Westmore · UDRP DecisionDebeers.feedback
The Panel ordered transfer of <debeers.feedback>. It found the domain identical to the Complainant’s DE BEERS trademark, held that the suspicious post-demand appearance of reviews dated before the demand supported a prima facie finding that the site was not a genuine noncommercial feedback forum, and concluded that the Respondent registered and used the domain in bad faith with knowledge of the Complainant’s group, trademark, and reputation.
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The decision illustrates that a domain’s apparent presentation as a review or feedback forum does not by itself establish legitimate noncommercial or fair use. Contemporaneous evidence showing that earlier-dated reviews appeared only after a demand letter can undermine the claimed genuineness of the site, particularly when the respondent supplies no explanation.
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 De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp. Case No. D2016-1465 1. The Parties The Complainant is De Beers Intangibles Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird LLP, United Kingdom. The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar The disputed domain name <debeers.feedback> is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2016. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 24, 2016. 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 is part of the De Beers group of companies, the well-known diamond miners and suppliers. As one would expect, the group through the Complainant owns numerous registered trademarks for DE BEERS in many countries around the world, including International Registration No. 741492A for DE BEERS, registered on August 4, 2000 for International classes 14, 35, and others. The Complainant has also registered at least 11 different domain names for “debeers” in different domains including <debeers.com>, <debeers.asia>, <debeers.auction>, <debeers.eu>, and seven other domains. The Respondent registered the disputed domain name on January 17, 2016. This was close to the end of the “Early Access Period” for the “.feedback” domain, before names in the domain became open to “General Availability”. The website to which the disputed domain name resolves has what purport to be 11 reviews of De Beers’ services. It also has a section with links to the “debeers.com” website, the DeBeers Facebook and Instagram pages and the Wikipedia entry for De Beers. Telephone number and physical co-ordinates for an outlet in New York in the United States of America are set out. This section is headed by a graphic of a mountain range which has superimposed on it a circle with what the Complainant says is its logo inside. There is a disclaimer underneath this information and at the foot of the landing page: Disclaimer: This site is provided to facilitate free speech regarding De Beers. No direct endorsement or association should be conferred. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of numerous registered trademarks for DE BEERS around the world. The disputed domain name is identical to that trademark, disregarding the domain “.feedback”. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g ., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s formal name. There is no evidence that the Respondent is ordinarily known by a name from which the disputed domain name could be derived. These matters together with the number, extent and longevity of the Complainant’s trademarks are usually sufficient to raise a prima facie case that the Respondent does not have any rights or legitimate interests. In the present case, the apparent content of the website immediately raises the potential for the Respondent to have rights or a legitimate interest in the disputed domain name under paragraph 4(c) of the Policy. As noted above, the main part of the content on the website to which the disputed domain name resolves appears to be 11 reviews of services provided by the De Beers corporate group. There are also links to official De Beers online presences and a disclaimer. On their face at least, the reviews appear to have been posted by different people and on different dates. Despite this, the Complainant advances a number of reasons to support its claim that this apparent usage is not a legitimate noncommercial or fair use but rather that it constitutes bad faith. First, it says that the “.feedback” domain is intended to be used by brand owners to provide a convenient feedback channel for their public. Secondly, it challenges the veracity of the reviews posted on the website. Thirdly, it says the disclaimer is small, insignificant and unnoticeable. Other matters that the Complainant points to include the use of a privacy service to register the disputed domain name and its registration very late in the Early Access Period as well as the use of its logo and the links to official De Beers social media. In these circumstances, the Complainant contends that the website should not be considered a genuine review or feedback website (all the more so as the Respondent has concealed his, her or its identity). In the Panel’s view, the decisive consideration relates to the history of the posting of the reviews. The 11 reviews posted on the website do not on their face appear to be fake. The Complainant says that initially the only “review” that appeared on the website was a comment “Nah mate” dated January 22, 2016. There were other aspects of the website which were noticeably incomplete. The other purportedly “real” reviews appeared on the website only after the Complainant’s lawyers sent a letter of demand on March 24, 2016. The Complainant also points out that no further reviews have been posted after April 19. The Complainant also says the uniformly positive nature of the reviews is consistent with and gives an appearance of pretext. The dates of the purported reviews are as follows: January 21, 22 (“Nah mate”), 29, February 6, March 14, 23, 29 and April 1, 5, 13 and 19. The letter of demand, however, included a print out of the website to which the disputed domain name resolved showing only a single review – the “Nah mate” review dated January 22. That is, at least five reviews now appear on the website which are dated before March 24, 2016 but did not appear on the website when printed out on March 24, 2016. The Panel notes the very serious nature of the allegation being made by the Complainant. That requires considerable caution before being accepted. The appearance on the website after the letter of demand was sent of so many reviews with dates over such a sustained period before March 24 is extremely suspicious. It provides strong support for the Complainant’s allegation. If the website were genuinely operating as a feedback forum, one would ordinarily expect the reviews to have appeared at or close to their respective dates. That they were not on the website on March 24 and did not appear until after the letter of demand was sent calls for explanation. In the context of “complaints” sites and the like, panels routinely require evidence that the domain name is actually being used for the genuine airing of grievances or at least demonstrable preparation for such use. See WIPO Overview paragraph 2.4 . In the absence of an acceptable explanation, indeed any explanation at all, about the very belated appearance of the “reviews” dated before the letter of demand was sent, the Panel finds that the Complainant has demonstrated a prima facie case that the reviews are not genuine and the website to which the disputed domain name resolves is not being used in good faith for legitimate noncommercial or fair use purposes. In view of this finding, it is unnecessary to address the other arguments advanced by the Complainant. In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. , Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd , WIPO Case No. D2010-0470 . Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. Bearing in mind what the trademark is and given the apparent nature of the website to which the disputed domain name resolves, there can be no doubt that the disputed domain name was registered with knowledge of the Complainant’s corporate group, trademark and reputation. Given that, the conclusion that the Respondent has registered and is using the disputed domain name in bad faith follows from the reasons in section 5B above for finding that the Respondent does not have rights or a legitimate interest in the disputed domain name. 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 <debeers.feedback> be transferred to the Complainant. Warwick A. Rothnie Sole Panelist Date: September 14, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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