Bond & Co. Jewelers,
Claim Number: FA0703000937650
Complainant is Bond &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bonddiamond.com>, registered with Compana, Llc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On March 22, 2007, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <bonddiamond.com> domain name is registered with Compana, Llc and that the Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, 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 March 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 12, 2007, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant’s Additional Submission was received on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it owns common law rights in “BOND DIAMONDS,” and that Respondent’s domain name <bonddiamond.com> is confusingly similar to Complainant’s trademark; that Respondent does not have any rights or legitimate interests with respect to the domain name; and that the domain name has been registered and used in bad faith.
Respondent argues that Complainant owns no valid trademark rights in the BOND DIAMOND trademark as of the date of the domain name’s registration, because the Complainant had not yet filed its federal application for BOND DIAMONDS, because Complainant’s state registration for BOND DIAMONDS had expired, and because Complainant submitted insufficient evidence to establish secondary meaning in the BOND DIAMONDS mark. Respondent argues Complainant uses the term “Bond Jewelers” rather than BOND DIAMONDS as the name of its stores, on its catalog, on its website and in telephone listings.
Respondent further asserts that its legitimate interest in <bonddiamond.com> arises from its use of the domain name as “an advertising portal that provides access to a broad range of services,” through which Respondent generates advertising revenues. Respondent argues that it did not act in bad faith because it is in the business of providing locator services.
C. Additional Submissions
In its Additional Submission, Complainant argues that its use of BOND DIAMONDS as part of the domain name <bonddiamonds.com> establishes its common law rights. Complainant states that its website has displayed at least 56 web pages advertising Complainant’s goods and services since 2000, and some of those web pages feature the term BOND DIAMONDS. Complainant submitted copies of several print advertisements that prominently feature the term BOND DIAMONDS and the <bonddiamonds.com> domain name.
In its Additional Submission, Respondent objects to Complainant’s Additional Submission as “an undisguised attempt to amend its Complaint” because the evidence attached to Complainant’s Additional Submission could have been part of the original Complaint. Respondent notes that a Google search for “Bond Diamond” yields references to “Bond Diamond” as a cutting device that can be made from various types of materials. Respondent argues that BOND DIAMOND is a generic designation.
Complainant owns two
Seven years later, Respondent registered the
disputed domain name <bonddiamond.com> on
Respondent’s <bonddiamond.com> site lists many “pay-per-click” links which resolve to third party websites, including some sites for jewelers that compete with Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
of Complainant’s state applications, as well as its federal trademark
application, for BOND DIAMONDS were filed after Respondent registered the
disputed domain name. In spite of
Complainant’s tardy registrations, the Panel may find that a state or federal
trademark registration is unnecessary to establish rights in the mark pursuant
to Policy ¶ 4(a)(i).
See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also
This Panel concludes that Complainant has proven common law rights in the BOND DIAMONDS mark pursuant to Policy ¶ 4(a)(i). The common law rights have arisen by virtue of Complainant’s use of BOND DIAMONDS in commerce since 1993, twelve years before Respondent registered the disputed domain name. Complainant’s “bonddiamonds.com” website also evidences its common-law rights in the mark. Further, Complainant has established its use of BOND DIAMONDS on print advertisements, web pages and catalogs or gift books. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Palm Desert National Bank, N.A. v. Manila Industries, Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (finding that Complainant’s registrations of the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s common law rights in the mark).
disputed domain name is the singular variation of Complainant’s mark. The disputed domain name eliminates the
letter “s,” eliminates the space between the two words of Complainant’s mark,
and adds the generic top-level domain (“gTLD”) “.com.” The elimination of the letter “s” and the
space between the two words of Complainant’s mark, as well as the addition of a
gTLD, insufficiently establish distinctiveness from the mark pursuant to Policy
¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO
The disputed domain name resolves to a website that displays advertisements for competing goods and services as well as links to various, third-party commercial websites. Such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
Respondent does not assert that it is commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup,
Inc. v. Amish Country Store, FA 96209
(Nat. Arb. Forum
disputed domain name resolves to a website featuring advertisements and links
to third-party commercial websites, some of which directly compete with
Complainant’s business. Respondent
admits that it generates revenues from these links and therefore Respondent
financially benefits from click-through fees.
As such, Respondent’s use amounts to an attraction for commercial gain,
which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb.
Since Respondent’s <bonddiamond.com> domain name is essentially identical to Complainant’s BOND DIAMONDS mark and Complainant’s <bonddiamonds.com> domain name, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Confusion is particularly likely in view of the fact that both Complainant’s site and Respondent’s site offer jewelry. Thus, Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bonddiamond.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
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