OOO Sintez CORPORATION c/o NAD Services v. Greg Herro / LifeGem
Claim Number: FA1507001630159
Complainant is OOO Sintez CORPORATION c/o NAD Services (“Complainant”), represented by Claire McHan of NAD Services LLC, Georgia, USA. Respondent is Greg Herro / LifeGem (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heartindiamond.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2015; the Forum received payment on July 23, 2015.
On July 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <heartindiamond.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2015 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@heartindiamond.com. Also on July 27, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
(i) Complainant has registered to HEART IN DIAMOND trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,373,251, first use in commerce Dec. 23, 2008, filed Feb. 28, 2012, registered July 23, 2013). Complainant also asserts common law rights in the mark dating back to at least December 23, 2008. The mark is used on or in connection with the sale of diamonds. The <heartindiamond.com> domain name is identical to the HEART IN DIAMOND trademark because the only difference between the domain name and the trademark is the addition of the generic top-level domain (“gTLD”) “.com” and the removal of the spacing between the words of the mark.
(ii) Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, as it has no affiliation with Complainant and was never assigned any rights to Complainant’s HEART IN DIAMOND mark.
(iii) Respondent has engaged in bad faith registration and use. Respondent uses the disputed domain name to redirect to its own competing website, where Internet users are able to purchase Respondent’s own products. This constitutes bad faith disruption.
B. Respondent
Respondent failed to submit a timely response. The Panel notes that the disputed domain name <heartindiamond.com> was registered on January 18, 2007. The Panel also notes that Respondent has responded via email in which it implied that Respondent may transfer the disputed domain name to Complainant.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent did not register the disputed domain name in bad faith.
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."
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.
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.”).
Complainant has registered the HEART IN DIAMOND trademark with the USPTO (e.g., Reg. No. 4,373,251, first use in commerce Dec. 23, 2008, filed Feb. 28, 2012, registered July 23, 2013). The mark is used on or in connection with the sale of diamonds. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Panel again notes that the registration date for the <heartindiamond.com> domain name is January 18, 2007, which predates the date on which Complainant acquired registered rights in the mark. . Further, the Panel notes that the registration information Complainant has provided pertaining to the HEART IN DIAMOND trademark lists December 23, 2008 as the date the mark was first used in commerce. Notwithstanding it does not appear that Complainant’s trademark was ever in use when the disputed domain name was registered, the Panel finds that Complainant’s USPTO trademark registration above satisfies the threshold requirement of having trademark rights. See WIPO Overview 2.0, paragraph 1.1 (stating that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP).
Complainant
argues that the <heartindiamond.com> domain name is identical to
the HEART IN DIAMOND trademark. Complainant notes that the only difference
between the domain name and the trademark is the addition of the gTLD “.com”
and the removal of space between the words of the mark. As a general rule, the
gTLD “.com” can never distinguish a domain name from the trademark at issue. See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
mere addition of the generic top-level domain “.com” is insufficient to
differentiate a disputed domain name from a mark). Further, the removal of
spaces between the words of a mark is irrelevant to Policy ¶ 4(a)(i) analysis.
See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA
937650 (Nat. Arb. Forum Apr.
30, 2007) (finding that the elimination of spaces between terms and the
addition of a gTLD do not establish distinctiveness from the complainant’s mark
under Policy ¶ 4(a)(i)). Thus, the Panel finds
that the <heartindiamond.com> domain name is confusingly similar to the HEART IN DIAMOND
trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant contends that Respondent’s use of the domain name to run a competing business is most disruptive.
The Panel recalls that the registration date for the <heartindiamond.com> domain name is January 18, 2007, which predates the date on which Complainant acquired registered rights in the mark. Further, the Panel notes that the registration information Complainant has provided pertaining to the HEART IN DIAMOND trademark lists December 23, 2008 as the date the mark was first used in commerce. As such, it does not appear that Complainant’s trademark was ever in use when the disputed domain name was registered.
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO, Sep.23, 2001).
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration of the disputed domain name in bad faith and concludes that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <heartindiamond.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: August 27, 2015
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