WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PGI SA v. Richard Cox
Case No. D2019-2338
1. The Parties
The Complainant is PGI SA, Switzerland, represented by Springut Law PC, United States of America (“United States”).
The Respondent is Richard Cox, United States.
2. The Domain Name and Registrar
The disputed domain name <platinumguild.org> is registered with 1&1 IONOS SE. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 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. On October 2, 2019, the Center received an email communication from the Respondent. The Center sent an email communication to the Complainant on October 3, 2019, that the Complaint was administratively deficient and providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on October 3, 2019. The Complainant filed an amended Complaint on October 4, 2019. The Center received an email communication from the Respondent on October 4, 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 October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019.
On October 9, 2019, the Respondent emailed the Center suggesting he would be willing to explore settlement negotiations. On October 10, 2019, the Center emailed the parties an invitation to temporarily suspend the proceeding if the Parties wished to explore the potential for a negotiated settlement. The parties did not avail themselves of that invitation.
The Response was filed with the Center on October 25, 2019. The Center acknowledged receipt of the Response on October 28, 2019, also mentioning the possibility for the Complainant to request a suspension in order to pursue settlement options.
The Complainant did not request suspension. Accordingly, the Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 31, 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
According to the Complaint, the Complainant was established in 1975. Its mission is to promote the use of platinum in jewelry. In pursuit of that objective, it has established five subsidiaries in, respectively, Shanghai, India, Japan, Hong Kong, China, and the United States. As part of their activities, the group provides educational services and runs marketing programs. It has registered the domain name <platinumguild.com> from which the group provides online access to its services.
The Complainant states that its efforts, and those of its subsidiaries, have resulted in approximately 80 million ounces of demand for platinum in the production of jewelry.
The Complainant has provided evidence that it owns two registered trademarks for a sign consisting of a composite logo form of the letters “Pt” adjacent to the words PLATINUM GUILDover the word INTERNATIONAL:
(a) European Union Trademark (“EUTM”) No. 017945092 for precious metals and jewelry in International Class 14 and advertising and promotional services in respect of the platinum jewelry industry in International Class 35; and
(b) United States Registered Trademark No. 5,855,226 for advertising and promotional services in International Class 35.
The EUTM was filed on August 17, 2018 and issued on December 11, 2018. The United States trademark was filed on October 10, 2018 and registered on September 10, 2019, claiming a first use in commerce on January 30, 2004.
The WhoIs report shows that the disputed domain name was registered to the Respondent on April 4, 2019.
It resolves to a website headed “Platinum Guild” with a strap line “Macroeconomic Trends in Precious Metals”. The landing page includes tabs to “Market News”, “Platinum Prices”, “Gold Prices”, “Silver Prices”, “Commodities Trends”, “Crypto Coins”, “Forex”, and “Economic Calendar”. Much of the landing page features “Recent Posts” which include excerpts from and links to what appear to be a number of articles with titles such as:
(a) Metals Update: Global Macro Risks Support Gold;
(b) Forex Update: Currency Markets Face Key Event Risks;
(c) Bitcoin Basics: Cryptocurrency Mining 101;
(d) Comparing Blockchain and Cryptocurrency Assets;
(e) Digital Investing: The Basics of Cryptocurrency Wallets;
(f) BTC/USD Faces Range Trading Conditions at Key Support and Resistance Levels;
(g) GDX: Breakout Confirmed;
and so on.
Each excerpt includes an attribution “Platinum Guild” and a byline in the Respondent’s name.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the two registered trademarks identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
The usual practice under the Policy is to disregard graphic elements of a trademark due to the inability to represent them in the domain naming system unless the figurative elements are the dominant portion of the trademark so that the textual elements have been overtaken: e.g., WIPO Overview 3.0, section 1.10.
In the present case, the stylised representation of the letters “Pt” is significant, but the words “Platinum Guild International” are at least of equal prominence and the word “International” is subordinate to and in smaller font than the words “Platinum Guild”. Accordingly, the Panel considers it is appropriate to apply the usual rule and undertake the comparison on the basis of the words “Platinum Guild International” only.
Disregarding the “.org” gTLD, therefore, the only difference between the Complainant’s trademarks and the disputed domain name is the addition of the word “International”. The omission of this word does not avoid a finding of confusing similarity as the trademark is plainly recognisable within the disputed domain name. See e.g., WIPO Overview 3.0, section 1.7.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
It is clear from the Complaint and the Response that the Complainant has not authorised the Respondent to use the Complainant’s trademark in the disputed domain name and, further, that the Respondent is not associated with the Complainant in any way.
The disputed domain name is not derived from the Respondent’s name or any name the Respondent has claimed to be known by.
These circumstances are usually sufficient to raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
In the Response, the Respondent denies any knowledge of the Complainant or its trademark. The Respondent says he is an academic with advanced degrees in economic topics related to the financial markets and has started “an SEO guild organisation that operates through a number of websites”. “Most” of these sites are said to deal with the relationships that exist between precious metals, cryptocurrencies, stocks, bonds, and foreign exchange rates. The Respondent points out that he has not used the Complainant’s logo or the phrase “Platinum Guild International” on the website nor referenced the Complainant’s products.
The Panel accepts that “platinum” can be a descriptive term for the metal by that name and is often used in marketing to emphasise some premium or superlative quality.
The website to which the disputed domain name does not appear to use the word “platinum” in that qualitative sense. Nor is it limited to matters related to the metal platinum. As noted above, it deals with a range of precious metals and also has a strong emphasis on cryptocurrencies and financial matters.
Moreover, the disputed domain name does not consist of the word “platinum” only, but the expression “platinum guild”. While both words are ordinary English words, the composite expression does not appear to be descriptive in itself.
However that may be, the expression “platinum guild” does not describe the nature of the website to which the disputed domain name resolves. In that connection, the Panel does not understand what the Respondent intends to convey by the expression “SEO guild organisation”. “Guild” ordinarily conveys the sense of a union or professional association with some sort of supervisory function over its members. The website to which the disputed domain name resolves does not appear to be the website of such an organisation. Nor is it directed to matters about “search engine optimisation” which is what the acronym “SEO” suggests. In any case, the disputed domain name, cannot be said to be descriptive of either what the Respondent’s website actually does or what the Respondent may be suggesting his SEO guild organisation does. The Panel notes the lack of relevant evidence to support the Respondent’s contentions.
While the Respondent has denied knowledge of the Complainant or its trademark, he has not advanced any explanation of how he came to adopt the disputed domain name. Its adoption cannot be explained by some purported descriptive character of the composite expression. In addition, the Panel notes that the Complainant operates a website at the domain name <platinumguild.com> (which, except for the gTLD, is identical to the disputed domain name). In these circumstances, the main significance of the composite expression appears to be as the Complainant’s name and a key distinctive feature of the Complainant’s trademark. Accordingly, it appears likely that, despite the Respondent’s denial, the disputed domain name was adopted for its resemblance to the Complainant’s name or trademark.
The adoption and use of the disputed domain name in those circumstances does not qualify as a good faith offering of goods or services under the Policy. Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case that he does not have rights or legitimate interests in the disputed domain name under the Policy.
The Complainant has therefore established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:
(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or
(ii) [the Respondent has] registered the [disputed] 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 Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location.
The reasons which have led to the conclusion that the Respondent does not have rights or legitimate interests in the disputed domain name also lead to the conclusions that the disputed domain name was registered and is being used to take advantage of the Complainant’s name and trademark. That is conduct of the kind that paragraph 4(b)(iv) is directed against.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
6. 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 name, <platinumguild.org>, be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 9, 2019