Colibri Corporation v. Tobby Choi a/k/a B Choi
Claim Number: FA0603000654937
Complainant is Colibri Corporation (“Complainant”). Respondent is Tobby Choi a/k/a B Choi (“Respondent”), PO Box 1, Hong Kong, HK 00000, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <darlingdiamonds.com> and <darlingdiamond.com>, registered with Go Daddy Software, Inc. and <daringdiamonds.com>, registered with Domainstream.Ca.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2006.
On March 9, 2006, Domainstream.Ca confirmed by e-mail to the National Arbitration Forum that the <daringdiamonds.com > domain name is registered with Domainstream.Ca and that Respondent is the current registrant of the name. Domainstream.Ca has verified that Respondent is bound by the Domainstream.Ca 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 March 9, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <darlingdiamonds.com> and <darlingdiamond.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On March 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@daringdiamonds.com>, postmaster@darlingdiamonds.com and postmaster@darlingdiamond.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <daringdiamonds.com> is identical to Complainant’s DARING DIAMONDS mark and Respondent’s <darlingdiamonds.com> and <darlingdiamond.com> domain names are identical or confusingly similar to Complainant’s DARLING DIAMONDS mark.
2. Respondent does not have any rights or legitimate interests in the <daringdiamonds.com>, <darlingdiamonds.com> and <darlingdiamond.com> domain names.
3. Respondent registered and used the <daringdiamonds.com>, <darlingdiamonds.com> and <darlingdiamond.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Colibri Corporation, is engaged in the jewelry
industry. Under its DARING DIAMONDS
mark, Complainant offers low-proced sterling silver jewelry with small diamonds
set in it. Complainant has widely
advertised its jewelry to consumers and jewelry retailers, and some of its
advertisements have appeared in popular publications such as USA Today, InStyle,
Teen People and Lucky and
also in trade magazines within the jewelry industry. Complainant operates a website for its DARING DIAMONDS products
at the <daringdiamonds.net> domain name.
Complainant has registered its DARING DIAMONDS mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,935,431 issued
March 22, 2005) and with trademark authorities in Australia, Canada, European
Community, Japan and Russia.
This spring, Complainant plans to launch an extension of its
low cost diamond jewelry targeted to children, which will be offered under the
DARLING DIAMONDS mark. Complainant has
registered its DARLING DIAMONDS mark in the United Kingdom (Reg. No. 2331279
issued May 6, 2003). In addition,
Complainant owns a pending registration for the DARLING DIAMONDS mark with the
USPTO (Ser. No. 76/511146 filed May 2, 2003).
Respondent registered the <darlingdiamonds.com> domain name on June 11, 2004, the <darlingdiamond.com> on July 25, 2004 and the <daringdiamonds.com> domain name on May 13, 2005. The <daringdiamonds.com> domain name resolves to a directory website that displays various third-party links and includes an advertisement for Pool.com, a website for backordering domain names. The <darlingdiamonds.com> and <darlingdiamond.com> domain names resolve to a web page for a website hosting provider called dotpia.com.
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 registered its DARING DIAMONDS mark with trademark authorities in several countries, including the United States. Complainant also owns a registration for the DARLING DIAMONDS mark in the United Kingdom. Complainant’s registration of its marks with trademark authorities in several countries is sufficient to establish its rights in the marks for purposes of Policy ¶ 4(a)(i). See Primera Tech., Inc. v. Nowe Media, FA 596020 (Nat. Arb. Forum Dec. 29, 2005) (“The Panel finds that Complainant’s registrations of its PRIMERA mark with numerous national trademark authorities are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <daringdiamonds.com> domain name is identical to Complainant’s DARING DIAMONDS mark, and the <darlingdiamonds.com> domain name is identical to the DARLING DIAMONDS mark, because the domain names only differ from the marks with the addition of the generic top-level domain (“gTLD”) “.com.” See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Furthermore, the <darlingdiamond.com> domain name is confusingly similar to the DARLING DIAMONDS mark, because the domain name merely omits the letter “s” from the mark, which is not sufficient to distinguish the domain name from the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of establishing a prima
facie case that Respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii).
Once Complainant has satisfied its burden, that burden falls on
Respondent to provide evidence of its rights or legitimate interests under
Policy ¶ 4(c). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”). Due to Respondent’s failure
to Respond, the Panel may presume that Respondent has failed to meet its
burden. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel chooses to evaluate whether the evidence provided
supports a finding of Respondent’s rights or legitimate interests under Policy
¶ 4(c).
There is nothing in the record suggesting that Respondent is commonly known by any of the disputed domain names. In the WHOIS information for the <daringdiamonds.com> domain name, Respondent is identied as “B Choi” and for the <darlingdiamonds.com> and <darlingdiamond.com> domain names as “Tobby Choi.” Respondent has not come forward with any affirmative evidence that it is commonly known by the domain names. Therefore, the Panel concludes that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The <daringdiamonds.com> domain name resolves
to a directory website offering links to various products and services and
advertising the domain name auction services of a company called Pool.com. Respondent is using the <darlingdiamonds.com>
and <darlingdiamond.com> domain names to resolve to a website
for a website hosting provider.
Presumably, Respondent receives a commission for diverting Internet
users to these third-party websites.
Where Respondent has not come forward to provide circumstances that
would establish its rights or legitimate interests, the Panel does not consider
its use of Complainant’s marks to divert Internet users to third-party
businesses for profit to be a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain names pursuant to Policy ¶ 4(c)(iii).
See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent 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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The evidence suggests that Respondent registered the <daringdiamonds.com>, <darlingdiamonds.com> and <darlingdiamond.com> domain names to garner profit from click-through fees by diverting Internet traffic to third-party websites. By using Complainant’s DARING DIAMONDS and DARLING DIAMONDS marks in the domain names, Respondent is benefiting from the goodwill associated with Complainant’s marks by using that goodwill to attract Internet users to its websites. Internet users who reach Respondent’s websites then become confused as to Complainant’s association with the websites. These circumstances are indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <daringdiamonds.com>, <darlingdiamonds.com> and <darlingdiamond.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 24, 2006
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