K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center v. Brian Cummings / Cummings Manookian
Claim Number: FA1601001654974
Complainant is K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center (“Complainant”), represented by Timothy W. Weber of Weber, Crabb & Wein, P.A., Florida, United States. Respondent is Brian Cummings / Cummings Manookian (“Respondent”), represented by Brian Manookian, Tennessee, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com>, registered with Godaddy.Com, Llc.
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 Forum electronically on January 4, 2016; the Forum received payment on January 4, 2016.
On Jan 05, 2016; Jan 08, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@internationaldiamondcenterlawsuit.com, postmaster@idcdiamondlawsuit.com. Also on January 11, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 5, 2016.
On February 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com> domain names are confusingly similar to Complainant’s INTERNATIONAL DIAMOND CENTER mark.
2. Respondent does not have any rights or legitimate interests in the <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com> domain names.
3. Respondent registered and uses the <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com> domain names in bad faith.
B. Respondent
1. Respondent consents to the transfer of <internationaldiamondcenterlawsuit.com> to Complainant. Respondent disputes Complainant’s rights to the <idcdiamondlawsuit.com> domain name, stating that Complainant does not have exclusive rights to the words “idc,” “diamond” and “lawsuit.”
2. Respondent does have rights and legitimate interests in the <idcdiamondlawsuit.com> domain name, used in conjunction with its legitimate business.
3. Respondent did not register and use the <idcdiamondlawsuit.com> domain name in bad faith, as it is used in conjunction with its legitimate business.
Complainant uses its INTERNATIONAL DIAMOND CENTER mark in connection with the operation of nine retail diamond and jewelry stores in Florida and Georgia. Complainant holds a registration for the INTERNATIONAL DIAMOND CENTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,895,856, registered December 28, 2010). Complainant also holds a registration for the abbreviation “IDC” with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,780,879, registered July 28, 2015), showing first use dates of September 1, 2014. Complainant conducts business under the <shopidc.com> domain name.
Respondent is a law firm located in Nashville, Tennessee, which pursues consumer claims over the sale of over-graded diamonds. Respondent registered the <idcdiamondlawsuit.com> domain name on January 4, 2016, and uses it to solicit business.
Preliminary Issue – Consent to Transfer
Respondent consents to transfer the <internationaldiamondcenterlawsuit.com> domain name to Complainant. Therefore, the Panel will not conduct the traditional UDRP analysis and orders an immediate transfer of the <internationaldiamondcenterlawsuit.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer).
Respondent, however, contests Complainant’s request to have the <idcdiamondlawsuit.com> domain name transferred to Complainant. Therefore, the Panel shall conduct the UDRP analysis for the <idcdiamondlawsuit.com> domain.
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."
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.
Complainant argues that its registration for the INTERNATIONAL DIAMOND CENTER mark with the USPTO demonstrates its rights in its mark. The Panel certainly agrees that registration with the USPTO suffices to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes that Complainant also holds a USPTO registration for “IDC,” the obvious abbreviation of its INTERNATIONAL DIAMOND CENTER mark. The registration dates of both marks predate Respondent’s registration of the <idcdiamondlawsuit.com> domain name, so it is not necessary to discuss Complainant’s arguments regarding common law rights. It is also not necessary to discuss Respondent’s contentions that Complainant has no trademark rights in the IDC mark, as the USPTO has determined otherwise. A USPTO registration suffices to establish rights in a mark under Policy ¶ 4(a)(i), as noted above. Thus, the Panel finds that Complainant has demonstrated rights in the IDC mark for purposes of Policy ¶ 4(a)(i).
The <idcdiamondlawsuit.com> domain name is confusingly similar to Complainant’s IDC mark as it wholly incorporates the mark, along with the descriptive terms “diamond” and “lawsuit.” This is particularly confusing when the IDC is an abbreviation for Complainant’s INTERNATIONAL DIAMOND CENTER mark. Previous panels have held that the addition of generic or descriptive terms to a complainant’s mark does not distinguish a respondent’s disputed domain name from a complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel finds that Respondent’s <idcdiamondlawsuit.com> domain name is confusingly similar to Complainant’s IDC mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and thus the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <idcdiamondlawsuit.com> domain name and is not commonly known by the domain name or any variant of Complainant’s marks. Complainant states that Respondent has no license or authorization to use Complainant’s marks. The Panel notes that the WHOIS information lists “Brian Cummings / Cummings Manookian.” Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to solicit Complainant’s customers to its law firm. Complainant contends that the law firm has registered pirated domains of multiple diamond retailers around the country for the purpose of harming the retailer’s sales, and then solicits the jeweler to enter into a retainer agreement with the law firm on the understanding that the law firm will discontinue the campaign directed at the retailer. Complainant provides proof that Respondent is indeed using the disputed domain name to solicit business. While Respondent may or may not be conducting a legitimate business, Respondent is obliged to seek customers without using Complainant’s mark in a domain name. Past panels have held that a respondent’s use of a domain name to divert Internet users seeking a complainant’s website to the website of the respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent uses the <idcdiamondlawsuit.com> domain name in an attempt to commercially gain by diverting Internet users seeking Complainant’s website to Respondent’s website. The Panel agrees, noting the use of IDC in the disputed domain name and Complainant’s INTERNATIONAL DIAMOND CENTER mark in the resolving website. Previous panels have held that a respondent’s use of a confusingly similar domain name to attract Internet users to a respondent’s website constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks. The Panel notes that Respondent does not contest Complainant’s argument of actual knowledge; in fact, Respondent details that it began filing consumer lawsuits regarding over-graded diamonds in July 2014 and that it targeted Complainant in 2015. Respondent uses both IDC in the disputed domain name and Complainant’s INTERNATIONAL DIAMOND CENTER mark in the resolving website. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent had actual knowledge of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s marks, further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <internationaldiamondcenterlawsuit.com> (by Respondent’s consent) and <idcdiamondlawsuit.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 17, 2016
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