The Respondent is Guangzhou Mickey Weinstock & Co. Diamonds Manufacturing Ltd of Guangdong, China, represented by GG&W Gunzburg Cornette Advocaten, Belgium.

2. The Domain Names and Registrar

The disputed domain names <lovediamond.com>, <lovediamond.net>, <thelovediamond.com> and <thelovediamond.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2009. On January 16, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On January 16, 2009, Network Solutions, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2009. The Response was filed with the Center on February 18, 2009. On February 19, 2009 the Complainant sought leave to file an additional submission.

The Center appointed Alan L. Limbury, Yves Van Couter and Charles Gielen as panelists in this matter on March 26, 2009. The Panel finds that it was properly constituted. Each member of 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.

On April 2, 2009 the Panel ordered as follows, pursuant to the Rules, paragraph 12:

“The Panel is prepared to receive an additional submission from the Complainant addressing and confined to proposed points (i) to (iii) in its email dated 19.02.09 to the Center. Any such additional submission should be received by the Center within one week of the Complainant being notified of this. Respondent shall then have 7 days from the date of such submission by Complainant to file any reply confined to addressing matters raised by Complainant in any response to this Order. The time for the Panel's decision is extended by two weeks.”

On April 8, 2009 the Complainant filed an additional submission in compliance with the above Order. On April 15, 2009 the Respondent filed a Reply in compliance with the Order.

On April 24, 2009 the Panel extended the due date for its decision until May 10, 2009.

4. Factual Background

The “Hearts and Arrows” diamond is a diamond cut in a special way, characterized by the form of eight hearts and eight arrows. The Managing Director of the Respondent, (referred to as “the pleading party” in the Response, p.4), Mr. Weinstock is an authority so far as the “Hearts and Arrows” diamond is concerned.

In 1997 Mr. Weinstock and Mr. Chan Boon Yong, Director of the Complainant, entered into a collaboration to market “Hearts and Arrows” diamonds under the name “The Love Diamond”. Mr. Chan Boon Yong came up with that name. The vehicle for their collaboration was called The Love Diamond Company, with headquarters in Antwerp and distribution offices in the United States of America, Hong Kong, SAR of China, Malaysia and Europe. Manufacture was done by a Belgian company, Mickey Weinstock & Co. NV, the Managing Director of which is also Mr. Weinstock (Response, Exhibit 28).

The Complainant became the registered proprietor in several countries of the following figurative trade mark (word and device) for goods in class 14:

(“the mark”).

In particular, the Complainant registered the mark in Malaysia (No. 98003392) on March 19, 1998 for diamonds; in the Benelux (No. 648679) on February 26, 1999 for diamonds and precious stones; in the European Community (CTM No. 1641893) on May 5, 2000 for diamonds and in Hong Kong (No. B05999) on May 12, 2000 for diamonds.

The disputed domain names were first registered in 2000 and 2001 by Mickey Weinstock & Co. NV, which was licensed by the Complainant to use the mark. Mr. Weinstock was listed as the technical contact for the <thelovediamond.com>, <lovediamond.com> and <lovediamond.net> domain names.

Since March, 2007 there has been a dispute between the Complainant and Mickey Weinstock & Co. NV. By letter dated June 21, 2007 addressed to Mickey Weinstock & Co. NV, for the attention of Mr. Weinstock, the Complainant sought undertakings that Mickey Weinstock & Co. NV would cease use of the mark and would assign the domain names to the Complainant.

Following further unsuccessful attempts to obtain transfer of the domain names, the Complainant initiated court proceedings in Belgium on April 29, 2008 against Mickey Weinstock & Co. NV, seeking inter alia a court order for their transfer. On December 30, 2008 the court found Mickey Weinstock & Co. NV to be infringing the mark but dismissed the application for the transfer of the disputed domain names on the ground that they did not belong to Mickey Weinstock & Co. NV. An appeal against the finding of trademark infringement by Mickey Weinstock & Co. NV is pending before the Court of Appeal in Antwerp.

The reason why the domain names no longer belonged to Mickey Weinstock & Co. NV was because that company had transferred them to the Respondent, Guangzhou Mickey Weinstock & Co. Diamonds Manufacturing Ltd. The domain name <thelovediamond.com> and <thelovediamond.net> transferred on or about November 19, 2007 and the domain names the <lovediamond.com>, <lovediamond.net> were transferred on or about April 21, 2008.

Under the <thelovediamond.com>, <thelovediamond.net> and <lovediamond.net> domain names the Respondent hosted a website displaying the mark in connection with diamonds and referring to “The Love Diamond Company Guangzhou, China”. The <lovediamond.com> domain name leads to a portal website with links to the products of competitors of the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant says that the domain names are identical or confusingly similar to the mark and that the graphical elements of the mark need not be considered when assessing identity or confusing similarity (citing Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 and EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names nor in the mark and is not licensed by the Complainant to use them.

The Complainant denies that the transfer of the disputed domain names to the Respondent took place in consultation with the Complainant. It says it was unaware of the transfers until after it commenced the Belgian court proceedings. It says the domain names were registered by the Respondent and are being used in bad faith in that they were acquired collusively from the Complainant's former licensee so as to avoid an adverse court order in the Belgian proceedings (citing Hebdomag Inc. v. Illuminaty Marketing, WIPO Cases No. D2001-0206 and Planeta de Agostini, Profesional y Formación, S.L. v. Eduardo Perez Orue, WIPO Case No. D2006-0036). It further contends, that the domain names were registered by or transferred to the Respondent in order to prevent the Complainant from reflecting its mark in a corresponding domain name, a pattern of such conduct being established by the fact that four domain names were involved. Registration of the domain names in consultation with the Complainant's former licensee clearly shows registration primarily for the purpose of disrupting the business of a competitor. Finally, by using the domain names, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of the products on the Respondent's website.

B. Respondent

The Respondent submits that the Panel has no international jurisdiction and that this administrative proceeding should be dismissed under the Rules, paragraph 18(a). The Respondent points out that the claim for transfer of the domain names was dismissed by the Belgian court and, not being the subject of any appeal, is “res judicata” notwithstanding that the Respondent was not a party to those proceedings (citing Paul McMann v. J McEachern, WIPO Case No. D2007-1597 and Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201). Panels declare themselves to be not competent or reject the complaint when the domain name dispute falls within a wider trademark dispute and an extensive account of the facts cannot be reduced to simple cybersquatting (citing CNA Financial Corporation & Allstate Insurance Company v. Insurance Services Plus, Inc.,WIPO Case No. D2000-0955, Chantelle v. Marvin Anhalt, WIPO Case No. D2001-1181, Nintendo of America Inc. v. Alex Jones, WIPO Case No. D2000-0998, Knipping Kozijnen B.V. v. R.T.P. Hanssen, WIPO Case No. D2006-0622, Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 and Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006).

The Respondent says no distinctiveness can be ascribed to the name “The Love Diamond” and that the domain names are not identical or confusingly similar to the mark, having borrowed only the (descriptive) words of the mark, not the graphic elements (citing Hotels Unis de France v. Christopher Dent / Exclusivehotel.com, WIPO Case No. D2005-1194).

As to legitimacy, the Respondent says that in 2004 the Complainant licensed use of the mark for ten years to a Hong Kong company, Chow Sang Sang Jewellery Company Limited, for the sale of diamonds in Hong Kong, SAR of China, the People's Republic of China, Taiwan, province of China and Macau. This licence remains in force.

Chow Sang Sang Jewellery Company Limited forms part of and is under the control of Chow Sang Sang Holdings International Limited (“Chow Sang Sang”), an international sightholder, entitled to purchase rough diamonds from the Diamond Trading Company (De Beers Group). The Respondent is a subsidiary of Chow Sang Sang. In view of his special expertise, Mr. Weinstock has a special place within Chow Sang Sang as far as the sale and marketing of “The Love Diamond” is concerned. As a subsidiary of Chow Sang Sang, the Respondent has a legitimate right to the disputed domain names, in view of the exclusive licensing agreement between the Complainant and Chow Sang Sang.

The Respondent says that, within the framework of the licensing rights that the Complainant had awarded at the time and in consultation with the Complainant, Mickey Weinstock & Co. NV transferred the domain names to Chow Sang Sang so that the latter could optimally carry out the licensing agreement. Chow Sang Sang has every interest in being able to conduct the promotion of “The Love Diamond” as extensively as possible. Given that, Mickey Weinstock & Co. NV transferred the domain names to the Respondent, a company over which Chow Sang Sang has full control. Under the licence agreement, Chow Sang Sang has the obligation to promote “The Love Diamond”. Moreover, the licence agreement does not prohibit Chow Sang Sang from registering “The Love Diamond” domain names, so that the Respondent, a subsidiary of Chow Sang Sang, can register these domain names.

In all respects, “The Love Diamond” diamonds are actually sold via the Chow Sang Sang group and the registration of the domain names contributes to the sales (citing Celebrity Signatures International, Inc. v. Hera's Incorporated Iris Linder, WIPO Cases No. D2002-0936, Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 and Urbani Tartufi s.n.c. v. Rosario's Epicureo Ltd., WIPO Case No. D2003-0081).

The Respondent denies bad faith, saying that originally, Mickey Weinstock & Co. NV had, within the framework of the partnership, registered and then used the domain names for years with the approval and knowledge of the Complainant. It transferred them to the Respondent, a company which also has a lawful interest in those domain names. The Respondent naturally has the intention of optimally using all relevant domain names in support of the sale of “The Love Diamond”.

The <thelovediamond.net> website is operational and refers to both Chow Sang Sang and the Complainant. The Respondent intends further to develop this website for the sale of “The Love Diamond” by the Chow Sang Sang Group. The remaining domain names have been put on “hold” by the Registrar and are therefore not accessible to the Respondent, which intends to adapt them identically to the <thelovediamond.net> website. The hyperlinks on the <lovediamond.com> website were placed there by the Registrar without any instructions from the Respondent, which has received no remuneration from them and cannot be held liable for this.

Since the domain names are/will be all used for the sale of “The Love Diamond” and since there are references to Chow Sang Sang and the Complainant on the website, there is no question of any bad faith.

The cases cited by the Complainant all relate to the transfer of domain names to an entity which has no interest in holding them. That is not the present situation.

As to the Policy, paragraph 4(b)(ii), there is no cybersquatting pattern present here. The Policy, paragraph 4(b)(iii) does not apply since the Respondent is a licence holder of “The Love Diamond” via the Chow Sang Sang group. Sales of “The Love Diamond” are promoted by means of the domain names. This does not frustrate the Complainant's business but rather helps it. The Policy paragraph 4(b)(iv) does not apply because the websites are/will be exclusively devoted to “The Love Diamond”. Visitors are absolutely not diverted to websites of the Complainant's competitors (citing the Adaptive Molecular Technologies, Inc Case, supra).

The Registrar is exclusively responsible for the fact that hyperlinks to external websites are now found at the domain name <lovediamond.com>.

Further, the Respondent is indeed the manufacturer of “The Love Diamond” diamonds. The Respondent cuts and sells “Hearts and Arrows” diamonds which are then – with the knowledge and approval of the Complainant, resold under the name “The Love Diamond”.

Finally, the Belgian court was aware of the Chow Sang Sang licence and did not uphold any bad faith on the part of the Respondent.

The Respondent seeks a finding of Reverse Domain Name Hijacking on the grounds that the content of the Belgian proceedings has been purposefully wrongly presented and the existence of the Chow Sang Sang licence has been concealed. The Complainant knows (at the very least via the Belgian proceedings) that the Respondent is part of Chow Sang Sang and knows that the Respondent therefore also has a legitimate interest in the domain names.

C. Supplementary submissions

Complainant

The Panel gave leave to the Complainant to file an additional submission addressing the following matters:

(i) the past relationship between the Complainant and the Respondent;

(ii) the extent of the licence between the Complainant and Chow Sang Sang Jewellery Company Limited; and

(iii) the rights the Respondent claims to have under this licence.

In this additional submission the Complainant refers to an organization Chart (Exhibit 22 to the Response) as showing that its licensee under the mark, Chow Sang Sang Jewellery Company Limited, is a subsidiary of a company called Chow Sang Sang Holdings Limited which, in turn, is a subsidiary of Chow Sang Sang Holdings (BVI) Limited. The latter is itself a subsidiary of Chow Sang Sang Holdings International Limited.

The Respondent, described on the chart as “Guangzhou Mickey Weinstock & Co. Diamonds Manufacturing Limited (China operation), (Voting agreement providing majority voting control)” and as “Diamond factory (200 workers)” is shown as a subsidiary of a company called Chow Sang Sang Manufacturing International Limited which, in turn, is also a subsidiary of Chow Sang Sang Holdings (BVI) Limited.

The Complainant says that the Respondent gives the false impression that Chow Sang Sang Jewellery Company Limited and Chow Sang Sang Holdings (BVI) Limited are one and the same company.

The Respondent is not a subsidiary of nor is it controlled by Chow Sang Sang Jewellery Company Limited, which alone is the exclusive licensee of the Complainant for Hong Kong, SAR of China, the People's Republic of China, Taiwan, province of China and Macau. At best they are very distant relatives, the holding company of the holding company of Chow Sang Sang Jewellery Company Limited (Chow Sang Sang Holdings (BVI) Limited) being also the holding company of the holding company of the Respondent.

The Respondent's membership of a group of associated companies does not give it automatic access to any and all rights owned by any of the companies forming part of the group. They are all separate legal entities. In particular, the Respondent does not automatically obtain the right under the trademark licence to Chow Sang Sang Jewellery Company Limited to use the mark for the promotion and sale of diamonds. The Respondent is just a manufacturer of diamonds, not a retailer or reseller.

The licence agreement specifically provides that Chow Sang Sang Jewellery Company Limited shall not authorize anyone to use the licensed marks within or outside the territory except as specifically permitted by the licence agreement. Although the licence agreement permits Chow Sang Sang Jewellery Company Limited to subcontract manufacture of licensed products and items for their promotion and sale, sales and distribution may not be subcontracted. Accordingly, although the licence agreement allows manufacture to be subcontracted to the Respondent, that does not give the Respondent the right to market diamonds under the mark. To have that right, a sub-licence would be necessary. Not only does the licence agreement not allow the granting of sub-licences, there is no evidence that Chow Sang Sang Jewellery Company Limited has granted a sub-licence to the Respondent. Any sub-licence to use the mark in the disputed domain names, if granted, would not give rise to a legitimate interest because use of “.com” and “.net” domain names goes beyond the permissible territorial limits (citing Ferrero S.p.A. v. Fistagi S.r.l.,WIPO Case No. D2001-0262).

Further, the content of the Respondent's websites has been inconsistent with the licence granted to Chow Sang Sang Jewellery Company Limited in that the websites under the <thelovediamond.com>, <thelovediamond.net> and <lovediamond.net> domain names were headed “THE LOVE DIAMOND COMPANY” with an address in Antwerp; there was no mention of Chow Sang Sang Jewellery Company Limited or the Chow Sang Sang Group; there was reference to “Global Distribution Partners” and there was an online sales facility. The <lovediamond.com> domain name hosted a parking page with links to competing diamond brands. Currently, the <lovediamond.net> domain name leads to the same parked website and <thelovediamond.net> hosts a website similar to the former website of Mickey Weinstock & Co. NV; wrongly suggests a partnership with the Complainant and the existence of THE LOVE DIAMOND COMPANY in the People's Republic of China and looks for partnerships with the aim of “increasing global awareness of the The Love Diamond brand and defending the trademark”.

Respondent

In reply, the Respondent says that as the official international sightholder in the Chow Sang Sang group, Chow Sang Sang Jewellery Company Limited has authorization from the Diamond Trading Company to purchase rough diamonds. Both Chow Sang Sang Jewellery Company Limited and the Respondent are completely controlled by Chow Sang Sang Holdings International Limited. The chief procurement officer of Chow Sang Sang Jewellery Company Limited is also a director of the Respondent. Not only Chow Sang Sang Jewellery Company Limited, but also several other companies in the Chow Sang Sang group, including the Respondent, are selling The Love Diamond diamonds, with the knowledge of and non opposition by the Complainant. That was the intent of the licence agreement, which does not impose any restrictions on the registration of The Love Diamond domain names. The Respondent therefore has the right to maintain the “.com” and “.net” The Love Diamond domain names.

The Respondent says the Complainant has provided an erroneous interpretation of the Belgian court judgment. Among other things, the Complainant claimed in the proceedings that the transfer of the disputed domain names to the Respondent was fraudulent and thus in bad faith. The court was fully aware of the licence to Chow Sang Sang Jewellery Company Limited. It held itself to be competent and dismissed the Complainant's claims concerning transfer of the domain names. The judge therefore opined that Mickey Weinstock & Co. NV did not act in bad faith and thus that the Respondent has the right to maintain these domain names. The Complainant has not appealed this finding.

The position taken by the Complainant is at the very least ambiguous, since it accepts the content of the ruling stating that the domain transfer did not take place in bad faith, but at the same time continues to claim bad faith and a lack of legitimate interest in the current procedure.

Since Mickey Weinstock & Co. NV has appealed against the finding of trademark infringement, this Panel should declare itself incompetent or should dismiss the Complaint.

6. Discussion and Findings

Preliminary issue: should the Panel proceed to a decision?

The Respondent asks the Panel to dismiss the Complaint under the Rules, paragraph 18(a), which gives the Panel discretion to decide whether to terminate or suspend a proceeding or to proceed to a decision in the event of any proceedings instituted prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint. The proceedings on which the Respondent relies in this regard were not brought against the Respondent and the claim in those proceedings for the transfer of the domain names was dismissed because the defendant was no longer the registrant. Since the Complainant did not appeal against that aspect of the judgment, on the material before the Panel there are no court proceedings on foot in respect of a domain name dispute that is the subject of this complaint.

As to the submission that the Panel does not have international jurisdiction, the jurisdiction of the Panel derives from the Registration Agreements between the Respondent and the Registrar and from the filing of a Complaint in conformity with the Policy, the Rules and the Supplemental Rules.

The cases cited by the Respondent in support of its res judicata submission, Paul McMann v. J McEachern, WIPO Case No. D2007-1597 and Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201, both involved dismissal of the complaint in light of court proceedings between the same parties to the administrative proceeding. There were and are no court proceedings afoot between the parties to this administrative proceeding.

As for the cases cited by the Respondent in support of the proposition that Panels declare themselves to be not competent or reject the complaint when the domain name dispute falls within a wider trademark dispute and an extensive account of the facts cannot be reduced to simple cybersquatting, in the CNA Financial Corporation & Allstate Insurance Company Case, supra, a critical factor was the absence from the record of the relevant agency agreement. Here the Panel has the licence agreement between the Complainant and Chow Sang Sang Jewellery Company Limited and an English translation which neither party has claimed to be inaccurate.

In Chantelle v. Marvin Anhalt, WIPO Case No. D2001-1181 the learned panelist did proceed to a decision, finding that because of the difficulty in resolving disputed issues of fact, the Complainant had failed to discharge the onus of proof. In the Nintendo of America Inc. Case, supra, the Weber-Stephen Products Co. Case, supra and the Adaptive Molecular Technologies, Inc. Case, supra, the learned panelists made findings on all three elements.

In Knipping Kozijnen B.V. v. R.T.P. Hanssen, WIPO Case No. D2006-0622 the learned panelist said:

“The question whether the Respondent does or does not have rights or legitimate interests in the Domain Names is dependent on, or at least strongly connected to, the ownership (and licensing) issues regarding the KNIPPING trademarks no. 684756, 680591 and 361604, which are presently disputed in various pending court cases mentioned above. For that reason the Panel considers these pending court cases to be legal proceedings initiated prior to the administrative proceeding in respect of the dispute over the Domain Names that is the subject of the Complaint, as meant in paragraph 18(a) of the Rules. The fact that in none of the cases the Complainant and the Respondent are opposing parties or the fact that the Domain Names are not specifically addressed in these pending court cases does not make that any different.

The Panel finds that the dispute concerning the Domain Names is part of and ancillary to ongoing conflicts about the broader subjects of trademark ownership and infringement, non-usus and registration in bad faith, between several parties not limited to the Complainant and the Respondent. Therefore the Panel finds that the dispute concerning the Domain Names is outside the scope of proceedings under the Policy. Consequently, with reference to the discretion provided for in paragraph 18(a) of the Rules, the Panel decides to terminate this administrative proceeding and shall not proceed to a decision”.

Here there is no dispute over ownership of the mark since both parties accept that it belongs to the Complainant and has been validly licensed to Chow Sang Sang Jewellery Company Limited. The only issues before the Panel are whether the Complainant has discharged its onus of proving all three elements entitling it to transfer. This dispute is not ancillary to the ongoing conflict in the Belgian proceedings, which no longer concern the disputed domain names and are confined to the issue, irrelevant here, whether Mickey Weinstock & Co. NV infringed the mark.

Accordingly the Panel declines the Respondent's request that the Panel declare itself not competent and/or to reject the claim for transfer in limine and decides to proceed to a decision.

Substantive issues

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain names are identical or confusingly similar to a mark in which the Complainant has rights; and

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

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the mark, being a registered mark comprising a word element and a figurative element.

The Respondent contends that the combination of the words “The Love Diamond” lacks distinctiveness and that the holder of a figurative mark may successfully oppose the use by others of the word elements of that mark only if those words are themselves distinctive.

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domains “.com” and “.net” are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Likewise the content of the Respondent's websites must be disregarded: A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900.

Confusion in this context, in the sense of bewilderment or failing to distinguish between things, is a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant's trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918. Another formulation, adopted by the majority in RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130, in the context of a mark with both word and design elements, is whether the mark and the disputed domain name are sufficiently similar that the domain name would be likely to attract people looking for the Complainant.

This Panel follows the approach adopted in Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477 and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031: since a mark, to the extent that it includes a device, cannot be reproduced in a domain name, the question whether a domain name is identical or confusingly similar to a mark is to be judged against the dominant textual elements of the mark. Graphic elements, not being reproducible in a domain name, need not be considered. “The more distinctive or particular the textual elements of the trademark, the greater the likelihood of it being identical or confusingly similar”.

Although the descriptive word “love” is often used as a noun or a verb in association with the descriptive word “diamond”, the use of the definite article “the” immediately preceding the juxtaposition of those two words in the unusual expression “love diamond” serves to distinguish diamonds to which that expression is applied from all other diamonds. On the material before the Panel it appears that there has been extensive use since 2001 of the words “The Love Diamond”, standing alone, to distinguish the Complainant's “hearts and arrows” diamonds from those of others. Examples found in Exhibits to the Response include:

- in Exhibit 13, Jewellery News Asia, May 2001: “The diamonds of the brand ‘The Love Diamond'”;

- in Exhibit 14, Jewellery News Asia, July 2002:

“Premium hearts-and-arrows diamonds marketed under the brand The Love Diamond will make it debut in China at the Luxury China fair in Shanghai, vice-president of the Love Diamond Co, Mickey Weinstock said”;

“managing director of the company, Chan Boon Yong, suggested the creation of a brand for the hearts-and-arrows diamonds and came up with the brand ‘The Love Diamond'”; and

“Monthly production capacity of The Love Diamond stones is 2,500 pieces.”

- similar references in Exhibit 18, The Gulf Today, December 4, 2003; and

- in Exhibit 1, the words “The Love Diamond” were inscribed on the girdle of a specimen examined by the International Gemological Institute in February, 2007.

Also noting the Complainant's several trademark registrations, the Panel concludes that, through use, the words “The Love Diamond”, which comprise the word element of the mark, have become distinctive of the Complainant's diamonds. It follows that all the disputed domain names are confusingly similar to the mark.

The Complainant has established this element.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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) 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) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide concrete evidence of its rights or legitimate interests under paragraph 4(c) of the Policy: see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

The letter dated June 21, 2007 from the Complainant to Mickey Weinstock & Co. NV sought transfer to the Complainant of the domain names. That letter must have come to the attention of Mr. Weinstock, Managing Director of both Mickey Weinstock & Co. NV and the Respondent. There is no allegation in the material submitted on behalf of the Respondent nor evidence that the Respondent's decision to accept the transfers and to register the domain names was made without regard for that knowledge held by its Managing Director (for example, evidence that Mr. Weinstock took no part in the Respondent's decision and did not pass on the information to anyone else within the Respondent). The Panel accordingly draws the inference that the Respondent's decision was made with knowledge of the mark and of the Complainant's wish to have the domain names transferred to it by Mickey Weinstock & Co. NV and was made with Mr. Weinstock's active participation.

It must therefore have been apparent to the Respondent when it registered the domain names upon their transfer to it in November 2007 and April 2008 that the Complainant did not consent to that course. There is no evidence that the Respondent has ever been known by any of the domain names. Its use of them is in the Panel's view clearly commercial.

These circumstances establish a prima facie case of absence of rights or legitimate interests in the domain names on the part of the Respondent.

In seeking to demonstrate that it has rights or legitimate interests in the domain names, the Respondent relies upon:

- the trademark licence granted by the Complainant to Chow Sang Sang Jewellery Company Limited;

- the fact that both the Respondent and Chow Sang Sang Jewellery Company Limited are members of the same group of companies;

- the assertion that the entire Chow Sang Sang group, including the Respondent, is selling THE LOVE DIAMOND diamonds, with the knowledge and approval of the Complainant, this being the intent of the licence; and

- the assertion that the Respondent uses the domain names for promotional purposes and to expedite the sale of THE LOVE DIAMOND by the Chow Sang Sang group, thereby fulfilling the obligations of the licence agreement.

In Danfoss A/S v. Coldwell Banker Burnet et al., WIPO Case No. DBIZ2001-00020 (a case under the Start-up Trademark Opposition Policy for .BIZ (“STOP”), adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on May 11, 2001) an issue was whether the complainant had rights in trademarks owned by other companies within the same group. The learned panelist said:

“The Complainant has not provided evidence that the owners of the trademarks Maneurop, Oreg or Socla have entered into an agreement with the Complainant, such that the Complainant is the licensee of the three trademarks in question. It is not sufficient to merely confirm that these companies are members of the Danfoss group. Although the Panel might infer that use of the marks by entities in the Danfoss Group implies at least licence rights, the Panel is not prepared to draw the inference uninvited and absent specific submissions and supporting evidence to that effect.”

The same reasoning may be applied to the present case insofar as the Respondent relies upon its membership of the group to which the Complainant's trademark licensee belongs. There is no evidence before the Panel that Chow Sang Sang Jewellery Company Limited ever expressly authorized the Respondent to register the domain names or to use the mark. Nor is there any evidence that Chow Sang Sang Jewellery Company Limited or any other company in the Chow Sang Sang group was aware or approved of the Respondent's registration of the domain names at the time.

Insofar as the Respondent relies on the terms of the licence agreement itself, for the purpose of the Policy the Panel considers that the licence does not confer upon the Respondent the right to register and use the domain names, for the following reasons:

- the licence is an exception to the right of the trade mark proprietor to prohibit use of the mark and is therefore to be interpreted restrictively;

- the licence does not expressly confer upon the licensee the right to register domain names incorporating the mark;

- the licence does not expressly confer upon the licensee the right to grant sublicences; and

- the following facts militate against any implied right conferred upon the licensee to register the domain names:

(a) the Contract Territory is limited to Hong Kong, China, Taiwan and Macau;

(b) the domain names are all generic Top Level Domains (gTLDs), namely “.com” and “.net”, signifying worldwide use without geographic limitation, unlike country code Top Level Domains (ccTLDs);

(c) any such implied right would be at odds with the limited Contract Territory and the provisions of the licence explicitly limiting the use of the trademark to acts within or in the Contract Territory (see articles 2.1, 2.2, 3.1 and 3.2);

(d) the Chow Sang Sang group sells other brands of jewellery as well as the Complainant's THE LOVE DIAMOND brand of diamonds (Response, Exhibit 21);

(e) it would be unlikely that a trademark licensor would voluntarily limit its own use of the Internet outside the territory allocated to a licensee, especially for the benefit of a licensee that sells other brands; and

(f) although the licence was apparently granted in 2004, neither the licensee nor the Respondent appear to have registered a domain name containing the mark prior to the transfer and registration of the disputed domain names (not even a ccTLD corresponding to a country within the Contract Territory). The Respondent appears to have operated under the domain name <mickeyweinstock.net> (Response, Exhibit 21) while Chow Sang Sang Jewellery Company Limited appears to have operated and to continue to operate under the domain name <chowsangsang.com> (Respondent's Reply, Exhibits 38 and 39).

As for the assertion that the entire Chow Sang Sang group, including the Respondent, is selling THE LOVE DIAMOND diamonds with the knowledge and approval of the Complainant, the Respondent points to the organizational chart at Exhibit 22 to the Response, which shows that the licensee operates in Hong Kong while other group companies operate in China. There is no evidence of any sales of diamonds under the mark by any of those other companies yet it should be a simple matter for the Respondent, as a member of the Chow Sang Sang group, to produce copies of invoices demonstrating such sales. The Panel is not prepared to accept the Respondent's assertion that the entire Chow Sang Sang group is selling THE LOVE DIAMOND diamonds, let alone with the knowledge and approval of the Complainant, in the absence of concrete evidence to support it.

As for the assertion that the Respondent uses the domain names for promotional purposes and to expedite the sale of THE LOVE DIAMOND by the Chow Sang Sang group, thereby fulfilling the obligations of the licence agreement, the Panel considers that the registration and use of the domain names, being gTLDs, has placed in the hands of the Respondent, a manufacturing company, the means of accepting orders from and causing delivery of Licensed Products to parties outside the Contract Territory, as well as the means of using the mark outside the Contract Territory. The licensee is forbidden from doing any of these things by clauses 2.3 and 8.1 of the licence agreement.

Despite the use of the mark and use of the words “The Love Diamond” on the website of Chow Sang Sang Jewellery Company Limited (Exhibit 39 to the Reply), the Panel is not prepared to draw the inference that the Complainant has consented to the sale of its products online by its licensee, let alone by the Respondent. It is clear from the Complainant's supplementary submission that its understanding is that although THE LOVE DIAMOND products are promoted on that website, they are sold only in shops.

The domain names <thelovediamond.com> <thelovediamond.net> and <lovediamond.net> have been used by the Respondent to offer online sales of THE LOVE DIAMOND diamonds (Complaint, Exhibit 11). The Respondent in its Reply, without denying this, says these websites are out of date and that only the website reached via the domain name <thelovediamond.net> is current. Yet that website too offers sales online through a “Shopping Cart” (Response, Exhibit 34).

The Respondent's use of the three last mentioned domain names in connection with genuine THE LOVE DIAMOND diamonds cannot of itself confer rights or legitimate interests in those domain names because, on the Respondent's own argument, its entitlement derives from the licence to its associated company. The Respondent's use of the domain names contrary to the express terms of the licence regarding the Contract Territory cannot give rise to rights or legitimate interests in the domain names.

The fourth domain name, <lovediamond.com>, offers jewellery of the Complainant's competitors. This cannot be considered as affording rights or legitimate interests to the Respondent.

Accordingly, the Respondent's registration and use of the domain names cannot be brought within the contemplation of the licence agreement, nor within any extension of that licence, either by implication or by acquiescence, to other members of the Chow Sang Sang group, including the Respondent.

The Panel concludes that the Respondent has failed to demonstrate that it has rights or legitimate interests in the domain names.

Accordingly, the Complainant has established this element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Three of those circumstances require consideration here, namely whether:

(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.

Since the Belgian court proceedings brought by the Complainant sought an order for the transfer to the Complainant of the domain names, the Panel finds that the Complainant was likely unaware, prior to the commencement of those proceedings, that they had previously been transferred to the Respondent.

As mentioned, given Mr. Weinstock's roles as Managing Director of both Mickey Weinstock & Co. NV and the Respondent and the absence of any evidence that he refrained from taking part in the Respondent's decision to accept the transfer of the domain names and to register them in its name, in this light the Panel concludes that the Respondent must have made that decision knowing of the Complainant's trademark rights and knowing that the Complainant, had it been aware of the proposed transfer, would have likely opposed it. The Panel regards the Respondent as having been complicit in an attempt by Mickey Weinstock & Co. NV to avoid the possibility of having to transfer the domain names to the Complainant. Such conduct on the part of the Respondent smacks of “cyberflying”, even though, at the time of the transfers, no proceedings against the Respondent were contemplated, for the very reason that the Complainant was unaware of them.

Moreover the Respondent must have known that its action in registering the domain names would necessarily disrupt the business of the Complainant by limiting its ability to register them for itself. Given the context of the dispute between the Complainant and Mickey Weinstock & Co. NV in which the transfers took place, the timing of the transfers and the fact that the Respondent had never operated before under a domain name containing the mark, the Panel concludes that the domain names were transferred to and registered by the Respondent for the purpose of preventing the Complainant from reflecting the mark in the corresponding top level domains. Where such intentionally obstructive conduct is present, the repetition of an act of intentional obstruction, even a single time, is sufficient to constitute a pattern for the purpose of the Policy, paragraph 4(b)(ii). See Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602. Here an act of intentional obstruction (the registration of the first domain name) was repeated three times. Accordingly the Panel finds the Respondent has engaged in a pattern of such conduct.

Insofar as the Respondent has used three of the domain names to offer an online shopping facility, which, given the gTLD character of those domain names, necessarily involves trading beyond the limits of the Contract Territory specified in the licence agreement under which the Respondent purports to be operating, the Panel finds that, by using those domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the endorsement of a service on the Respondent's website.

By allowing the <lovediamond.com> domain name to be used, albeit by the Registrar (for whose actions the Respondent, as registrant, must be taken to be responsible), to lead to a web page advertising the products of the Complainant's competitors, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to that web page, by creating a likelihood of confusion with the Complainant's mark as to the endorsement of the products there advertised.

For all the reasons set out above, the Panel finds the domain names were registered and are being used in bad faith.

The Complainant has established this element.

Having regard to the Panel's findings, no question of Reverse Domain Name Hijacking arises.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <thelovediamond.com>, <lovediamond.com>, <thelovediamond.net> and <lovediamond.net> be transferred to the Complainant.

Alan L. Limbury Presiding Panelist
Yves Van Couter Panelist	Charles Gielen Panelist

Dated: May 4, 2009