Westmore · UDRP DecisionAdler.diamonds
The Panel ordered transfer of <adler.diamonds>. It found that the Complainant had established rights in ADLER through trademark registrations and longstanding use, and that the “.diamonds” gTLD increased rather than reduced confusion because diamonds formed part of the Complainant’s business. The Respondent had no authorization or demonstrated legitimate interest and had not used the Domain Name for an active website. Bad faith was established principally from the selection of ADLER with the industry-specific “.diamonds” gTLD, the underlying registrant’s location in Dubai where the Complainant had an agent, and offers to sell the Domain Name for USD 1,650 and later USD 4,365, amounts the Panel considered significantly above out-of-pocket registration expenses.
The timeline behind adler.diamonds
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind adler.diamonds — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how an industry-specific gTLD can strengthen confusing similarity and support an inference of targeting when it directly describes the trademark owner’s field. It also demonstrates that the absence of an active website does not prevent a bad-faith finding where the registrant seeks a price substantially above registration expenses and the surrounding circumstances point to awareness of the trademark owner.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Adler Joailliers SA v. Digital Privacy Corporation / Shahab Almoosa Case No. D2014-1217 1. The Parties The Complainant is Adler Joailliers SA of Geneva, Switzerland, represented by Novagraaf Switzerland S.A. The Respondent is Digital Privacy Corporation of Carlsbad, California, United States of America / Shahab Almoosa of Dubai, United Arab Emirates. 2. The Domain Name and Registrar The disputed domain name <adler.diamonds> (the “Domain Name”) is registered with 101domain, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2014. On July 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on July 17, 2014. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2014. The Respondent did not submit any formal response. The Center appointed Ian Lowe as the sole panelist in this matter on August 19, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant was founded in 1886 in Istanbul, Turkey by Jacques Adler. In 1972 the business was moved to Geneva, Switzerland and it continues to be managed by descendant members of the Adler family. The Complainant is engaged in the business of trading in gemstones, designing and crafting jewelry, and running an exclusive network of boutiques in Switzerland, England and Hong Kong, and agents in Japan, in Dubai and Abu Dhabi in the United Arab Emirates and in Qatar. The Complainant has traded under the ADLER name for over 100 years and uses the mark in almost every country of the world such that its ADLER trademark is well known in respect of jewelry, diamonds and associated goods and services. The Complainant is the proprietor of numerous registered trademarks around the world comprising ADLER including: a) Switzerland registration number 2P-311729 ADLER registered as of July 8, 1981; and b) International registration number 465710 ADLER (device) registered as of December 30, 1981 and currently designated in a number of countries around the world including the European Union, the United States and Russia. The Domain Name was registered on March 4, 2014 through a privacy service. At the date of the Complaint it did not resolve to any active website. On June 5, 2014, the representative of the Complainant sent a cease and desist letter to the registrant of the Domain Name in response to which the Respondent offered to sell the Domain Name initially for USD 1,650 (stating that it was in the process of transferring the Domain Name to a third party) and in a subsequent email offered to sell it to the Complainant for USD 4,365. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to its ADLER trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. In an email to the Center on July 16, 2014, the Respondent stated “I am writing with regards to a complained [sic] that has recently been filed with your kind authority. The complaining party did send me notice of this, however to this point I had not received notice from WIPO. The party claims that they have IP registered in the same name of the domain that we have, and we would be more than happy to comply if there is a violation of rights…”. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has undoubted, uncontested rights in the trademark ADLER both by virtue of its various trademark registrations and as acquired through widespread use in many countries of the world for over 100 years. The Domain Name comprises the trademark ADLER together only with the generic Top Level Domain (“gTLD”) “.diamonds” The applicable gTLD would usually be disregarded under the confusing similarity test. Here the use of “.diamonds” adds to the confusion between the Domain Name and the Complainant’s trademark since it comprises a description of part of the business of the Complainant. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a mark or marks in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has made out a prima facie case that the Respondent can have no rights or legitimate interests in the Domain Name. The Respondent is not authorised in any way by the Complainant to use the ADLER mark as part of its domain name. It appears that the Respondent has not used the Domain Name to resolve to an active website. However, in response to a cease and desist letter from the Complainant, the Respondent replied with an initial offer to sell the Domain Name for a significant sum that, in the Panel’s view must be significantly in excess of the Respondent’s out-of-pocket expenses for registering the Domain Name. It then subsequently demanded a substantially greater sum to transfer the Domain Name to the Complainant. The Respondent has chosen not to reply to the Complaint or to make out any claim to any other relevant rights or legitimate interests or otherwise to displace the prima facie case made out by the Complainant. Indeed, in its email to the Center on July 16, 2014, the Respondent appeared to concede that it had no rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith As indicated above, there is no suggestion that the Domain Name has been actively used by the Respondent to resolve to a website. However, the Complainant has adduced evidence that in response to a cease and desist letter the Respondent offered the Domain Name for sale to the Complainant for a sum significantly in excess of out-of-pocket expenses, claiming that the Complainant had to respond to this offer promptly since the Respondent was in the process of transferring the Domain Name to a third party. When the Complainant sought clarification, the Respondent demanded an increased sum for the transfer of the Domain Name. The Respondent has not filed a Response and, furthermore, registered the Domain Name through a privacy service. In the Panel's view, the registration by the Respondent of the Domain Name, comprising the Complainant’s ADLER trademark using the “.diamonds” gTLD indicates that the Respondent must have had the Complainant in mind when it registered the Domain Name. The Panel notes that the address of the underlying registrant of the Domain Name is in Dubai where an agent of the Complainant operates selling diamonds and other jewelry under the ADLER trademark. The subsequent offer to sell the Domain Name to the Complainant for a sum significantly in excess of out of pocket expenses amounts to paradigm bad faith registration and use for the purposes of the Policy. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <adler.diamonds> be transferred to the Complainant. Ian Lowe Sole Panelist Date: September 2, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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