise) and is one of the world’s largest diamond mining companies and suppliers of rough diamonds. De Beers owns and markets diamonds by means of its diamond brand FOREVERMARK. FOREVERMARK-branded diamonds are available in more than 2,400 retail outlets throughout the world and are distributed by De Beers via a network of licensed third party jewelers retailing diamonds and diamond jewelry.
The Complainant owns a substantial global portfolio of FOREVERMARK trademarks and the Complainant has cited its European Union and United Kingdom registrations (such as European Union Trade Mark Reg. No. 001747617, registered on February 11, 2002) as examples and the marks are duly registered in the aforementioned jurisdictions.
The Complainant is also a registrant of a number of domain names, including <forevermark.com>, <forevermark.jewelry>, and <forevermark.net>.
The disputed domain name was registered on October 30, 2018, and currently resolves to a page stating “The site can’t be reached.”
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark FOREVERMARK in which it has rights, and the disputed domain name also uses the generic Top-Level Domain (“gTLD”) “.luxe”, a denominator of luxury, with which diamonds are synonymous. This suggests the Respondent intends to associate itself with De Beers and to capitalize on De Beers’ goodwill and reputation in the FOREVERMARK marks.
Additionally, the similarities between the disputed domain name and De Beer’s FOREVERMARK mark encourage Internet users to believe that the Respondent’s website is associated with De Beers. Given the strong reputation of the FOREVERMARK name, no traders would choose the disputed domain name unless done so with the intent to create a false impression of association with the Complainant and in order to divert the public trade from them.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent acquired and is using the disputed domain name in bad faith, and that there is no justification for the Respondent’s registration of the disputed domain name containing the Complainant’s mark, given the strong reputation of the FOREVERMARK trademark.
All in all, the Respondent will never be capable of using the disputed domain name for a legitimate purpose, as the notoriety of De Beers is such that members of the public will always assume there is an association between the Respondent and De Beers.
The Respondent explained, in one of his email communications, that the disputed domain name originated from his English name “Mark” during his school days. The Respondent also stated that he would like to negotiate a reasonable transfer agreement.
The Respondent did not file any supporting evidence.
Under the first element of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has submitted a selection of trademark records it owns for the mark FOREVERMARK in the European Union and United Kingdom, designating Class 14 covering jewel-related goods. These include European Union Trade Mark Reg. No. 001747617, registered on February 11, 2002.
The Panel also agrees that the Complainant is an internationally well-known trademark and a distinctive identifier of the Complainant’s products.
The test for identical or confusing similarity involves a side-by-side comparison of the disputed domain name with the trademark. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain name incorporates the term “forevermark” in its entirety, which is identical to the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s mark, and thus the first requirement of the UDRP is satisfied.
Under the second element, the Complainant must demonstrate that the Respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
The Panel accepts the Complainant’s contention that the Respondent has no legal or economic relationship with the Complainant, and having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) and the Respondent has not presented any evidence to rebut the Complainant’s assertions.
In light of the above, the Respondent has not presented any evidence to the contrary and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Finally, the Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
A strong inference of bad faith can arise where the Respondent “knew or should have known” of the Complainant’s trademark rights (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051).
Despite the fact that the Respondent has not made any active use of the disputed domain name, which does not resolve to a website, panels have consistently found that the lack of use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the mark FOVERMARK is an arguably famous trademark on an international level. The fact that the Respondent failed to provide any evidence or indication of any actual or contemplated good-faith use of the disputed domain name plus the registration being in the “.luxe” gTLD are further evidence of bad faith, as well as evidence that registration of the disputed domain name constitutes a deliberate attempt to ride on the reputation of the Complainant’s FOREVERMARK mark for commercial gain by creating a likelihood of confusion that the website and its products are affiliated with or endorsed by the Complainant.
Therefore, the Panel finds 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 <forevermark.luxe> be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: August 26, 2019