NSTBC, Inc. v. G3WW LLC c/o Dynadot Privacy
Claim Number: FA1009001344823
Complainant is NSTBC, Inc. (“Complainant”), represented by Jeffrey H. Epstein, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is G3WW LLC c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopdiamonique.com>, registered with DYNADOT, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010.
On September 3, 2010, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <shopdiamonique.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shopdiamonique.com by e-mail. Also on September 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shopdiamonique.com> domain name is identical/confusingly similar to Complainant’s DIAMONIQUE mark.
2. Respondent does not have any rights or legitimate interests in the <shopdiamonique.com> domain name.
3. Respondent registered and used the <shopdiamonique.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NSTBC, Inc., owns the exclusive rights to the DIAMONIQUE mark which it uses in connection with its jewelry, precious stone, and at-home shopping services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DIAMONIQUE mark (e.g., 1,538,103 issued May 9, 1989).
Respondent, G3WW LLC c/o Dynadot Privacy, registered the <shopdiamonique.com> domain name on May 29, 2010. The disputed domain name resolves to a website featuring Complainant’s mark, information about Complainant’s products, and links to third-party websites offering Complainant’s goods for sale.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DIAMONIQUE mark. The Panel finds that registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant holds multiple trademark registrations with the USPTO for its DIAMONIQUE mark (e.g., 1,538,103 issued May 9, 1989). Therefore, the Panel finds Complainant has established rights in the DIAMONIQUE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <shopdiamonique.com> domain name is confusingly similar to Complainant’s DIAMONIQUE mark. The disputed domain name contains Complainant’s entire mark, adds the term “shop,” which refers to Complainant’s home shopping services, and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of a decriptive term and a generic top-level domain are irrelevant in differentiating a disputed domain name from a complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel concludes that Respondent’s <shopdiamonique.com> domain name is confusingly similar to Complainant’s DIAMONIQUE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <shopdiamonique.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Given that Respondent has failed to respond to the complaint, the Panel may conclude that Respondent does not have rights or legitimate interests in the <shopdiamonique.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
When there is no evidence brought forth, or anything in the record to indicate that a respondent is commonly known by a disputed domain name, previous panels have found that the respondent has not established rights or legitimate interests in said domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). There is no indication in the record that Respondent is commonly known by the <shopdiamonique.com> domain name. The WHOIS information identifies the domain name registrant as “G3WW LLC c/o Dynadot Privacy.” Complainant asserts Respondent is not authorized to use the DIAMONIQUE mark. In light of these facts, the Panel finds that Respondent lacks rights or legitimate interest in the <shopdiamonique.com> domain name.
Complainant asserts that Respondent uses the <shopdiamonique.com> domain name to direct Internet users to a pay-per-click website which Respondent likely profits from. The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <shopdiamonique.com> domain name to disrupt Complainant’s business by offering links to third-party websites which offer Complainant’s product and directly compete with Complainant. The Panel finds this disruption to be in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The <shopdiamonique.com> domain name resolves to a website which not only provides links to Complainant’s competitors, but also blogs information about Complainant’s product. This information undoubtedly creates confusion among Internet users who would likely be unable to distinguish whether or not Complainant has sponsored, or is affiliated with, the disputed domain name. Respondent likely experiences a commercial gain when Internet users visit its page and confuse it with Complainant, and click-through to the links offering Complainant’s products. The Panel finds that the creation of confusion by Respondent in an attempt to commercially gain constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopdiamonique.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 16, 2010
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