DECISION

 

De Beers UK Limited v. Gary Rossi

Claim Number: FA2401002079102

 

PARTIES

Complainant is De Beers UK Limited ("Complainant"), represented by Robert White of Lexsynergy Limited, United Kingdom. Respondent is Gary Rossi ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sightholder.diamonds>, registered with Porkbun LLC.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 15, 2024; Forum received payment on January 15, 2024.

 

On January 16, 2024, Porkbun LLC confirmed by email to Forum that the <sightholder.diamonds> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 January 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@sightholder.diamonds. Also on January 17, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is part of the De Beers Group of companies, which has operated internationally in the field of diamonds for many years. Complainant has used the SIGHTHOLDER mark since 2014 to identify companies on a list of authorized purchasers of rough diamonds, and licenses these companies to use the SIGHTHOLDER mark for related commercial activities. Complainant owns a United States trademark registration for a design mark of which the word SIGHTHOLDER is the primary textual component, along with various registrations for SIGHTHOLDER in both standard character and design form in the European Union and many other jurisdictions. Complainant also asserts common law rights in the SIGHTHOLDER mark.

 

The disputed domain name <sightholder.diamonds> was registered in June 2023. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name resolves to what appears to be a default parked page generated by the registrar. Complainant sent a cease and desist communication to Respondent in July 2023 but did not receive a response. Complainant states that Respondent is not commonly known by the domain name, has no association with Complainant, and is not authorized or licensed to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <sightholder.diamonds> is identical or confusingly similar to its SIGHTHOLDER mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a 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."

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <sightholder.diamonds> incorporates Complainant's registered SIGHTHOLDER trademark, adding only the ".diamonds" top-level domain. The addition of a top-level domain is normally disregarded for purposes of paragraph 4(a)(i) of the Policy (and of course the ".diamonds" top-level domain adds to the confusion since it relates to Complainant's own use of the mark). See, e.g., De Beers Intangibles Ltd. v. Data Protected Ltd., D2019-1447 (WIPO Aug. 26, 2019) (finding <forevermark.luxe> identical to FOREVERMARK); De Beers Trademarks Ltd. & De Beers Diamond Jewellers Trade Mark Ltd. v. Sam Missoum, individually & dba AMG Diamond Conglomerate, Missoum*Aupfen Conglomerate, &/or VIP APAIRALL, D2016-1477 (WIPO Sept. 1, 2016) (finding <debeersjewellery.diamonds> and <debeersjewelry.diamonds> confusingly similar to DE BEERS); Adler Joailliers SA v. Digital Privacy Corp. / Shahab Almoosa, D2014-1217 (WIPO Sept. 2, 2014) (finding <adler.diamonds> identical or confusingly similar to ADLER). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to have made any active use of the domain name, nor to have engaged in preparations for such use, suggesting that Respondent lacks rights or legitimate interests in the domain name. See, e.g., ContextLogic Inc. v. Dafdsfadf Ewqrwdf, FA 2076116 (Forum Jan. 17, 2024) (finding lack of rights or legitimate interests in similar circumstances); HDR Global Trading Ltd. v. Singapore Singapore, FA 2051350 (Forum July 28, 2023) (same); De Beers Intangibles Ltd. v. Data Protected Ltd., supra (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used a privacy registration service and what appears to be Panel to be at least partially fictitious underlying registration data to register a domain name corresponding to Complainant's registered mark. Respondent does not appear to have made any active use of the domain name nor elected to participate in this proceeding. The Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, likely by selling the name or by using it to attract Internet users seeking Complainant or for similar illegitimate activities, and is maintaining the domain name for that purpose. ContextLogic Inc. v. Dafdsfadf Ewqrwdf, supra (finding lack of rights or legitimate interests in similar circumstances); HDR Global Trading Ltd. v. Singapore Singapore, supra (same); De Beers Intangibles Ltd. v. Data Protected Ltd., supra (same). The Panel find that the disputed domain name was registered and is being used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sightholder.diamonds> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: February 7, 2024