Rosy Blue Jewelry, Inc. v. Rosy Blue Diamonds Inc.
Claim Number: FA1002001310405
Complainant is Rosy Blue Jewelry, Inc. (“Complainant”), represented by Charles P. LaPolla, of Ostrolenk Faber LLP, New York, USA. Respondent is Rosy Blue Diamonds Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rosybluediamonds.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2010.
On March 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rosybluediamonds.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 3, 2010, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 23, 2010
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to
postmaster@rosybluediamonds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rosybluediamonds.com> domain name is confusingly similar to Complainant’s ROSY BLUE mark.
2. Respondent does not have any rights or legitimate interests in the <rosybluediamonds.com> domain name.
3. Respondent registered and used the <rosybluediamonds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rosy Blue Jewelry, is a global marketer of diamonds, jewelry and related goods and services. Complainant operates in fourteen countries with over 10,000 employees. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ROSY BLUE mark (e.g., Reg. No. 2,141,053 issued on March 3, 1998).
Respondent, Rosy Blue Diamonds, Inc., registered the <rosybluediamonds.com> domain name on September 19, 2007. Respondent’s disputed domain name resolves to a website that displays, “Sorry! This site is not currently available.”
The Panel also notes that there is a pending federal court proceeding between the parties wherein the Judge has granted a suspension in the federal proceeding pending the outcome of this UDRP proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in its mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <rosybluediamonds.com> domain name contains Complainant’s entire mark together with the descriptive term “diamonds” and the generic top level domain (“gTLD”) “.com.” The additions are not adequate to distinguish the disputed domain name from Complainant’s mark. The Panel therefore finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ROSY BLUE mark under Policy ¶ 4(a)(i). The Panel further finds that the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that the <rosybluediamonds.com> domain name is confusingly similar to Complainant’s ROSY BLUE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <rosybluediamonds.com> domain
name. Complainant is required to make a prima facie case in support of these
allegations. Once the Complainant has
produced a prima facie case the
burden shifts to Respondent to show it has a right or legitimate interest in
the disputed domain name. See Domtar,
Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Swedish Match UK Ltd.
v. Admin, Domain, FA 873137 (Nat.
Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has
established a prima facie case. Due to the Respondent’s failure to respond to
these proceedings the Panel may assume Respondent does not have any right or
legitimate interest in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant argues that Respondent has not been granted permission to use Complainant’s mark, nor is Respondent commonly known as the <rosybluediamonds.com> domain name. The WHOIS information identifies “Rosy Blue Diamonds, Inc.” as the registrant of the disputed domain name. Complainant submits evidence that Respondent has not used the “Rosy Blue Diamonds, Inc.” name in any business activities, and further that the corporation has been dissolved by proclamation. The Panel finds that without affirmative evidence showing that Respondent is commonly known as the disputed domain name Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).
Complainant also contends that Respondent lacks rights and legitimate interests in the <rosybluediamonds.com> domain name because it is not operating an active website from the disputed domain name. Respondent’s disputed domain name resolves to a website that displays, “Sorry! This site is not currently available.” The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where it has failed to make an active use of the <rosybluediamonds.com> domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant further argues that Respondent offered to sell Complainant the <rosybluediamonds.com> domain name for $100,000, and that this conduct is further evidence of Respondent’s lack of rights and legitimate interests in the domain name. The Panel finds that Respondent’s willingness to sell the disputed domain for an amount over its costs of obtaining the domain name is further evidence of its lack of rights and legitimate interests in the <rosybluediamonds.com> domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant offers evidence that Respondent, through a telephone conversation, offered to sell the <rosybluediamonds.com> domain name to Complainant for “not less than $100,000.” The Panel finds that Respondent’s offer to sell the disputed domain name for an amount above its out-of-pocket expenses is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for $100,000 constitutes bad faith).
Respondent registered the <rosybluediamonds.com> domain name on September 19, 2007 and has not connected the domain name with an active website from that time until now. The Panel finds that Respondent’s failure to make an active use of the <rosybluediamonds.com> domain name more than three years after registering the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rosybluediamonds.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 16, 2010
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