Complainant is De Beers Intangibles Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird LLP, United Kingdom.
Respondent is Ivetta Mavrova of Rilsk, Russian Federation.
The disputed domain name <debeersinvest.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 25, 2016. 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.
Complainant is a company organized under the laws of the United Kingdom and is part of the De Beers Group of Companies (“De Beers”) that is active in the diamond mining and trading industry.
Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the designation De Beers, inter alia, in the Russian Federation at Respondent’s apparent domicile:
- Word mark DE BEERS, World Intellectual Property Organization (WIPO), Registration No. 741492A; Registration Date: August 4, 2000; Status: Active.
Moreover, Complainant has evidenced that it is the registered owner of a huge portfolio of domain names relating to the designation De Beers, including the domain names <debeers.com> as well as <debeersgroup.com>, both of which redirect to Complainant’s official websites at “www.debeers.com” as well as “www.debeersgroup.com” promoting Complainant’s business and related products and services.
The disputed domain name <debeersinvest.com> was created on March 22, 2016; by the time of the rendering of this decision, it redirects to a website at “www.debeersinvest.com” notifying users that “the service is temporarily unavailable”.
Complainant requests that the disputed domain name be transferred to Complainant.
Complainant contends that for over 100 years De Beers has been one of the world’s largest diamond mining companies and suppliers of rough diamonds. As such, the DE BEERS trademark has become a distinctive identifier associated with De Beers and the services it provides, and has garnered substantial global goodwill and reputation.
Complainant submits that the disputed domain name is at least confusingly similar to the DE BEERS trademark as it fully incorporates the latter, with the mere addition of the generic term “invest”.
Complainant further claims that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent is not known by the disputed domain name nor does Respondent hold any trademark or other intellectual property rights in the DE BEERS trademark, nor has she been given any permission by De Beers to register or use any domain names incorporating the DE BEERS trademark, (2) content found at the website under the disputed domain name included fraudulent representation that Respondent is in fact Complainant, which is not the case, therefore, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and (3) Respondent ignored any pre-procedural correspondence sent by Complainant wishing to have the disputed domain name being transferred, but simply temporarily suspended the former website content at “www.debeersinvest.com”.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since (1) the main purpose of the website at “www.debeersinvest.com” was to obtain investment from the public who would have been duped into believing that Respondent in fact was Complainant, (2) it is evident that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website “www.debeersinvest.com” by creating a likelihood of confusion with Complainant’s DE BEERS trademark and (3) it is explicitly stated in the “About Us” section of the website at “www.debeersinvest.com” that De Beers “is the best-known diamond company in the world with a brand respected wherever diamonds are bought or sold. That Brand is underpinned by our values, our vision and our strategy for achieving brilliance”; thus, there can be no doubt that Respondent must have been aware of the DE BEERS trademark while registering and making use of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant. However, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.
The Panel concludes that the disputed domain name <debeersinvest.com> is confusingly similar to the DE BEERS trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the DE BEERS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9). Accordingly, the mere addition of the generic term “invest” in the disputed domain name cannot dispel the confusing similarity arising from the incorporation of Complainant’s DE BEERS trademark therein.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial of fair use thereof without intent for commercial gain.
Complainant has produced evidence that, by the time of the filing of this Complaint, the disputed domain name redirected to a website at “www.debeersinvest.com”, many parts of which constituted a fraudulent representation that such website derived from Complainant itself. The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of the DE BEERS trademark throughout the world – obviously alluded to Complainant’s DE BEERS trademark and business instead of any genuine business of Respondent.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not reply to Complainant’s allegations, neither as they were included in the cease and desist letter of April 7, 2016, nor as they are set forth in the Complaint duly notified to Respondent by the Center on August 2, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusing similar to Complainant’s DE BEERS trademark, to a website at “www.debeersinvest.com” representing in a fraudulent manner that the same originates from Complainant itself rather than from Respondent, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website at “www.debeersinvest.com”, by creating a likelihood of confusion with Complainant’s DE BEERS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent apparently provided false WhoIs contact information, since the delivery of the Written Notice of the Complaint sent to Respondent via DHL on August 2, 2016 failed due to an apparent invalid postal address. This fact at least throws a light at Respondent’s behavior which supports the conclusion of registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <debeersinvest.com> be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: August 30, 2016