Mervis Diamond Corporation d/b/a Mervis Diamond Importers v. Brian Cummings / Cummings Manookian
Claim Number: FA1605001673789
Complainant is Mervis Diamond Corporation d/b/a Mervis Diamond Importers (“Complainant”), represented by Jeffrey D. Feldman of Feldman Gale, P.A., Florida, USA. Respondent is Brian Cummings / Cummings Manookian (“Respondent”), represented by Eric Misterovich of Revision Legal, PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mervisdiamondlawsuit.com> and <mervissexualharassmentlawsuit.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Eduardo Machado as Presiding Panelist;
Sandra J. Franklin as Panelist; and
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2016; the Forum received payment on May 6, 2016.
On May 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mervisdiamondlawsuit.com> and <mervissexualharassmentlawsuit.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 May 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@mervisdiamondlawsuit.com, and postmaster@mervissexualharassmentlawsuit.com. Also on May 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 June 6, 2016.
Additional Submission was received from the Complainant on June 13, 2016, which was found to be compliant.
Additional Submission was received from the Respondent on June 15, 2016, which was found to be compliant.
On June 14, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed:
Eduardo Machado as Presiding Panelist;
Sandra J. Franklin as Panelist; and
Paul M. DeCicco 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
Complainant is in the business of offering retail outlet services in the field of diamonds and jewelry and has used its MERVIS and MERVIS DIAMOND marks in connection with its services since at least 1980, and has maintained and operated its website at the domain <mervisdiamond.com> since at least 1996.
Complainant has rights in the MERVIS mark pursuant to its trademark Registration No. 3,039,602, with the United States Patent and Trademark Office, registered on January10, 2006, which predates Respondent’s registration of the <mervissexualharassmentlawsuit.com> and the <mervisdiamondlawsuit.com> domain names.
Complainant alleges that on February 5, 2016 it sent a cease and desist letter to the Respondent demanding the immediate elimination of use of the marks, the take down of the website associated with the <mervisdiamondlawsuit.com> and the transfer of the domain name to the Complainant. According to the Complainant, after receiving the cease and desist letter, Respondent redirected traffic for the <mervisdiamondlawsuit.com> domain name to the website www.diamondlawsuit.com/mervis/.
Complainant argues that the <mervissexualharassmentlawsuit.com> and <mervisdiamondlawsuit.com> domain names are confusingly similar to Complainant’s MERVIS and MERVIS DIAMOND marks because they incorporate the registered mark, along with the merely descriptive terms “sexual,” “harassment” and “lawsuit,” which do nothing to detract from the confusing similarity created through use of the word “MERVIS” and the generic top level domain (‘gTLD’) “.com.”
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names because it has been using the MERVIS and MERVIS DIAMONDS marks in commerce since at least 1980, in connection with the domain name <mervisdiamond.com> since 1996, for approximately twenty years.
Complainant states that Respondent must be presumed to have known of Complainant’s marks because the content of the websites located at the <mervisdiamondlawsuit.com> and <mervissexualharassmentlawsuit.com> domain names are directed to soliciting potential litigants for a lawsuit against the Complainant and/or Complainant’s owner.
Complainant contends that there is no evidence that Respondent is commonly known by the disputed domain names or any of Complainant’s marks, and also affirms that it has not licensed or otherwise authorized the Respondent to use the MERVIS and MERVIS DIAMOND marks in any domain name or other manner.
Complainant asserts that there has been no bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent uses the domain names for the purpose of obtaining a commercial gain by diverting and soliciting Complainant’s customers to Respondent’s website and law firm. Complainant further argues that Respondent is using the subject domain names to tarnish the Complainant’s marks and the content of the websites located at the disputed domain names are directed toward soliciting potential litigants for a lawsuit against Complainant. Additionally, the disputed domain names include the MERVIS and MERVIS DIAMOND marks in their metatags, further evidence of Respondent’s intent to divert the consumers.
Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith. First, the disputed domain names use the Complainant’s marks to divert internet users searching for Complainant and its services, to Respondent’s sites which are aimed at advertising and promoting a law firm and its legal services in relation to a sexual harassment lawsuit against Complainant, and therefore acts in direct opposition to Complainant’s interests. Further, Respondent’s actual knowledge of the Complainant’s MERVIS and MERVIS DIAMOND marks at the time it registered the disputed domain names demonstrates bad faith. Lastly, Respondent has demonstrated similar activities in the past, as evidenced by adverse UDRP proceedings against it, in which it registered, and was made to transfer, the infringing domains: <internationaldiamondcenterlawsuit.com> and <idcdiamondlawsuit.com>; and, in another case, <diamonddoctorlawsuit.com> and <dallasdiamonddoctorclassaction.com>
B. Respondent
Respondent is a trial attorney law firm with an emphasis on protecting consumers and injured persons and has established an international reputation for successfully pursuing consumer claims over the sale of fraudulently over-graded diamonds.
Respondent argues that the disputed domain names add distinguishing features to the MERVIS and MERVIS DIAMOND marks because the words “lawsuit,” “sexual,” and “harassment” are pejorative and unrelated to the sale of diamonds and it is unlikely anyone would mistakenly consider the domain names to be associated with Complainant. The disputed domain names do not describe Complainant’s line of business, business model, or geographic reach. Instead, they convey an inherently and necessarily negative message about the Complainant. Respondent cites precedent in support of its arguments.
Respondent alleges that it has rights and legitimate interests in the disputed domain names, arguing that its commercial use of a trademark within a domain name is not per se prohibited under the Policy.
Respondent states that the disputed domain names must be used to properly identify the types of lawsuits that Respondent is advertising. In light of this, it affirms that the services Respondent is offering are not readily identifiable without use of the MERVIS mark and it is not using more of this mark than necessary, and also that any reasonable person would look at Respondent’s websites and conclude Complainant is affiliated with a group of attorneys advocating lawsuits against it.
Further, Respondent defends that its use of the disputed domain names does not amount to “tarnishing,” while tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark, and that Complainant’s allegations of defamation are irrelevant to this proceeding and outside the scope of the UDRP. Respondent cites precedent is support of its arguments.
Finally, Respondent affirms that it did not register and use the disputed domain names in bad faith. First, it states that the addition of the unrelated terms “lawsuit” and “sexual harassment” to the disputed domain names destroys any possible confusion because any person would assume that Complainant does not sponsor, or approve, nor is it affiliated with a website that advocates for a lawsuit against it. Further, Respondent defends that this is not the case of a cybersquatter misappropriating trademark rights, while Respondent is using its services to protect consumers and employees through registration of the disputed domain names. Respondent further states that its use of the MERVIS marks is limited in nature, is necessary to describe the services Respondent provides, and does not suggest sponsorship or affiliation. In addition, Respondent affirms that it is not a competitor, in any sense of that word. Lastly, Respondent argues that Complainant has failed to provide evidence to establish its claims, and has attempted to inject defamation into its arguments, which does not apply under the Policy. Respondent cites precedent to support its arguments.
C. Complainant Additional Submission
Complainant emphasizes the precedent in which the Respondent was an actual litigant, the International Diamond Center case. That panel dealt with the generic/descriptive terms “lawsuit” and “diamond” and rejected the notion that they negate a finding of confusing similarity and also determined that there were no rights or legitimate interests in the marks, as is was knowingly using the domain names to solicit the trademark registrant’s customers to its law firm in bad faith.
Complainant defends that the Respondent’s argument that the present case is different from the case mentioned because it pertains to different domain names has no merit and makes no attempt at providing a distinction between the two cases with regard to the parallel facts and identical legal issues.
D. Respondent Additional Submission
In response, Respondent alleges that the aforementioned decision (K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center v. Brian Cummings / Cummings Manookian, FA1654974 (Nat. Arb.Forum Feb. 17, 2016)) does not mandate any result in this proceeding, because a previous UDRP decision, even those involving the same Respondent and same panelists, does not demand a specific result.
Respondent states that the arguments made in the aforementioned case were not the same arguments made before this Panel. As a result, it is proper for this Panel to fully address and evaluate the merits of each party’s respective position.
Respondent also affirms that Complainant is in the business of offering retail outlet services in the field of diamonds. Complainant makes no allegations that it files, consults, investigates, or provides any services related to lawsuits or class action lawsuits. As a result, the domain names at issue do not describe Complainant’s line of business, business model, or geographic reach, but only convey an inherently and necessarily negative message about the Complainant.
Complainant is in the business of offering retail outlet services in the field of diamonds and jewelry and has used its MERVIS and MERVIS DIAMOND marks in connection with its services since at least 1980. Complainant conducts business under the <mervisdiamond.com> domain name since at least 1996.
Complainant has rights in the MERVIS mark pursuant to its trademark Registration No. 3,039,602, with the United States Patent and Trademark Office, registered on January 10, 2006.
Respondent is a law firm located in Nashville, Tennessee, which pursues consumer claims over the sale of over-graded diamonds.
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.
The Panel 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)).
Complainant argues that it also has rights in the MERVIS DIAMOND mark under the common law because Complainant has used the mark in connection with retail outlet services related to diamonds and jewelry since at least as early as 1980, for 36 years. Trademark registrations with governmental organizations are a traditional, but unnecessary, way of showing rights in a mark under the Policy. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Complainant maintains that it has also operated <mervisdiamond.com> since 1996, supporting its rights in the MERVIS DIAMOND mark. The Panel notes that Complainant has also used the registered MERVIS mark in the diamond industry for at least 20 years, and the use of Complainant’s two marks have coincided and are closely related, establishing parallel rights. Moreover, Respondent has not disputed Complainant’s rights in both the MERVIS and MERVIS DIMAOND marks. Thus, the Panel finds that Complainant has rights in the MERVIS DIAMOND mark for purposes of Policy ¶ 4(a)(i).
The Panel observes that the disputed domain names use Complainant’s marks and add the terms “lawsuit” or “sexual harassment,” which does not sufficiently distinguish the disputed domain names from Complainant’s marks.
In this sense, a parallel can be made with the decision in Ginn Real Estate Company, LLC v. Weiner, FA 0806001211342 (Forum August 20, 2008) (“Ginn”), where the Panel have found that “the domain name <ginnlawsuit.com> is confusingly similar to the Complainant’s registered GINN trademark. That is so because the domain name incorporates the whole of the trademark and, in the opinion of the Panel, an objective bystander would be more likely than not to assume that the domain name has some connection with the Complainant and the GINN trademark and would, to that extent, be confused between the domain name and the trademark.”
Furthermore, the Panel finds the asserted analogy with so-called “sucks” cases inappropriate since the terms “lawsuit” and “sexual harassment” are not necessarily negative expressions, as Internet users cannot assume who might be the Plaintiff and who might be the Defendant.
The Panel notes that Respondent states that “the question before the Panel is whether the addition of the words “lawsuit” and “sexual harassment” is similar to the addition of the words “sucks”, “fraud” and “theft” in that addition of the terms, as applied to a company that sell diamonds, dispel a likelihood of confusion”.
For this Panel, the answer is no. In the Panel’s opinion, the Complainant’s trademarks, and the words “lawsuit”, “sexual” and “harassment” have been chosen to divert Internet traffic intended for Complainant, purely for Respondent’s commercial advantage.
The Panel notes the following section of the consensus view in the WIPO Overview of UDRP Panel Views:
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant's trademark? ("sucks cases")
Consensus view: Generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements). Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name
Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark, noting that both domain names, <mervissexualharassmentlawsuit.com> and <mervisdiamondlawsuit.com>, incorporate Complainant’s trademarks, and Internet users would be more likely than not to assume that they have some connection with the Complainant and its MERVIS and MERVIS DIAMOND marks. Despite Respondent’s argument that the content of the resolving websites would dispel confusion, the Panel notes the prevailing view of UDRP panelists that the actual use by the parties is irrelevant in the assessment of confusing similarity, as users have already been subject to confusion and diversion by the use of the disputed domain names.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is well established that Complainant must only make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (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 (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 disputed domain names and is not commonly known by the domain name or any variant of Complainant’s marks. Complainant also states that Respondent has no license or authorization to use Complainant’s marks.
First, the Panel notes that the publicly available WHOIS does not provide any evidence that Respondent is known by the disputed domain names 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).
After analyzing the case, including the content of the websites under the disputed domain names, the Panel notes that there is no evidence that Respondent has any trademark rights related to MERVIS and MERVIS DIAMOND nor that Respondent provides a bona fide offering of goods or services or that there is legitimate noncommercial or fair use of the domain names.
In fact, the Panel finds that Respondent is using the disputed domain names for commercial gain, which has been held to be in bad faith in former cases related to this same Respondent and similar facts. See K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center v. Brian Cummings / Cummings Manookian, FA 1601001654974 (Forum Feb. 17, 2016) (holding that this same respondent’s registration of <idcdiamondlawsuit.com> was in bad faith) and Diamond Consortium, LLC d/b/a Diamond Doctor v. Brian Cummings. FA 1605001675435 (Forum June 24, 2016) (holding that this same respondent’s registration of <diamonddoctorlawsuit.com> and <dallasdiamonddoctorclassaction.com> use Complainant’s trademark and exist for commercial gain).
In its defense, among other grounds, Respondent relies on an argument of nominative fair use of the disputed domain names, asserting that it has rights and legitimate interests in the disputed domain names once it is using the disputed domain names in a way that corresponds with the terms of the domain, and that use of the trademark only serves to make that use readily identifiable to consumers.
The Panel does not agree with Respondent’s defense arguments.
First, because Respondent does not offer a particular service under the domain name <mervisdiamondlawsuit.com>, but in its own words, the law firm is engaged in the field of “Educating and protecting the public from diamond retailers that knowingly used inflated diamond-grading reports”; the law firm also sues diamond dealers.
Hence, when using the marks MERVIS and MERVIS DIAMOND to identify a particular “sub-group” of those services, Respondent is not making a legitimate use of it but, rather, a totally unjustified and unnecessary use, which should not be allowed.
In this sense, the Panel notes that the < mervisdiamondlawsuit.com > domain name redirects Internet users to www.diamondlawsuit.com/mervis/, which carries the following phrases on its landing page: “Diamond Overgrading”, “Mervis Diamond Importers”, “You May Be Entitled To Significant Compensation.”
At the top of this landing page to the website is an icon, “Start a Claim”, which takes the Internet user to the following: “request your free case evaluation” and “If you think you may have been the victim of diamond over-grading, it’s time to give yourself the peace of mind and get an experienced consumer rights attorneys working to secure your recovery. Fill out the form below to receive a free and confidential evaluation.”
In fact, much of the website refers to generalized information about diamond over-grading, aiming to lead consumers to proceed with lawsuits.
Likewise, the <mervissexualharassmentlawsuit.com > domain name also redirects Internet users to a website that shows commercial solicitation.
The Panel notes that there are many other ways to drive legitimate traffic to a website about suing diamond dealers. For instance, in Diamond Consortium, LLC d/b/a Diamond Doctor v. Brian Cummings the panel has concluded that “there is no necessity to incorporate the trademark into the disputed domain names when Respondent’s stated interests might be served by generic expressions such as “diamondvaluation” or “diamondgrading” or even “diamondovergrading.”
Furthermore, Respondent could simply describe its services by referring to the Complainant's name or trademark in print or commentary, without registering domain names which infringe upon Complainant’s trademarks.
Whether or not Complainant may have in fact engaged in the over-grading of diamonds, Respondent cannot use someone else’s trademark to divert traffic.
Respondent does not need a domain name to advertise that it sues or is suing certain individuals.
In view of the above, and taking into account all evidence provided by both parties, the Panel sees no evidence that would give Respondent a right or legitimate interest in the disputed domain names.
The Panel again notes an excerpt from the WIPO Overview of UDRP Panel Views:
2.4 Can a criticism site generate rights and legitimate interests?
This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.
The Overview goes on to explain that there are two views, but we note that the entire section is predicated on the use for noncommercial criticism. The view condoning the pejorative use of trademarks in domain names is based on noncommercial use, as well as a presumption of English speaking users. In this case, the Panel finds that Respondent is using the disputed domain names specifically to solicit business, which is not noncommercial criticism.
In this sense, the Panel agrees with the panel in Asset Loan co. Pty Ltd member v. Gregory Rogers, WIPO Case No. D2006-0300: “What is clear, however, from all of the discussion on this issue is that a respondent must not be seen to be using the criticism site for commercial gain. If that is really what the respondent is doing, the conduct is contrary to the plain words of paragraph 4(c)(iii) of the Policy and hence it cannot give rise to a legitimate interest.”
Also, see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No.D2000-0477, in which “Respondent has evidenced that his intention in establishing multiple versions of similar websites is commercial – as an element of his domain name consultancy services. The Panel determines that Respondent’s intention for registering "wal-martcanadasucks.com", "wal-martcanadasucks.com", "walmartuksucks.com", "walmartpuertorico.com" and "walmartpuertoricosucks.com" is commercial, and not within the scope of fair use or legitimate noncommercial use permitted by paragraph 4(c)(iii) of the Policy.”
Moreover, considering the fact that Respondent is intentionally trading off of others’ trademarks in at least 3 (three) cases involving 6 (six) domain names so far, all with the same goal of diverting traffic for commercial gain, the Panel concludes that Respondent has no fair use regarding <mervissexualharassmentlawsuit.com> as well.
In view of the above, it is well clear that Respondent has not brought itself under 4(c)(iii) since the use of the domain names is for commercial gain and has not brought itself under 4(c)(i) since it has no relevant trademark rights and has no legitimate interest in using Complainant’s trademark. Accordingly, the Panel sees no evidence that would give Respondent a right or legitimate interest in the disputed domain names.
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
In terms of the Policy, the Panel finds that Respondent has registered and is currently using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s trademark.
Moreover, the Panel notes that Respondent has been a party in prior UDRP proceedings in which domain names subject to its control were transferred to other UDRP complainants upon findings of its bad faith in the registration and use of the disputed domain names in those related cases. See K.M.A. Sunbelt Trading Corporation d/b/a International Diamond Center v. Brian Cummings / Cummings Manookian, FA1601001654974 (FORUM Feb. 17, 2016) and Diamond Consortium, LLC d/b/a Diamond Doctor v. Brian Cummings FA1605001675435 (FORUM Jun. 24, 2016). Respondent has shown that it will appropriate the marks of any diamond dealers to solicit business. Under Policy ¶ 4(b)(ii), this pattern of domain name abuse stands as evidence of Respondent’s bad faith in registering and using the domain name here in question. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012), finding under Policy ¶ 4(b)(ii) that:
Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).
The Panel thus finds that Complainant has met its duty of proof under 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 <mervisdiamondlawsuit.com> and <mervissexualharassmentlawsuit.com> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Chair
Sandra J. Franklin, Panelist
July 15, 2016
DISSENT
I would find for Respondent.
Respondent’s trademark laden domain names, <mervisdiamondlawsuit.com> and <mervissexualharassmentlawsuit.com>, which it employs to address websites each of which is used to describe Complainant and describe particular litigations being pursued against Complainant by Respondent, are each nominative fair uses of Complainant’s mark. As discussed below, Respondent thus has rights in each domain name under Policy ¶ 4 (a)(ii) and for that reason and otherwise, the Complaint fails.
When a party uses another’s trademark to refer to the trademark’s owner, or to identify the owner’s product or service rather than to describe its own goods or services, the use is said to be a nominative fair use. If a trademark is used in such manner, authorization is not required. The Ninth Circuit set out the factors needed to show nominative fair use in The New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992)).
In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.
New Kids, at 308-09
Applying the New Kid factors to the instant dispute, Respondent’s use of each domain name constitutes a nominative fair use.
New Kids holds on the first of its three prongs that to be a nominative fair use the product or service referenced must not be readily identified without using the trademark. Respondent’s domain names each advertise the fact of a particular litigation concerning Complainant. The business that Respondent describes through the at-issue domain names relates specifically to Complainant. (In the case of <mervissexualharassmentlawsuit.com>, the lawsuit additionally relates to co-defendant Ronald Mervis, who is not a party to the instant dispute.) Respondent needed to communicate that litigation is being conducted against Complainant, using the MERVIS mark satisfied this goal. See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1180 (9th Cir. 2010) (holding that defendant owner of the <buy-alexus.com> and < buyorleaselexus.com> domain names satisfied the first New Kids factor in that it was “enough to satisfy our test for necessity that the [Defendant] needed to communicate that they specialized in Lexus vehicles, using the Lexus mark in their domain name accomplished this goal.”) Further, the choice made by Respondent need not be the only way to communicate the nature of its business. Id.
The second New Kids prong requires that only so much of the trademark may be used as is reasonably necessary to identify the product or service. The MERVIS mark, as used in the at-issue domain names, is purely textual. Furthermore, there are no MERVIS trademarks on the <mervisdiamondlawsuit.com> or <mervissexualharassmentlawsuit.com> websites aside from the use of the trademark being displayed on the websites in the caption for the relevant litigation or perhaps in some otherwise benign manner. Respondent uses only what is necessary to identify Complainant as a litigant in the particular lawsuit that Respondent references by the relevant at-issue domain name. As such Respondent satisfies the “minimum to identify” requirement of New Kids.
Finally under New Kids, the party asserting nominative fair use must do nothing in conjunction with the trademark to suggest endorsement by the trademark holder. That prong too is satisfied. Nothing in the record indicates that Respondent has done anything to give reason to believe that Complainant somehow endorses either of the domain names or the underlying litigations. To the contrary, the qualifying terms in the domain names, “diamond lawsuit” and “sexual harassment lawsuit” and the information displayed on each domain name’s associated website make it very clear that Complainant is a defendant in a particular litigation and by no means is endorsing the domain name, its website, or its subject litigation.
Given the foregoing, Respondent’s use of each domain name qualifies as a nominative fair use. Fair use is a necessary condition for a party to demonstrate rights and interests under Policy ¶ 4(c)(iii). Policy ¶ 4(c) states in part that a Respondent demonstrates rights or legitimate interest to a domain name if:
iii) you are 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.
See Policy ¶ 4(c)(iii).
Having established that Respondent’s use of each domain name is a nominative fair use, we note that there is no requirement imposed by Policy ¶ 4(c)(iii) which mandates that a domain name’s use must not be commercial absent a concomitant intent to misleadingly divert consumers or tarnish the subject trademark. However, once fair use is established as it is here, any intent to tarnish is necessarily obviated, as is any intend to mislead consumers. Respondent thus demonstrates its rights or interests to the domain names pursuant to Policy ¶ 4(c)(iii).
Respondent artfully presents a similar line of argument regarding nominative fair use. The majority discusses Respondent’s nominative fair use arguments in its decision. However, the majority analysis is flawed.
The majority claims in refuting Respondent that “Respondent does not offer a particular service under the domain name <mervisdiamondlawsuit.com>.” However, Respondent is in fact offering services regarding a lawsuit against Mervis concerning diamond grading, as well as advertising the fact of that lawsuit. That Respondent’s endeavors may be otherwise described does not change this. The majority’s claim is thus mistaken. (Curiously, the majority only makes this claim and others with regard to one of the at-issue domain names.)
Next, in or about the 12th paragraph after the heading Rights or Legitimate Interests the majority asserts that because Respondent uses the domain names to identify particular “sub-groups” of Respondent’s services “Respondent is not making a legitimate use of it but, rather, a totally unjustified and unnecessary use, which should not be allowed.” While the majority may feel it “should not allow” describing one facet of one’s service with particularity is no way a bar to finding nominative fair use. Asserting this “sub-group” distinction, is like saying that a grocery store is legally unable to avail itself of a nominative fair use in advertising a “sub group” of products consisting of a certain trademarked brand of cereal, and may only advertise cereal in general.
Next the majority suggests that if there is no absolute necessity for Respondent to incorporate the trademark into a domain name then there is a blanket prohibition against doing so. “There are many other ways to drive legitimate traffic a website about suing diamond dealers” states the majority. That may be so, but it doesn’t negate Respondent’s right to use the domain names in the manner it does. The Court in Tabaris addressed this issue squarely.
We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris' use of the mark was “necessary” to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It's true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it's enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal.
Tabaris at 1180 (emphasis added)
Likewise whether or not there were other advertising channels available to Complainant is also not relevant to the issue of nominate fair use.
While using Lexus in their domain names wasn't the only way to communicate the nature of their business, the same could be said of virtually any choice the Tabaris made about how to convey their message: Rather than using the internet, they could publish advertisements in print; or, instead of taking out print ads, they could rely on word of mouth. We've never adopted such a draconian definition of necessity, and we decline to do so here. In Volkswagenwerk, for instance, we affirmed the right of a mechanic to put up a sign advertising that he specialized in repairing Volkswagen cars, although he could have used a sandwich board, distributed leaflets or shouted through a megaphone. 411 F.2d at 352. One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that's nearly impossible to do without mentioning Lexus, cf. Monte Carlo Shirt, Inc. v. Daewoo Int'l (Am.) Corp., 707 F.2d 1054, 1058 (9th Cir.1983), be it via domain name, metatag, radio jingle, telephone solicitation or blimp.
Tabaris at 1180-81
Finally, it doesn’t follow as the majority sets out that “under 4 (c)(iii) since the use of the domain names is for commercial gain“ the Respondent “has no legitimate interest in using Complainant’s trademark.” As discussed above, a plain reading of the paragraph 4 (c)(iii) shows that commercial gain is relevant if, and only if, there is intent to misleadingly divert consumers or tarnish the trademark at issue. A commercial use of a domain name does not per se foil a respondent’s deployment of paragraph 4(c)(iii) to demonstrate its rights or interests. Significantly, once there is a nominative fair use of the subject mark it makes no sense to speak of tarnishing or misleading consumers, any more than it would to make similar claims when a third party advertises a trademarked product by name. Having found that Respondent did not falsely suggest that Complainant sponsored or endorsed either of the at-issue domain names on our way to finding each domain names’ use is a nominative fair use, asserting that such nominative fair use of the Complainant’s mark is nevertheless tarnishing and/or misleading would be non sequitur.
Therefore in light of the above, Respondent unequivocally shows its rights or interests to the at-issue domain names under Policy ¶ 4(a)(ii). Additionally, the fact that the domain names are nominative fair uses of the MERVIS mark also allows Respondent’s to demonstrate rights or interest under Policy ¶ 4(c)(i) given their business use. Similarly, since the use of each domain name is a permissible nominative fair use, which requires no authorization from the trademark owner, there can be no bad faith showing under Policy 4(c)(iii).
The domain names should each remain with Respondent.
Paul M. DeCicco
July 15, 2016
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