WIPO Domain Name Decision: D2005-0630

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

De Beers LV Limited, De Beers LV Trademark Limited v. Registerfly.com

Case No. D2005-0630

1. The Parties

The Complainant is De Beers LV Limited, De Beers LV Trademark Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Fross Zelnick Lehrman & Zissu, New York, United States of America.

The Respondent is Registerfly.com, Domain Registration, West Orange, New Jersey, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <debeersonline.com> <shopdebeers.com> are registered with eNom (herein “the domain names in dispute”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005. On June 17, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names in dispute. On June 17, 2005, eNom 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2005.

The Center appointed J. Nelson Landry as the sole panelist in this matter on July 28, 2005. 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

Complainants are De Beers LV Limited and De Beers LV Trademark Limited, a wholly owned subsidiary of Complainant De Beers LV Limited (herein together “Complainants”).

The De Beers name has been used for over a century in connection with the mining, distribution, promotion and sale of diamonds throughout the world including the United States of America.

At least as early as December 29, 2000, press coverage in New York and in other parts of the world announced that the long time owner of rights in De Beers name and the luxury goods company, LVMH (Moët Hennessy Louis Vuitton), were negotiating to establish a business to sell jewelry branded with the De Beers name and on January 17, 2001, the New York Times reported the agreement. The Complainants were then incorporated and established to exploit the De Beers mark in connection with retail services and the sale of jewelry and related luxury goods area in the United States of America and elsewhere.

In January 2001, the Complainant De Beers LV Trademark Limited filed eleven separate intent-to-use trademark applications to register De Beers for a wide variety of luxury goods and for retail store services featuring luxury goods detailed in each De Beers application and all of these applications have been published for opposition and thereafter allowed by the United States Patent & Trademark Office (“USPTO”) (herein collectively the “De Beers Trademark” or the “Trademark”).

De Beers stores were opened in London in December 2002 and Tokyo in 2003 and 2005, further stores were set to open in 2005, in London, New York, Paris and Los Angeles. The Complainant, De Beers LV Limited, operates these current stores either itself or through wholly owned subsidiaries. Since the announcement in the press in 2001, numerous additional articles have subsequently appeared further publicizing the De Beers retail jewelry venture with the contribution of numerous celebrities.

Complainant De Beers LV Limited has had a presence on the Internet since 2001, at the website “www.debeers.com”, which site is accessible worldwide, provides information about Complainants’ jewelry products and retail stores and said site had an average of 6.9 million “hits” every month, a large percentage of which originate with United States of America consumers. The Complainant, De Beers LV Limited, uses other URLs namely “debeers.co.uk”, “debeerslv.co.uk”, “debeerslv.net”, “debeers.biz” “debeersmillenniumstar.co.uk”, “debeersdiamonds.com”, and “debeerslv.com”.

On February 27, 2005, the domain names in dispute were registered by <netfriends.com>, Mathew Tyler, of California, United States of America. Mr. Tyler sent an email to Netnames, Complainant De Beers LV Limited’s domain names in dispute administrator in U.K. advising that he had recently acquired the domain names in dispute, and offering to lease them to the Complainant De Beers LV Limited for $1,000.00 per month per domain name. He also advised that “should you decline this offer, I will seek alternative leasers.” After the offer to lease the domain names in dispute was made, the same were then used to redirect consumers to a website at <porngm.com>, an online pornography directory. At the time, the domain names in dispute were still listed as owned by Mr. Tyler.

Subsequently, the Respondent was listed as the owner and the domain names in dispute resolved to a “Parking Service” webpage operated by the Respondent. At this common page for both domain names in dispute, the user is provided with various links for travel, technology, health and beauty, gifts, personal finance, as well as a search engine and is also greeted with numerous pop-up advertisements for cell-phone ring-tones and political polls, none of which are affiliated with the Complainants. The Respondent provides two services to domain name owners, first, it allows for registration of domain names in its own name thereby masking the identity of the true owner and second, it provides domain name owners with an opportunity to commercially benefit from the domain names they own.

As of June 3, 2005, the pages content at the web pages associated with the domain names in dispute changed and now feature links for websites, most of which offer diamonds and diamond engagement rings and none of which are affiliated with Complainants. The sites also provide search engines for “Related Categories,” including for the terms DE BEERS, HARRY WINSTON, and TIFFANY.

There has never been any relationship between the Complainants, the first registrant and the Respondent that would give rise to any license, permission or authorization to use or register the domain names in dispute.

5. Parties’ Contentions

A. Complainant

The Complainants submit that the domain names in dispute are identical or confusingly similar to the De Beers Trademark in which the Complainants have prior and exclusive rights in connection with luxury goods and related retail store services; the Respondent has no rights or legitimate interests in the domain names in dispute; and the domain names in dispute were registered and are being used in bad faith.

The Complainants represent that long prior to the registration of the domain names in dispute by the Respondent, De Beers was a well known trade name and trade identity associated with diamonds and the diamond trade throughout the world, including the United States of America and that the De Beers name was associated with the long established worldwide market for diamond jewelry and consequently through this extensive and long use, the name De Beers became famous in the United States of America and worldwide, and represents a business and goodwill of tremendous value. Furthermore according to the Complainants, they have strong rights in the De Beers Trademark for which eleven trademark applications were filed in the United States of America prior to the date Respondent’s registration of the domain names in dispute. These applications are sufficient to establish these Complainants’ rights. See Hoffman—La Roche Inc. v. NASR ANAIZI, WIPO Case No. D2001-0767; Quixtar Investments, Inc. v. Denis Hoffman, WIPO Case No. D2000-0253; Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, et. al., WIPO Case No. D2000-0014-0015; PHE, Inc. v. Bill McCall, WIPO Case No. D2003-0516; Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236. These decisions support the view that an intent-to-use application does not negate Complainant’s rights.

The Complainants further states that they have been using De Beers as corporate names since 2001, have operated websites at “www.debeers.com” and other URLs incorporating De Beers since at least as early as 2002, and own and operate five De Beers stores, four of which opened before the domain names in dispute were registered. Therefore there is no doubt that Complainants have satisfied the first element of the Policy. See Charles Schwab & Co, Inc. v. Polanski, WIPO Case No. D2001-0959 and United Feature Syndicate, Inc. (aka All Business Matters.com) v. All Business Matters, Inc. and Dave Evans, WIPO Case No. D2000-1199.

The Complainants contends that there can be no dispute that the domain names in dispute are confusingly similar to Complainants’ De Beers Trademark and the Respondent cannot escape liability by taking Complainants’ De Beers trade name and Trademark and adding to it generic terms that aptly describes Complainants’ services. By adding the words “shop” or “online” to the De Beers Trademark, the Respondent has not avoided confusion; it has only increased it. See Arthur Guinness Son & Co. (Dublin) Limited v. Healy/BOSTH, WIPO Case No. D2001-0026; AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 and Aventis Pharma S.A., Aventis Pharma Deutschland GmbH v. Valicenti, WIPO Case No. D2005-0037.

The Complainants allege that since their adoption and use of the De Beers Trademark, the presence on the Internet at <debeers.com> and the other domain names owned by them predate the registration of the domain names in dispute by several years, the burden is on the Respondent to establish its rights or legitimate interests in the domain names in dispute. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cyberso, WIPO Case No. D2003-0174.

According to the Complainants, the timing of the registration of the domain names in dispute clearly cannot be coincidence by reason of the earlier activities of Complainants established herein which timing suggests that the Respondent registered the domain names in dispute to take advantage of consumer recognition of the De Beers Trademark. See Six Continents PLC & Six Continents Hotels, Inc. v. Immobliare Incorporated, WIPO Case No. D2002-0811.

The Complainants state that no relationship exists between them and the Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the domain names in dispute and under these circumstances, the Respondent cannot show legitimate rights or interests in the domain names in dispute. See Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123; Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494.

The Complainants submit that there is no way for Respondent to demonstrate any rights to or legitimate interest in the domain names in dispute because the Respondent is not commonly known by De Beers, the websites to which the domain names in dispute point or have pointed have nothing to do with the Complainants and have no relationship to Complainants’ goods and services, there is no connection between the domain names in dispute and the goods or services offered at the websites to which the domain names in dispute point or have pointed, and the Respondent is not making legitimate non-commercial or fair use of the domain names in dispute with an intention not to mislead consumers.

According to the Complainants, the Respondent can show no legitimate right to use the domain names in dispute because the De Beers Trademark is so connected with the Complainants, and has no association with the Respondent, such that Internet users will inevitably believe that the domain names in dispute are controlled by the Complainants. See Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079. The De Beers Trademark is well-known, distinctive, and the subject of U.S. federal trademark applications, therefore it is not reasonably possible for the Respondent to demonstrate any bona fide legitimate interest in a domain name that includes Complainants’ Trademark. See YAHOO! Inc. v. David Murray, WIPO Case No. D2000-1013 in which the panel considered that respondent having numerous potential marks it could have chosen, the fact that it chose one so similar to complainant’s leads to inference of lack of valid rights or interest in the domain name.

The Complainants represent that the Respondent is using the domain names in dispute to direct traffic to websites where it operates and profits from. The practice of diverting internet traffic searching for a party that owns a famous mark to websites in exchange for referral fees or other commercial benefit has repeatedly been held by arbitration panels to be evidence of bad faith under the Policy. See AT&T Corp. v. Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; Park Place Entertainment Corporation . v. International Gaming, Ltd., WIPO Case No. D2002-0884; General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076 and Charles Schwab & Co., Inc. v. Polanski, WIPO Case No. D2001-0959.

The Complainants submit that the fact that the Respondent has taken Complainants’ exact Trademark and trade name De Beers as the dominant part of the domain names in dispute is evidence of bad faith. See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119. Moreover, the fact that Respondent has registered two different domain names in dispute, both incorporating DE BEERS, is further evidence of bad faith. See Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031; PepsiCo, Inc. v. Phayze, Inc., WIPO Case No. D2003-0693; Kelley Blue Book Company v. Network Solutions, Inc., WIPO Case No. D2004-0468.

The Complainants represent that bad faith is further shown by the fact that the Respondent has sought to capitalize on the fact that consumers associate the Complainants with retail services for luxury goods and jewelry and that the Respondent waited to register the domain names in dispute until after the Complainant De Beers LV Trademark Limited had filed its applications to register De Beers Trademark in the United States of America, after the press coverage of the store openings and after some stores had been opened. Therefore according to the Complainants, the Respondent, in registering the domain names in dispute, was clearly seeking to take advantage of the publicity surrounding the upcoming launch of the De Beers retail store in New York in addition to taking advantage of the De Beers Trademark generally. Because Respondent added “shop” and “online” to the De Beers Trademarks, consumers will likely assume that any websites associated with the domain names in dispute are connected to Complainants’ ongoing retail activities. This constitutes bad faith in violation of the Policy. See AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; DreamWorks L.L.C. v. Andy Xu, WIPO Case No. D2004-0667.

The Complainants contend that bad faith is evident from the use of the domain names in dispute for web pages that link to other sites offering diamonds and diamond engagement rings, none of which are affiliated with Complainants and that redirecting a domain name corresponding to the trademark of a complainant to a website offering links to competitors of complainant is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See AllenEdmonds Shoe Corporation v. allenedmunds, WIPO Case No. D2004-0631 and Aventis Pharma S.A.; Aventis Pharma Deutschland GmbH v. Jonathan Valcenti, WIPO Case No. D2005-0037.

The Complainants further contend that the domain names in dispute were at one point used to divert consumers to an adult-content site and rely on UDRP cases which have held that the mere threat that a domain name can be redirected to a pornographic site is evidence of bad faith. See Viacom Internationa1, Inc. v. MTVMP3.COM, WIPO Case No. D2001-0275. Here it already has occurred, evidencing bad faith. See America Online, Inc. v. Viper, WIPO Case No. D2000-1198; CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148. The fact that Respondent subsequently caused the domain names in dispute to point to other websites does not negate the fact that bad faith has been established. See Ingersoll-Rand Co. v. Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; AutoNation Holding Corp., v. Venta, WIPO Case No. D2002-0984.

According to the Complainants, bad faith also is found because the original listed owner of the domain names in dispute sought to lease those names to Complainant De Beers LV Limited for US$ 1000.00 per month, each. See The Mills Limited Partnership v. +1.NA/Fortune Financial Center, WIPO Case No. D2004-1014; Magnum Piering, Inc. v. Mudjackers Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The evidence suggests that this original owner still controls the domain names in dispute through the masked registration provided by Respondent. Furthermore the Respondent has been found to have registered at least one other domain name in bad faith under the Policy, i.e., in Pfizer Inc. v. ReisgterFly.com, WIPO Case No. D2004-0586 and bad faith can be evidenced by the existence of other proceedings against the same registrant. See General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076.

The Complainants further submit that bad faith also is found from the fact that the domain names in dispute are obviously connected with the Complainants. As such their very use by the Respondent in connection with websites that have no connection with the Complainants or Complainants’ business or services suggests “opportunistic bad faith.” See Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158, and cases cited therein. Therefore there is simply no justification for registration of De Beers in or as part of a domain name by the Respondent.

Finally, the Complainants submit that by registering the domain names in dispute, the Respondent is guilty of bad faith registration and use of these domain names in dispute because these actions demonstrate that it registered these domain names in dispute in order to prevent the Complainants from incorporating the De Beers Trademark in certain domain names in dispute and that the Respondent has engaged in a pattern of such conduct, in violation of paragraph 4(b)(ii) of the Policy. See Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056; The Mills Limited Partnership v. This-Domain-For-Sale, WIPO Case No. D2001-0747.

Given that the Respondent has never been authorized by the Complainants to use the De Beers Marks, the very fact that Respondent has registered the domain names in dispute establishes bad faith use and registration. See Heelquick, Inc. v. Goldman, et al., NAF Claim No. 92527 which held that registration of domain name comprised of complainant’s trademark found to be in bad faith since it can mislead the public into thinking respondent owns the name. Because the ultimate effect of any use of the domain names in dispute will be to cause confusion with the Complainants, the use and registration of the domain names in dispute must be considered to be in bad faith. See Empresa Brasileira de Telecomunicações S.A. –Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainants have rights; and

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

(iii) The domain names have been registered and are being used in bad faith.

The Complainants have in their evidence demonstrated to the satisfaction of this Panel that Complainant De Beers LV Trademark Limited. had adopted the Trademark De Beers, applied on January 16, 2001, to registered this Trademark in the United States of America in association with ten different classes of wares and one of services namely “retail store services featuring luxury consumer products” which luxury products are described in said other ten applications for the same De Beers Trademark.

Furthermore, the Complainants have commenced the use of their Trademark in the opening and operation of retail stores in London in December 2002, Tokyo in 2003. It is appropriate to observe that all these trademark applications have been published by the USPTO and have subsequently been allowed considering the absence of any opposition. These projects of the Complainants along with the opening of stores have been the subject of reports in reputable newspapers of international distribution starting in December 2000. The evidence also demonstrates that the Complainants had been operating since 2001, under their corporate name which comprises the De Beers distinctive element. Finally soon after the filing of the Trademark application, the Complainant De Beers LV Limited began using eight domain names, all incorporating the distinctive element De Beers.

The Complainants thus have established rights in the De Beers Trademark, corporate name and eight domain names, where 6.9 million hits per month were noted, and thus notwithstanding their short existence and trademark use, the Complainants have thus built important goodwill and reputation in association with this De Beers Trademark which benefited from the well established fame of the De Beers name in association with the diamond industry which was also put in evidence.

The domain names in dispute incorporate in its entirety the De Beers distinctive element of the family of De Beers Trademark present in each of the eleven applications. There is no doubt that the domain names in dispute are confusingly similar to the De Beers Trademark for purposes of the Policy. In the opinion of the Panel the addition of descriptive words such as “shop”, “online” and the suffix “.com” does not determine the reader from the fact that the distinctive term De Beers of Complainants’ Trademark has been taken and associated with descriptive terms and this does not diminish in any way that the domain names in dispute are confusingly similar to the De Beers Trademark.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainants has made a prima facie case raising numerous grounds each supported by earlier UDRP decisions that the Respondent lacks right or legitimate interest in the domain names in dispute by stating that the Respondent has never been known by the name “De Beers” or the domain names in dispute, is not legitimate non-commercial or fair use of the domain names in dispute.

Furthermore, the Complainants have never given a license nor in any way authorized the Respondent to make use of Complainants’ Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainants’ Trademark. On the contrary the Complainants have shown several circumstances to support this absence of rights, amongst which the timing of the registrations after the Complainants internet presence was established, that the Respondent was first diverting visitors to websites in which the Respondent has a financial interest and which has no connection to the De Beers Trademark and offering competitive products to those of the Complainants. None of these facts have been rebutted by the Respondent. It is certainly fair to conclude that the holding of the domain names in dispute denies Complainants access to the use of the domain names corresponding to its Trademark along with its.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(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 website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name was registered and used in bad faith.

The Complainants have raised at least many grounds and circumstances each supported with earlier UDRP decisions which in this Panel opinion clearly demonstrate that the domain names in dispute have been registered in bad faith by the person who registered them and then used in bad faith by the Respondent.

The registration after the planned development of stores by the Complainants, the wide press coverage, the opening of some stores, the publication and allowance of the Trademark applications in combination with the exact distinctive De Beers element cannot be a coincidence and this, as already acknowledged in UDRP decisions, supports in this Panel’s opinion a finding that the domain names in dispute have been registered in bad faith. This Panel so finds.

It has been proven that the Complainants did not authorized the use of the De Beers Trademark, therefore the use of the domain names in dispute to capitalize on the fact that consumers associate the Complainants with retail services for luxury goods and jewelry and will likely assume that any websites associated with the domain names in dispute are connected to the Complainants’ ongoing retail activities, even more so when these website pages that link to other sites offering diamonds and diamond engagement rings, as established in the present case, none of which are affiliated with Complainant, is evidence of use in bad faith. See AT&T Corp. v. CME Inc, WIPO Case No. D2001-1060; DreamWorks L.L.C. v. Andy Xu, WIPO Case No. D2004-0667 and AllenEdmonds Shoe Corporation v. allenedmunds, WIPO Case No. D2004-0631.

It is well acknowledged that using the domain names in dispute to divert consumers to an adult-content site is also evidence of bad faith.

There is furthermore evidence that the Respondent attempted to extort money from Complainants, in offering to rent its websites or domain names for the sum of US$ 1000 per month which has been established as use in bad faith in UDRP decisions cited.

Finally, this Panel relying on decisions cited finds that opportunistic bad faith was established by the Complainants and further corroborated by the evidence that the Respondent has engaged in a pattern of conduct which results from the registration of the domain names in dispute in order to prevent the Complainants from incorporating the De Beers Trademark in other domain names. See Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056; The Mills Limited. Partnership v. This-Domain-For-Sale, WIPO Case No. D2001-0747.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain names <debeersonline.com> <shopdebeers.com> are confusingly similar to the Complainants’ Trademark;

(b) the Respondent has no rights or legitimate interest in the domain names in dispute;

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <debeersonline.com> <shopdebeers.com> be transferred to the Complainant De Beers LV Limited.

J. Nelson Landry
Sole Panelist

Dated: August 26, 2005