WIPO Domain Name Decision: D2007-0893

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diamonique Corporation v. Foley Services

Case No. D2007-0893

1. The Parties

Complainant is Diamonique Corporation of West Chester, Pennsylvania, United States of America, represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., United States of America.

Respondent is Foley Services, United States of America.

2. The Domain Name and Registrar

The disputed domain name <online-diamonique.com> is registered with eNom (“the Domain Name”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2007. On June 19, 2007, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On June 19, 2007, eNom transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Registrant. 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2007.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 26, 2007. 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

Complainant states that, “[s]ince at least as early as February 1970,… Complainant, through its predecessor in interest, has used the trademark DIAMONIQUE for jewelry and in the advertising, marketing and sale of such goods in interstate commerce in the United States and throughout the world.” In support thereof, Complainant has provided as exhibits copies of the following trademark registration certificates from the U.S. Patent and Trademark Office, all of which are in the name of Complainant:

- Reg. No. 1,532,950 for DIAMONIQUE; registered April 4, 1989; first used February 9, 1970.

- Reg. No. 1,538,103 for DIAMONIQUE; registered May 9, 1989; first used February 9, 1970.

Furthermore, Complainant has provided a table of numerous trademark registrations for the mark DIAMONIQUE owned by it in 40 countries or geographic regions.

Collectively, Complainant’s trademark registrations cited above are referred to hereafter as the “DIAMONIQUE Trademark.”

The Domain Name was created on November 6, 1998.

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- The Domain Name is confusingly similar to the DIAMONIQUE Trademark because “[t]he salient and dominant portion of Respondent’s domain name is identical to” the DIAMONIQUE Trademark and that “[t]he addition of the generic term ONLINE to the mark DIAMONIQUE, is not only insufficient to avoid confusion, it worsens it by suggesting that Complainant has added the term ONLINE to indicate the Internet location of its DIAMONIQUE jewelry.”

- Respondent has no rights or legitimate interests in respect of the Domain Name because “Respondent has not engaged in any use of the disputed domain name with the bona fide offering of any goods and services”; that “Respondent is not, and has never been, known by the names DIAMONIQUE and/or ONLINE DIAMONIQUE”; that “it is extremely difficult to conceive of any possible legitimate use that Respondent might have had in mind for ONLINE-DIAMONIQUE.COM”; and that “Respondent registered the ONLINE-DIAMONIQUE domain name to trade upon the fame and goodwill of Complainant”.

- Respondent has registered and is using the Domain Name in bad faith by “misleadingly direct[ing] visitors looking for Complainant’s jewelry on the Internet to a web site listing third party hyperlinks to various web sites (‘Sponsored Listings’), the majority of which appear to be concerned with jewelry and gemstone related products.”

B. Respondent

Respondent did not reply to Complainant’s contentions. However, in a letter provided by Complainant as an exhibit, Respondent refused to transfer the Domain Name to Complainant, stating, inter alia: “We do not presently use this domain name in commerce nor do we intend on using it in commerce. We understand that we can not use your trademark without your permission.”

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the DIAMONIQUE Trademark.

As to whether the Domain Name is identical or confusingly similar to the DIAMONIQUE Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “online-diamonique”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

The Domain Name differs from the DIAMONIQUE Trademark in only two respects: the Domain Name adds the word “online” and a dash. The Panel finds that these additions do not negate the confusing similarity between the Domain Name and the DIAMONIQUE Trademark. The Panel agrees with the decision cited by Complainant that “[t]he addition of the non distinctive word ‘on line’ does nothing to prevent the confusing similarity…” Barclays Bank PLC v. Mr Mohammed Hassan, WIPO Case No. D2001-0253. Further, the presence of the dash is irrelevant. See, e.g., Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853 (a dash in a domain name “add[s] no distinctiveness whatsoever”).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that “Respondent has not engaged in any use of the disputed domain name with the bona fide offering of any goods and services”; that “Respondent is not, and has never been, known by the names DIAMONIQUE and/or ONLINE DIAMONIQUE”; that “it is extremely difficult to conceive of any possible legitimate use that Respondent might have had in mind for ONLINE-DIAMONIQUE.COM”; and that “Respondent registered the ONLINE-DIAMONIQUE domain name to trade upon the fame and goodwill of Complainant”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited August 9, 2007).

Accordingly, as a result of Complainant’s plausible allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant appears to argue that bad faith exists as described in Policy, paragraph 4(b)(iv) because “Respondent misleadingly directs visitors looking for Complainant’s jewelry on the Internet to a web site listing third party hyperlinks to various web sites (‘Sponsored Listings’), the majority of which appear to be concerned with jewelry and gemstone related products.” An exhibit provided by Complainant of the website using the Domain Name confirms this. Numerous panels have found that similar websites constitute bad faith under the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Furthermore, the Panel finds that the Domain Name is “so obviously connected with” Complainant that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <online-diamonique.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: August 9, 2007