argyle-diamonds.com

WIPO Arbitration and Mediation Center

The Complainant is Argyle Diamond Sales Limited, an Australian Corporation with its address in West Perth, Western Australia. The Complainant is represented by Messrs. AJ Baden and KG Daley, of the firm Kenyon & Kenyon, of San Jose, California, United States of America.

The Respondent is Van Daaz, of 1255 Phillips Square, Suite 803, Montreal, Canada. The Respondent’s authorized representative in this administrative proceeding is Gad Zak.

The domain name at issue is <argyle-diamonds.com> ("the domain name"). The Registrar with which the domain name is registered ("the Registrar") is Network Solutions Inc, of Herndon, Virginia, United States of America. The domain name was registered on March 9, 1999.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center on November 5, 2001 (email) and November 6, 2001 (hard copy).

On November 12, 2001, the Registrar confirmed that the domain name is registered with it, and that the registrant is "Argyle-Diamonds.Com, c/o Van-Daaz. The administrative and billing contacts for the domain name were given as Gad Zak.

The Registrar confirmed that its Network Solutions’ 5 Service Agreement is in effect, and that the language of the Service Agreement is English. The status of the domain name was reported as "Active".

Having satisfied itself as to procedural aspects of the Complaint, on November 13, 2001, the Center forwarded to the Respondent a form of Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint.

The Respondent filed a Response by email on December 3, 2001, and receipt of that response was acknowledged by the Center on December 4, 2001. A hard copy of the Response was received on December 7, 2001.

On December 14, 2001, the Complainant forwarded to the Center an application for leave to file a reply to the Response, which incorporated a form of reply.

On December 15, 2001, the Respondent filed a document described as "Motion to Dismiss Complainant’s Request for and Filing of Reply in Support of the Complaint".

In response to these supplemental filings, the Center advised the parties that no express provision is made for supplemental filings in the Rules, and that it would be a matter for the Panel when appointed to determine whether the supplemental filings would be admitted and considered.

Both Complainant and Respondent having requested a single-member Panel, and the Complainant having paid the requisite fee, on December 14, 2001, the Center invited Warwick Alexander Smith, of Auckland, New Zealand to serve as sole Panelist in the case. It transmitted to him a form of statement of acceptance and declaration of impartiality and independence.

On December 15, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Center formally appointed Warwick Alexander Smith as sole Panelist in the administrative proceeding, on December 17, 2001. In terms of paragraph 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is therefore required to forward its decision by December 31, 2001.

The Panel considers that the Complaint complies with the requirements of the Rules and the Supplemental Rules, and that the Panel has been properly appointed.

No other proceedings relating to the domain name have been notified to the Panel.

The language of the administrative proceeding is English, being the language of the registration agreement.

The Complainant says that it has distributed and provided advice concerning diamonds, under the service mark ARGYLE DIAMONDS, since 1988. The Complainant says that its name and mark have been the subject of numerous magazine and trade articles, as well as other extensive publicity. The complaint alleges that as a result of this publicity and the Complainant’s widespread sales of products and provision of services in association with the ARGYLE DIAMONDS name and mark, that mark has become closely associated with the Complainant as its source. The Complainant also asserts that the mark has achieved fame, and is entitled to broad protection from infringement and dilution. The Complainant did not provide examples of any of the extensive publicity which it says has been given to its mark, but the Respondent has not directly challenged the claims of extensive publicity.

On March 2, 1993, the Complainant registered ARGYLE DIAMONDS as a service mark in the United States Patent and Trademark Office, under US registration number 1,755,860, for use with "distributorships featuring diamonds and providing advice concerning the quality, color, size, and cost of diamonds" ("the Service Mark"). The Complainant has produced a printout showing details of that registration, and the fact of the registration is not disputed by the Respondent.

From the Respondent’s response, it appears that the Complainant has also registered the word mark ARGYLE in the United States, the registration of that mark being effective from June 13, 1989. The application for the mark ARGYLE (for jewellery and precious stones, including cut and uncut diamonds for jewellery and industrial purposes; all in International Class 14) had been filed on November 18, 1988, with a "First Use in Commerce" date of October 29, 1987.

It appears from certain documents produced by the Respondent, including an article downloaded from the website at <Minesite.com>, that the Complainant is a subsidiary of Rio Tinto Plc, which is one of the world’s largest mining companies. Rio Tinto’s worldwide activities include mining a range of minerals around the world, including diamonds mined at the Argyle diamond mine in Western Australia. It appears that the diamond mine is located in a remote area of North Eastern Western Australia, near a man-made lake known as Lake Argyle.

The Van Daaz organization was established by Mr. Gad Zak, a Canadian businessman, in mid-1995. It is an online trader in diamonds, and a printout from the website at <vandaaz.com> describes the organization as "the ideal source to purchase your diamond: buy it loose or set in your wedding ring or your engagement ring, at our wholesale level diamond prices!".

As noted above, the Respondent registered the domain name on March 9, 1999. There appears to have been no use of the domain name at all, and it is not suggested by the Complainant that the domain name is linked, or routed to the Respondent’s website at <vandaaz.com>. The Complainant notes that Van Daaz promotes and sells diamonds and provides information and advice regarding diamonds. It is common ground that the Respondent does not have any trademark rights in either of the terms "Argyle Diamonds" or "Argyle-Diamonds".

The Complainant has produced a copy of a letter from the Respondent dated October 22, 2001. It is a letter written by Mr. Zak on Van-Daaz letterhead, apparently in response to a letter dated October 19, 2001, from the Complainant’s authorized representatives. The letter dated October 19, 2001, has not been produced in evidence by either party.

The Respondent’s October 22, 2001 letter accepted in "full faith" the Complainant’s assertion regarding the registration of the Service Mark, and advised that the Respondent did not contest it.

The October 22, 2001 letter from the Respondent went on to advise that, at the time of registration of the domain name, the relations between domain names and trademarks were not entirely clear or established. The letter went on to say: "Accordingly, the registration was made in good-faith, with the intention of using it, of course, only in a legitimate, legal and honorable manner." The Respondent’s letter suggested various possible legitimate uses it might have made of the domain name, including the authorized sale of Argyle – originating goods through the domain, and the bona fide dissemination of information. Thirdly, the Respondent suggested (as another possible legitimate use of the domain name of which it was aware at the time of registration) the use of the domain name for the creation of a "vanity" email address, for correspondence with a close circle of family and friends only. The Respondent emphasized in this letter that it had never entertained the idea of diluting or passing off and/or trading upon the Complainant’s goodwill, or of drawing commercial benefits from the domain name in an unauthorized manner. The Respondent also asserted that it had taken no steps to attempt to sell the domain name.

The letter went on to deny any intention to unfairly prevent the Complainant from having a clear web-presence through a domain name which would be similar or identical to the Service Mark or the Complainant’s business. The Respondent pointed to the fact that the Complainant already had <ArgyleDiamonds.com> registered as a domain name.

The Respondent concluded the letter of October 22, 2001, by advising that it might decide not to renew the domain name registration upon its expiry in March of 2003, if the Respondent had not made any use of the domain name by then. The Respondent offered to advise the Complainant or its representatives about its decision, and (presumably in the event of the Respondent electing not to renew the registration) to "streamline your gaining control over it in a seamless process".

The Complainant says that the Respondent has registered other domain names constituting legitimate trademarks belonging to others in the diamond industry. Specifically, the Respondent has registered several domain names containing the word "diavik" – <diavikdiamonds.info>, <diavik.info>, and <diavik-diamonds.info>. The Complainant says that "diavik" is a coined word, first developed to describe the Diavik Diamonds Project, an unincorporated joint venture between Diavik Diamond Mines Inc. and Aber Diamond Mines Limited, for the development of a diamond mine in the North West Territories of Canada. Diavik Diamond Mines Inc. is a wholly owned subsidiary of Rio Tinto Plc, and to that extent it is a corporation related to the Complainant. The Complainant says that the Diavik Diamonds Project has applied to register DIAVIK DIAMONDS as a trademark in both the United States and Canada, and that the Respondent has no legitimate interest in the name or phrase "Diavik Diamonds".

The Respondent has produced evidence that it applied to the United States Patent Office to register the trademark DIAVIK DIAMONDS in Class 14 of the Register, for "Diamonds, diamond jewellery". That application was made on May 25, 1995, and on May 26, 1995, the Respondent also applied to register DIAVIK DIAMONDS as a service mark in Class 35 of the Register, covering direct mail advertising, dissemination of advertising matter, electronic billboard advertising, and advertising agency services relating to the promotion of the diamond industry. The specification also covered advertising consulting services in the field of sales promotion advice, and wholesale and retail store services and marketing services, generally featuring diamonds and jewellery or marketing studies for the diamond industry.

From the material produced by the Respondent, it appears that both applications are still pending before the US Patent Office, and that formal opposition has been lodged on the application for the goods mark in Class 14.

The Respondent has produced WHOIS searches showing that it has registered a number of other diamond-related domain names. On June 7, 1999, it registered <absolute-diamonds.com>, and on March 4, 2000 it registered <celebrity-diamonds.com>. It also registered <back-lake-diamonds.com> on July 21, 1999. It says that "Back Lake" is a diamond production area in Canada.

The final matter to mention in the general narrative of factual background, is that the Respondent says that it has been working on "several business plans" which would involve the use of the domain name. It seems that the general idea (the business plans are said to be too commercially sensitive for the Respondent to have produced them for consideration by the Panel) involves the creation of a central internet portal, with links to web pages relating to specialty diamond lines. Those diamond lines might relate to the particular provenance of a diamond, or particular special features, branding or themes. Links to these specialty websites would spell out the contents of these specialty lines, and, as the Respondent puts it, these web pages "could be elected to be promoted also separately". The Respondent refers to its registration of the domain names <absolute.diamonds.com>, <celebrity-diamonds.com>, <backlakediamonds.com>, and <back-lake-diamonds.com>, as examples of domain names appropriate to the creation of such a system.

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [where the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [where the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) [where] by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Where, before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Where the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [Where the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the 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".

The Complainant relies on its March 2, 1993 United States registration of the Service Mark, and says that the domain name is clearly identical or confusingly similar to the Service Mark. The only difference is the use of a hyphen rather than a space between the words "Argyle" and "Diamonds", and the addition of the generic suffix ".com".

The Complainant refers to WIPO Case D99-0001 (World Wrestling Federation Entertainment, Inc. v Michael Bosman, where the WIPO Panel held that <worldwrestlingfederation.com>) was confusingly similar to the trademark WORLD WRESTLING FEDERATION (the only differences in that case being the spacing and the addition in the disputed domain name of the expression ".com").

The Complainant also alleges that the Respondent has no rights or legitimate interests in the domain name. It says that the Respondent is not a licensee of the Complainant, or otherwise authorized to use the Service Mark. It says that the term "Argyle Diamonds" is not the subject of any known trademark registration belonging to the Respondent, and that to the best of its knowledge the domain name is not a nickname for the Respondent, a mark for its products or services, or in any other way identified with or related to a legitimate interest of the Respondent.

The Complainant says that the Respondent is not actually using the domain name, but merely reserving it, and that it has made no demonstrable preparations to use the domain name or any corresponding name in connection with a bona fide offering of goods or services.

The Complainant also alleges that the Respondent has made misrepresentations to the Registrar during the registration process. At the core of this allegation, is the assertion that there is no company known as <argyle-diamonds.com>, and that the Respondent was not acting on behalf of any such company when it registered the domain name for its own use. The Complainant alleges that the Respondent violated the terms of the agreement with the Registrar when it identified the Registrant of the domain name as "Argyle-Diamonds.com c/o Van Daaz".

The Complainant submits that the domain name has been registered and is being used in bad faith. First, it asserts, "on information and belief", that the Respondent registered the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration either to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (see paragraph 4(b)(i) of the Policy).

Alternatively, the Complainant submits, again "on information and belief", that the Respondent registered the domain name at issue in an attempt to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and any products and services offered there (Policy, paragraph 4(b)(iv)).

The Complainant further submits that the Respondent has registered the domain name in order to prevent the Complainant from using the Service Mark in a corresponding domain name.

More generally, the Complainant refers to the WIPO case D2000-0003, Telstra Corporation Limited v Nuclear Marshmallows, in support of the submission that mere passive holding of a domain name may constitute bad faith "use" where the registrant has no legitimate interest in the trademarked term constituting the domain name.

The Complainant makes the following specific submissions:

(i) The Respondent has no trademark registrations for the terms "Argyle Diamonds" or "Argyle-Diamonds". Nor has the Respondent used either term as a mark for any goods or services. It has not demonstrated any legitimate rights in those names.

(ii) The Respondent runs an on-line diamond "etailing" business through the website at <vandaaz.com>, and the Respondent may use the domain name in connection with the sale or advertisement of diamonds or the provision of diamond-related services and information (notwithstanding that it has no legitimate trademark rights to the terms "Argyle Diamonds" or "Argyle-Diamonds").

(iii) The various contemplated uses of the domain name mentioned by the Respondent in the letter of October 22, 2001, would all violate the Complainant’s rights in the Service Mark. It says that the Respondent has never been authorized to sell "Argyle-originating" goods or services, and that even if it had been so authorized, that would not have entitled it to register the domain name. The Complainant submits that, given that its registration of the Service Mark is for "distributorships featuring diamonds", it is difficult to see how the Respondent could be entitled to own and use the domain name without a distributorship license from the Complainant. Absent such a license, the Complainant submits that the Respondent had no right to use the domain name, and no reason to register it.

(iv) The Complainant submits that any use of the domain name for the dissemination of information would plainly be an infringement of the Service Mark registration for use in connection with "providing advice concerning the quality, color, size, and cost of diamonds". The Complainant submits that the Respondent cannot in those circumstances credibly claim that its intended use of the domain name for the "dissemination of information" was in good faith and not intended to trade on the Complainant’s reputation and the fame and goodwill of the Service Mark.

(v) With reference to the possible use of the domain name for the creation of a "vanity" email address, the Complainant submits that any "vanity" product is intrinsically valueless, but desirable merely because it appeals to the vanity or conceit of the purchaser. Thus, the Complainant argues, a vanity email address must necessarily trade on the fame and desirability of the domain name in order to make it desirable. Given the Complainant’s pre-existing rights in the Service Mark, the Respondent cannot credibly claim that it intended to use the domain name for vanity e-mail and at the same time deny that it intended to trade upon the goodwill of the Service Mark.

(vi) The Complainant refers to the Respondent’s registration of the various "diavik" domain names, and says that "diavik" is a coined word which is the subject of trademark registration applications in both the United States and Canada. It submits that the Respondent has no legitimate interest in the name or phrase "Diavik Diamonds". The Complainant refers to the Respondent’s alleged "pattern of registering domain names corresponding to the trade names and marks of legitimate entities in the diamond industry", as enough, by itself, to establish that the Respondent registered the domain names in an attempt to drive internet traffic, particularly those interested in diamonds, to its website.

(vii) The Complainant submits that the Respondent has refused to transfer the domain name to the Complainant, and has indicated that it may use the domain name in commerce despite having no legitimate interest in the term "Argyle Diamonds". In those circumstances, the Complainant submits that the Respondent’s mere registration of the domain name is in bad faith.

In its response, the Respondent attacks the validity of the Service Mark. The Respondent says that both the Service Mark and the earlier-registered mark ARGYLE were purely descriptive, and that the Complainant acted in bad faith in failing to disclose all relevant matters to the US Patent Office. The Respondent also alleges that the trademark registration documents relevant to the mark ARGYLE, show that the Complainant had only used the mark in commerce 1 year and 19 days prior to the application being lodged in the United States, and that that period could not have been long enough for the Complainant to establish sufficient use of the trademark for it to have become distinctive of the Complainant’s goods or services.

The Complainant denies the allegation that the domain name is confusingly similar to the Service Mark. Broadly put, the Respondent argues that this is an attempt by the Complainant to obtain protection for a term which is no more than a geographical descriptor of diamonds coming from the Argyle region of Western Australia. The Respondent also says that it has made no use of the domain name which has caused the Complainant any loss or damage, or hurt the Complainant’s goodwill.

The Respondent repeats the argument that the Service Mark is purely descriptive, and that no-one can claim proprietary rights in it. Secondly, the Respondent says that the registration of the domain name itself confers any necessary rights, and that it has a legitimate "interest" as a participant in the diamond trade. It says that the Complainant’s allegation that the domain name is not a mark for any of the Respondent’s goods or services is patently false, and goes on to submit that it deals in diamonds without restriction as to their origin. The Respondent says that it may wish to concentrate its retail efforts, at any point in time, on diamonds of one provenance or another, and that it has registered several diamond-trade pertinent domain names in anticipation of possible uses and future developments and growth in business format, internet commerce, and the diamond trade generally. It refers to the commercially sensitive business plans mentioned earlier, and the idea of a central portal with links to web pages dealing with specialty diamond lines.

The Respondent denies any misrepresentation in the process of registering the domain name. It submits that the NSI registration agreement referred to the entry of the name of the appropriate "organization" as registrant, and did not call for the entry of the name of a corporation or other legal entity as registrant.

The Respondent denies that it has ever had any intention to transfer the domain name for a consideration in excess of its out-of-pocket expenses, and refers to a telephone discussion with the Complainant’s authorized representative in which it says that the representative was told that if the Respondent had not implemented bona fide plans for the legal use of the domain name by the expiry date in March 2003, it would transfer the domain name to the Complainant. It notes that that offer was conditional on the Respondent having found no funding and/or legal way to use the domain name which the Respondent considered important and useful in its trade. The Respondent also submits that it is not its business to deal in or sell domain names, or to "create strife … between itself and its potential suppliers or associates of suppliers". It asserts that it has never sought monetary gain through the transfer of the domain name.

The Respondent acknowledges that it has not made any use of the domain name, but says that it has been "studying the feasibility" of some sort of bona fide offering of goods and services in association with the domain name, and also other possible uses of the domain name, "bearing in mind its merely descriptive nature and the shady circumstances of registering the [Service Mark]".

The Respondent deals with each of the Complainant’s submissions relating to the letter of October 22, 2001. First, it says that it is not inevitable that the Complainant will refuse to give it a license to use the domain name, once it unveils its plans for the "Central Portal" idea (assuming, that is, that any license is required). As for having a legitimate reason to register, it points to the possibility of obtaining a license from the Complainant in the future, and also to the other uses mentioned in the October 22, 2001 letter (bona fide dissemination of information on a not-for-profit basis, and the establishment of a "vanity" email address).

On the "bona fide dissemination" point, the Respondent submits that the suggestion (in the letter of October 22, 2001) that the domain name might be used in association with the bona fide, not-for-profit, dissemination of knowledge and appreciation of diamonds, was only an idea of something that could be appropriate for people committed to the diamond trade and its theory (including the Respondent). The Respondent says that such dissemination of information on a not-for-profit basis is a freedom of speech with which the Policy should not interfere.

On the issue of "vanity" emails referred to in the October 22, 2001 letter, the Respondent submits that trading off the goodwill of a desirable name is not necessarily inherent in the use of a vanity email address. The Respondent submits that humor is also an important component of such addresses.

In response to the Complainant’s allegations that the Respondent has engaged in a pattern of "preventing" use associated with the Respondent’s registration of the various "diavik" registrations, the Respondent points to its own 1995 applications to the US Patent Office to register "diavik" trade and service marks. It submits also that it has a trademark application pending in Canada, but it has not produced any evidence of that. The Respondent submits that the Complainant has acted in bad faith, using this administrative proceeding as a "bait", to draw out the Respondent’s position on ownership of the "diavik" marks, in advance of the trademark opposition proceedings which are pending in the US Patent Office.

Alternatively, the Respondent submits that there is no evidence of any "pattern" of preventing registrations, such as would make paragraph 4(b)(ii) of the Policy applicable.

Generally, the Respondent says that its failure to use the domain name to date does not strengthen the Complainant’s case under the Policy. It also submits that it has set out in its Response sufficient by way of explanation of its failure to use the domain name.

Finally, the Respondent says (in answer to any suggestion that the domain name might have been registered primarily for the purpose of disrupting the business of a competitor (Policy paragraph 4(b)(iii)), that it and the Complainant are not true competitors.

Throughout its Response, the Respondent directly attributes bad faith to the Complainant and/or its representatives in bringing this administrative proceeding.

After the Respondent’s response had been received, the Complainant filed an application for leave to reply. The Respondent countered with a motion to dismiss that application.

The Rules do not confer any right on the parties to file supplementary statements, although such statements may be provided if the Panel calls for them. In certain circumstances, considerations of natural justice may require that a Complainant should have a right of reply – for example when new matters have arisen since the Complaint was filed, or a Complainant has become aware of material which could not with reasonable diligence have been discovered before the Complaint was filed (see for example WIPO cases D2000-0703 – Grove Broadcasting Co. Ltd v Telesystems Communications Limited, and D2000-1490 – Creo ProductsInc. v Website In Development).

A further situation where considerations of natural justice may require a complainant to be given a right of reply, is where allegations of bad faith or Reverse Domain Name Hijacking are made in a respondent’s reply. In this case, the Respondent has made allegations of bad faith, primarily by alleging that the Complainant acted improperly in obtaining the United States registration of the Service Mark.

Administrative proceedings under the Policy are intended to provide a relatively inexpensive and expedient means of resolving domain name disputes. Unless the justice of the case clearly calls for it, further supplemental filings are generally to be discouraged.

The Panel considers that it would be inappropriate for it to embark on an enquiry into the validity of the Service Mark in this case. In WIPO case D2000-0127 (Busy Body, Inc. v Fitness Outlet Inc.), a case concerned with the registration of the domain name <efitnesswarehouse.com> in the face of the Complainant’s registered mark FITNESS WAREHOUSE, the presiding Panelist noted at footnote 3 of his decision : "[t]he Panel will not inquire behind the presumption of validity conferred under U.S. law by the decision of the U.S.P.T.O. to register the Complainant’s service marks".

The Panel considers that similar considerations apply in this case. The Complainant is entitled to the presumption of validity conferred by the registration of the Service Mark, and if there is to be any challenge to that registration the appropriate forum is a court of competent jurisdiction, and not a panel dealing with (necessarily) abbreviated information supplied by the parties in an administrative proceeding such as this.

In those circumstances, the Panel does not believe the Complainant is prejudiced by the Respondent’s allegations going to the validity of the registration of the Service Mark.

To the extent that other allegations of bad faith are included in the Response, the Panel takes the view that they are not sufficiently substantial, or sufficiently supported by the evidence, to make any right of reply necessary or appropriate. There being no other apparent grounds for receiving a reply, the Panel therefore declines to admit or consider either of the supplemental filings submitted by the parties.

This part of the Complaint can be dealt with briefly. The Panel accepts the Complainant’s submission that the domain name is confusingly similar to the Service Mark, and that the Complainant has rights in the Service Mark. The generic suffix ".com" does not affect that question, and the only matter which makes the domain name different from the service mark is the use of a hyphen between the words "Argyle" and "Diamonds" (as opposed to a space between those words in the Service Mark). That is an insignificant difference, and the Panel has no difficulty in finding that the domain name is confusingly similar to the Service Mark (in which the Complainant has rights).

The Respondent in its Response has gone to considerable lengths in attempting to persuade the Panel that the Service Mark consists of purely descriptive or generic words, in which the Complainant can have no legitimate rights. As indicated above, the Panel is not prepared to entertain that sort of inquiry. The only relevant matter which the Panel believes it can consider under paragraph 4(a)(i) of the Policy is whether or not the Complainant has a legal right in the Service Mark, and quite obviously it does. Indeed, the Respondent does not suggest otherwise. Whether or not the Complainant should have beengiven the particular right which forms the basis for its Complaint under paragraph 4(a)(i) of the Policy, is not a matter with which the Panel can be concerned in this administrative proceeding. Still less is it for a Panel dealing with an administrative proceeding such as this to inquire into procedural matters relating to the obtaining of the trademark or service mark on which a complainant relies. Those are matters for the Courts in the relevant jurisdiction or jurisdictions where the marks are registered.

Finally, it is not relevant to paragraph 4(a)(i) of the Policy that the domain name may not have been used, or that the Complainant may not have suffered any loss or damage. The only issues under paragraph 4(a)(i) are whether the Complainant has rights in a trademark or service mark, and whether the domain name in issue is identical or confusingly similar to that trademark or service mark.

Paragraph 4(a)(ii) of the Policy - whether Respondent has any rights or legitimate interests in respect of the domain name

An interesting feature of the case is that, 2 years and 8 months after the domain name was registered, it has still never been used. It is not linked to any website or other on-line presence.

The Respondent has no license from the Complainant, and it has not been authorized to use the Service Mark. It appears that it has no business or other relationship with the Complainant. Nor does the Respondent claim any trademark or service mark rights in the domain name – on the contrary, it argues that the words "Argyle Diamonds" are purely descriptive, and that no-one can claim proprietary rights in them.

The Respondent generally asserts that its "right" is the general right everyone has to use a purely descriptive expression. Certainly there has been at least one WIPO decision where a complainant with a "weak" mark has been denied the benefit of relief under the Policy - see Eauto, L.L.C. v Eauto Parts, WIPO case D2000-0096, a case concerned with the domain name <eautoparts.com>. However the respondent in that case was actually operating an auto parts business, and the disputed domain name had been linked to a website associated with that business. In this case, the Respondent has not created any such web link, and the domain name has never been used. In the meantime, the Service Mark has been registered and used for approximately 8 years, and the Complainant is entitled to the benefit of the presumption that the Service Mark has become distinctive of its services. In those circumstances, the Panel takes the view that the Respondent does not enjoy a general, unrestricted right to incorporate the Service Mark (or any colorable imitation of it) into a domain name.

Secondly, the Respondent submits that its "right" is that given by the registration of the domain name itself. That submission could not possibly be right – every cybersquatter would have "rights" under paragraph 4(a)(ii) if that were correct, and there would be no room for the Policy to operate at all.

Thirdly, the Respondent claims a legitimate "interest", as in its on-line diamond trading endeavors it may wish at some point in time to concentrate on diamonds of particular provenance, or from a particular area (such as the Lake Argyle area of Western Australia).

That submission is also rejected. The general possibility that a respondent might wish to make some use of a domain name in future, is not enough to establish a "right" or "legitimate interest" for the purposes of paragraph 4(a)(ii) of the Policy. What is required under paragraph 4(a)(ii) is some existing right or interest which sets the Respondent apart from the general public, as someone having a specific claim to the use of the disputed domain name. If one looks at the examples given in paragraph 4(c) of the Policy, each of them describes a situation where the Respondent would have some claim in priority to others, (subparagraphs (i) and (iii) are concerned with actual use of the domain name by the respondent (or at least demonstrable preparations to use it), while subparagraph (ii) is concerned with the situation where the respondent (or his or her business) is commonly known by the domain name).

The Respondent refers in its response to (undisclosed) business plans which involve the general idea of a website with links to particular web pages dealing with specialty diamond lines. The Respondent says that the links would spell out the lines’ contents, "and could be elected to be promoted also separately". The Panel infers that this idea contemplates the domain name being linked directly to one of these web pages, which would deal with diamonds from the Lake Argyle area of Western Australia.

This "central portal" / specialty web pages idea was not mentioned at all in the Respondent’s letter sent to the Complainant’s representatives on October 22, 2001. No business plans or similar documents have been produced – they are said to be too sensitive to be disclosed. Nor have any statements been supplied (notarized or otherwise) from other individuals corroborating the existence and general nature of these "business plans".

However, assuming such ‘plans’ exist and that their general nature is as the Respondent has described, it is apparent from the Response that this general idea has not reached the stage of "demonstrable preparations" for the use of the domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). In its Response, the Respondent refers to a telephone discussion in which it indicated that it might be prepared to co-operate in allowing the Complainant to register the domain name when it expires in March of 2003. That offer is said to be conditional on the Respondent having found no funding and/or legal way to use the domain name which the Respondent considers important and useful in its trade. (Response, page 10).

The whole tenor of the Response is that the Respondent says that it is not yet committed to any particular use of the domain name – it says that it is still holding out the possibility of use of the domain name to create "vanity" emails or not-for-profit dissemination of information relating to diamonds.

For the reasons set out in this part of this decision, the Panel finds that the Respondent has no right or legitimate interest in respect of the domain name.

The Panel rejects the Complainant’s submission that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (Policy 4(b)(i)). The domain name was registered as long ago as March 1999, but there has been no attempt to sell it to the Complainant. Nor is there any evidence of any attempt to sell it to a competitor of the Complainant.

The Complainant also relies on paragraph 4(b)(iv) of the Policy, but that subparagraph cannot apply in this case. Paragraph 4(b)(iv) of the Policy applies only to a domain name which has been used. In this case the Respondent has made no use of the domain name.

The Complainant further alleges that the registration was acquired in order to prevent the Complainant from reflecting the service mark in a corresponding domain name, particularly if there is a pattern of such conduct (Complainant’s emphasis). In fact, a pattern of conduct is a necessary component of the species of bad faith registration and use described in paragraph 4(b)(ii) of the Policy. The Complainant points to the Respondent’s registration of the various "diavik" domain names, in the face of the trade name and (unregistered) trademarks which the Complainant says are owned by the Diavik Mining Project Joint Venture. The Respondent for its part claims that it has rights in the mark DIAVIK DIAMONDS, and it has produced extracts from the US Patent Office Trade Mark Register showing that it made applications to register that mark as a trademark and service mark in May of 1995. It appears from the documents produced by the Respondent that it did not claim any prior use of the mark, and the Respondent has elected not to produce any evidence in support of its claim to common law ownership of the mark (or other entitlement to register it as a trademark or service mark), beyond evidence of the applications themselves. It appears that trademark opposition proceedings are pending on the Respondent’s application to register the goods mark, while the service mark application has not yet been published for opposition.

The Respondent’s evidence on this issue is incomplete and quite unsatisfactory, but the onus of proof of circumstances falling within paragraph 4(b)(ii) of the Policy remains with the Complainant. In this case, the Complainant’s evidence does not directly address the Respondent’s trademark and service mark applications, or the Respondent’s claim that it enjoys rights in the DIAVIK DIAMONDS mark. In those circumstances, the Panel is not satisfied that the Complainant has proved a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy.

While the Panel finds that there is insufficient proof of any of the specific grounds set out in paragraph 4(b) of the Policy, that is not the end of the matter. The subparagraphs of paragraph 4(b) of the Policy are no more than examples of particular circumstances which, if proved, might constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. The Panel is entitled to look at the totality of the evidence and assess whether, in all the circumstances of the case, the domain name has been registered, and is being used, in bad faith.

The approach to be followed in cases where there has been no actual use of a domain name, is helpfully discussed in cases such as WIPO Cases D2000-0003 -Telstra Corporation Limited v Nuclear Marshmallows, and D2000-1074 -Sony Kabushiki Kaisha v sony.net. Nuclear Marshmallows was a case where there had been no use made of the domain name in issue, and the Panel had to consider whether there could yet be registration and use of the domain name in bad faith, under paragraph 4(a)(iii) of the Policy.

The Panel in that case noted that the first three circumstances listed in paragraph 4(b) of the Policy as examples of bad faith registration and use, are in fact circumstances describing the respondent’s intention at the time of registration. Only the fourth circumstance (paragraph 4(b)(iv)) requires actual use of the domain name by the respondent. The Panel in Nuclear Marshmallows concluded that inaction may therefore come within the concept of "using in bad faith". What the Complainant must prove is that the respondent registered the domain name in bad faith, and that the respondent has since been acting in bad faith with regard to the domain name.

In what circumstances will a respondent be held to be acting in bad faith where there has been no actual use made of a domain name? The Panel in Nuclear Marshmallows expressed the view that it is not possible to answer that question in the abstract. One must look at the particular circumstances of each case for indicators of bad faith on the respondent’s part. A central question will often be whether it is possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent, which would not be an illegitimate use (e.g. a passing off, infringement of consumer protection legislation, or infringement of the Complainant’s rights under any trademark or service mark).

In the sony.net case, the Panel said:

"In the view of the Panel, while inaction should never of itself constitute evidence of registration and use in bad faith, inaction may do so where the Domain Name comprises a name which can only sensibly refer to the Complainant, where there is no obvious possible justification for the selection of the Domain Name, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Name, and where it is difficult to conceive of any use of the Domain Name which would not be likely to cause confusion of some kind."

In the overall circumstances of this case, the Panel is of the view that the domain name wasregistered, and is being used, in bad faith.

The Panel has already found that the Respondent had no rights or legitimate interests in respect of the domain name, and it appears on the evidence that the Respondent was aware of the Complainant’s rights when it registered the domain name. In the letter of October 22, 2001, the Respondent said:

If the Respondent had been unaware of the Service Mark at the time it registered the domain name, one would have expected it to take that position in the October 22, 2001 letter. It did not, and the Panel infers that the Respondent was aware of the Complainant’s rights.

The Respondent said in the letter of October 22, 2001, that it was aware of various legitimate uses that might be made of the domain name, including use in connection with the authorized sale of Argyle-originating goods. The Respondent did not say that it intended to make that use of the domain name at the time it registered the domain name, and in the period of approximately 2 years and 8 months since the domain name was registered it has made no approach to the Complainant for any such authority. In those circumstances, the Panel finds that the Respondent did not have any intention, at the time it registered the domain name, to seek authorization from the Complainant. Similarly, the Respondent has not in that period made any use of the domain name in connection with the other possibly legitimate uses referred to in the October 22 letter, namely the use of the domain name in connection with a "vanity" email address, or the bona fide dissemination of information.

In its response, the Respondent says (page 11 of the Response): "Van-Daaz, indeed, has not made any commercial use of the domain, but, as explained, has been studying the feasibility of such and other uses for the domain (see below), bearing in mind its merely descriptive nature and the shady circumstances of registering the Trademark and Service Mark in question in the US."

It appears from that statement that the Respondent itself regards the "feasibility" of the various theoretically possible uses of the domain name, as being linked to what the Respondent describes as the "merely descriptive" nature of the domain name. In other words, the feasibility of the various potential uses is linked to the argument that the registration of the Service Mark is invalid. As indicated above, that is an argument which the Panel is not prepared to entertain in this administrative proceeding.

The Panel does not regard the Respondent’s submissions relating to the "vanity email for a close circle of family and friends" suggestion, as plausible. The Panel cannot see why one would choose the domain name for such a purpose, when there are millions of other available choices. Certainly humor would not be one of the domain name’s attractions as a potential email address.

Nor do the Respondent’s submissions directed to the "not-for-profit dissemination of information" possibility seem plausible. The Respondent is quite clearly running an online business trading in diamonds, and it appears to the Panel that, in reality, any dissemination of information about diamonds would be inseparable from the Respondent’s profit-motivated business activities. Particularly in circumstances where the Respondent has said "….the offer to relinquish the domain in the future … is conditional upon having found no funding and/or legal way to use this domain which Respondent consider important and useful in its trade" (page 10 of the Response), the Panel cannot see why the Respondent would contemplate creating a website which was not linked in some way with the Respondent or its principals, or with a website associated with one or more of them, and which would be an adjunct to the Respondent’s trading activities.

It appears that the Respondent itself has not been able to nominate any "plausible actual or contemplated active use of the domain name" (NuclearMarshmallows). It has not made any use of the domain name for 2 years and 8 months, and it is apparent from the Response that one of the reasons for that is that it has not been able to find a legal way to use the domain name in its trade (Response, page 10).

Given the fact that the Service Mark has been registered and used for some 8 years, the Panel also finds it difficult to conceive of any use of the domain name which would not be likely to cause confusion of some kind (sony.net). As the Respondent operates in the diamond trading business, the likelihood of internet visitors assuming that the domain was sponsored or in some way affiliated with the Complainant would be high.

The Service Mark has been registered since 1993, and the Panel has found that the Respondent was aware of the Complainant’s rights when the domain name was registered. The Respondent does not have any rights or legitimate interests in respect of the domain name, and it has not been able to point to any plausible use of the domain name which would not be likely to cause confusion. Nor is any such plausible use apparent to the Panel. In those circumstances, the Panel finds that the domain name was registered in bad faith, and is being used in bad faith by the Respondent.

The Panel has already held that it would not be appropriate for it to embark on a review of the decision of the United States Patent Office to grant the Service Mark registration to the Complainant, or to review any of the procedural steps involved in obtaining that registration.

The Respondent makes various other allegations of bad faith against the Complainant, including the allegation that the reference to the "diavik" domain name registrations was made for ulterior purposes (specifically "obtaining the Panel’s stamp of approval over an unregistered and inferior claim for the Diavik Mark by an affiliate of the Complainant").

The Respondent has itself failed to produce any evidence (beyond the United States applications themselves) in support of its claimed entitlement to registration of the DIAVIK DIAMONDS mark in the United States or Canada, and the Panel is not in any position to express a view on the question of ownership of that mark. Neither party produced sufficient evidence for the Panel to do so.

The Complainant has failed to prove the specific bad faith circumstance described in paragraph 4(b)(ii) of the Policy. It has also failed to prove some other specific allegations made in the Complaint. However that is a long way short of establishing that the Complainant has acted in bad faith. There is no basis for the Panel to make any finding of bad faith on the part of the Complainant, and the Panel declines to do so.

For the foregoing reasons, the Panel decides that:

(a) The Respondent’s domain name is confusingly similar to the ARGYLE DIAMONDS mark to which the Complainant has rights.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

(c) The Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <argyle-diamonds.com> be transferred to the Complainant.

Warwick Alexander Smith
Sole Panelist

Dated: December 31, 2001