DECISION

 

Diamond Consortium, LLC d/b/a Diamond Doctor v. Brian Cummings

Claim Number: FA1605001675435

 

PARTIES

Complainant is Diamond Consortium, LLC d/b/a Diamond Doctor (“Complainant”), represented by Braden M. Wayne, Texas, USA.  Respondent is Brian Cummings (“Respondent”), represented by Eric Misterovich of Revision Legal, PLLC, Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <diamonddoctorlawsuit.com> and <dallasdiamonddoctorclassaction.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

 

Sandra J. Franklin, Debrett Lyons, and Houston Putnam Lowry, Chartered Arbitrator.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 17, 2016; the Forum received payment on May 17, 2016.

 

On May 17, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <diamonddoctorlawsuit.com> and <dallasdiamonddoctorclassaction.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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@diamonddoctorlawsuit.com, and postmaster@dallasdiamonddoctorclassaction.com.  Also on May 19, 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 8, 2016.

 

Both parties made Additional Submissions which were compliant with Supplemental Rule 7.

 

On June 12, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member panel, the Forum appointed Debrett Lyons (chair), Sandra J. Franklin and Houston Putnam Lowry, Chartered Arbitrator, and as panelists in these Administrative Proceedings (the “Panel”).

 

Having reviewed the communications records, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in DIAMOND DOCTOR and alleges that the disputed domain names are confusingly similar to its trademark.  The trademark was registered with the United States Patent & Trademarks Office (“USPTO”) on October 20, 2009, as No. 3,697,365.  Complainant submits that the trademark is the distinctive component of the disputed domain names.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.  Complainant states that Respondent is a partner in a Tennessee law firm and is using the disputed domains unfairly to attract potential litigants who might believe they have a legal claim against Complainant.  Complainant argues that the domain names are injurious to its business since they falsely suggest the existence of a law suit and class action against Complainant.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith for the same reasons.

 

B. Respondent

Respondent broadly denies those allegations.  Respondent does not comment on the basis of Complainant’s claim to trademark rights, but argues that the domain names are not confusingly similar to the trademark because the public would not be confused.  Respondent submits that the words “lawsuit” and “class action” have inherently negative connotations and are unrelated to the sale of diamonds (Complainant’s business) and it is therefore unlikely anyone would mistakenly consider the domains to be associated with Complainant.

 

Respondent affirms that he is a partner in a Tennessee law firm with a practice in consumer protection.  Respondent argues that it has a fair use right to the domain names since it is using them in a fashion that corresponds with the terms of the domains, and that use of the trademark serves to make that use readily identifiable to consumers.

 

C. Additional Submissions

Both parties made additional submissions, which have been taken into account by the Panel.  Those submissions are argumentative and do not sufficiently advance the primary submissions already outlined to warrant further consideration here.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is a jeweler and diamond retailer located in Dallas, Texas doing business under the name, DIAMOND DOCTOR;

2.    Complainant is the owner of a trademark registration for DIAMOND DOCTOR with the USPTO;

3.    Respondent is a partner in the law firm of Cummings Manookian PLC;

4.    The disputed domain names resolve to websites controlled by Respondent or its firm, which promote its legal services; and

5.    There is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.

 

DISCUSSION

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."

 

Preliminary Issue:  Concurrent legal proceedings

Rule 18(a) provides that if legal proceedings are “initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or proceed to a decision.” 

 

In eProperty Direct LLC v. Miller, FA 836419 (Forum Jan. 3, 2007) the panel found that it could decide the dispute under Rule 18(a) of the Policy:

 

“since the legal proceedings referred to by the parties appear to be concluded and Orders made.  Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”

 

Further, in W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) the panel proceeded to a decision under the Policy despite concurrent court proceedings because:

 

 “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy.  This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation.  It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”.

 

By contrast, in AmeriPlan Corp. v. Gilbert FA105737 (Forum Apr. 22, 2002) the panel paid regard to paragraph 4(k) of the Policy[i] and found that it should not rule on a decision when there is a court proceeding pending because:

 

 “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”

 

Complainant has filed two lawsuits against Respondent in the State of Texas.[ii]  Complainant contends that the lawsuits do not relate to possession or control of the disputed domain names.  Panel notes that neither action is brought under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) and that the relief sought is in one case for an interim injunction and in the other for a range of remedies and compensation based on allegations of trademark infringement, unfair competition, and injury to business reputation.

 

The issues are wide-ranging, the court timetables unclear and the possible outcomes not guaranteed to be dispositive of the ownership of the disputed domain names.  On balance, the Panel finds that it retains a proper mandate to decide these Administrative Proceedings under the Policy.

 

Primary Issues

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.

 

Trademark Rights / Identical or Confusingly Similar

 

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is sufficient to establish trademark rights.[iii]  With the Amended Complaint is provided a copy of USPTO Registration. No. 3,697,365 for the word mark, DIAMOND DOCTOR, registered October 20, 2009.  Accordingly, Panel finds that Complainant has trademark rights for the purposes of the Policy.

 

The top-level domain “.com” can be ignored for the purposes of comparing the domain name with the trademark.[iv]   The compared terms are not identical and so the question is whether they are confusingly similar.

 

The domain names then take the whole of the trademark and add either “lawsuit” or “class action” and in one case the place name, “Dallas”, itself having no distinguishing value.  Complainant draws on a parallel with the decision in Ginn Real Estate Company, LLC v. Weiner, FA 0806001211342 (Forum August 20, 2008) (“Ginn”): 

 

“The Panel finds 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.”

 

Respondent attempts to distinguish Ginn, arguing that Complainant’s website shows it to be a retail diamond and jewelry store in Texas, not an entity which provides any form of legal services, ergo, there would be no confusion caused by addition of the terms “lawsuit” or “class action”. 

 

Respondent goes on to seek to draw an analogy with those UDRP decisions which have considered domain names comprising a trademark in combination with a pejorative term, such as “sucks”.  Respondent makes the assertion that since the inception of the Policy “panels have found that the addition of unrelated, pejorative terms sufficiently distinguish the domain from the rights-holder.”

 

This Panel is not moved by either of those arguments.  The consensus view of UDRP panelists is that the “test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.”[v]  In other words, website content (or, for that matter, actual use by the parties) is largely irrelevant in the assessment of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.

 

The Panel further finds the asserted analogy with so-called sucks cases inapt since the terms “lawsuit” and “class action” are not necessarily negative expressions; certainly not of the same class as the word “sucks”.  As the panelist in Ginn went on to reason:

 

“It is true, of course, that there is a debate as to whether the addition to a trademark of disparaging words such as ‘sucks’, …has the result that a reasonable bystander would not be confused. … However, the preponderance of opinion and, in the view of this Panel, the better view, is that where the whole of a trademark is incorporated in a domain name, the domain name is capable of being confusingly similar to a trademark. …

 

In any event, there is one feature of the present case that puts the issue beyond doubt. That feature is that the word added to the trademark, ‘lawsuit,’ is not necessarily disparaging and does not necessarily warn the reader that the domain name is designed to be critical of the trademark owner. In other words, a reader might well think that the lawsuit was a lawsuit brought by, rather than against, the Complainant …”[vi]

 

Respondent relies on a recent decision of the dissenting Panelist in these Administrative Proceedings, Houston Putnam Lowry, in Ferring B.V. v. John Thornton / Andrews & Thornton, FA1661923 (Apr. 25, 2016), which concerned the domain names <bravellelawsuits.com> and  <bravellerecallattorneys.com>  incorporating the complainant’s BRAVELLE trademark.  The panelist took the position that the assessment of confusing similarity entailed consideration of the complainant’s “line of businesses” or “business model”.

 

The majority here disagrees with that contextual approach for the purposes of paragraph 4(a)(i).  Once more, in Ginn, the panelist wrote:

 

It is also necessary here to address the main argument of the Respondent which is that it is not only the domain name itself that must be looked at but the website as well. … [Respondent] says that to look at the website shows that the domain name would not be construed as an official or approved Ginn domain name and that no reader would find it confusingly similar to the GINN trademark. 

 

The answer to this submission is that the terms of the Policy itself and many decisions on the issue make it clear that a panel considering confusing similarity should not have regard to the content of the website to which the disputed domain name resolves. That is so because the Policy requires a true comparison to be made between the actual words of the domain name and those of the trademark and that requirement in turn dictates that other factors such as the contents of a website must be disregarded . . . .

 

The Respondent may feel that this view does not give him an opportunity to highlight the actual contents of his website, how its contents are directed to information and soliciting support for other potential class litigants and how different it is from the contents of the Complainant’s own websites.

 

However, those factors are still relevant and there is ample scope for applying them when paragraphs 4(a)(ii) and (iii) come to be considered . . .  . It is simply that they are not used when the test in paragraph 4(a)(i), identicality or confusing similarity, is being examined

 

In keeping with those observations, the WIPO Overview 2.0[vii] recognizes a minority viewpoint that “some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services.”

 

As stated by the panel in Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253:

Trademark jurisprudence carries with it a long and unresolved debate as to whether trademarks deserve protection as “badges of origin” or as “badges of control”. Within the former paradigm, there is no respectable argument that “red bull” and “red bull sucks” would cause confusion as to source.

 

In a case relied upon by the Complainant, ADT Services AG v. ADT Sucks.com, WIPO Case No. D2001-0213, the Panel said that “[T]he addition of the words “sucks” is a crude attempt to tarnish the mark”. It, and cases like it, which use language such as “tarnishment” and “dilution”, align themselves with the protection of trademarks as badges of control. Put crudely, those laws which protect trademarks from dilution in some way, through threat of infringement, are not rationalised on confusion as to origin.

…

 

The proper approach to the assessment of confusing similarity in “sucks” cases was taken by David Bernstein in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.D2000-0662, where it was said:

 

No reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using wal-martsucks.com. Complainant has no evidence of any potential confusion. The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.

Nevertheless, the Panel understands the phrase “identical or confusingly similar” to be greater than the sum of its parts. The Policy was adopted to prevent the extortionate behavior commonly known as “cybersquatting”, in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.

 

…

 

The Panel is cognizant of the importance of protecting protest sites that use a trademark to identify the object of their criticism. The “legitimate interest” and “bad faith” factors should adequately insulate true protest sites from vulnerability under the Policy…

 

The Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

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.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[viii]

 

The publicly available WHOIS does not provide any evidence that Respondent might be known – commonly or otherwise - by the disputed domain name, nor does Respondent attempt to make that claim.

 

There is no evidence that Respondent has any trademark rights and Complainant has not authorized Respondent to use the trademark.  There is no evidence that Respondent provides a bona fide offering of goods or services or that there is legitimate noncommercial or fair use of the domain name.  The domain names use Complainant’s trademark and exist for commercial gain, which has been held to be in bad faith in former UDRP cases.[ix]

 

The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. 

 

There are three bases on which this Respondent might demonstrate rights or legitimate interests in the domain names.  First, by having used the domain names in connection with a bona fide offering of services; second, by making fair use of the domain names with no intention to gain commercially or to tarnish the trademark; or third, since paragraph 4(c) of the Policy is non-limiting, by some other proof of rights or legitimacy acceptable to Panel.

 

Respondent alleges that certain diamond retailers, including Complainant, “overgrade” diamonds, claiming to offer diamonds "at wholesale pricing" when, in reality, they were simply selling an overgraded stone.  Respondent alleges that since July 2014 it has filed consumer lawsuits over the sale of overgraded diamonds.

 

Respondent argues it has rights and legitimate interests in the disputed domain names because 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.  In other words, it relies on an argument of nominative fair use of the domain names.

 

The evidence is that the <diamonddoctorlawsuit.com> name redirects Internet users to a website resolving from the alternate domain name, <diamondlawsuit.com/diamonddoctor>.  That website is maintained by

Cummings Manookian PLC, the law firm of which Respondent is a partner. 

 

The resolving website carries the following banners on its landing page: “Diamond Overgrading”,  “DIAMOND DOCTOR”, “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

 

If you think you may have been the victim of diamond overgrading, 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.

 

There is no reference to Complainant or its trademark there.

Much of the website is given then over to generalized information under topics such as “LEARN ABOUT INTENTIONAL DIAMOND OVERGRADING” and “REPORT TO THE PROPER AUTHORITIES”, none of which refers to Complainant or includes the trademark.

 

Four paragraphs into another section of the website entitled “DETERMINE IF YOU ARE A VICTIM” is the conditional statement:

 

If the independent jeweler reports color and clarity grades that are more than two grades below what you were told by the seller, you’ve likely been duped and it’s time to proceed with a lawsuit against Diamond Doctor.

 

At the end of the resolving website are explicit details of what is alleged to have been a “trap” evaluation made by Complainant.  The website states:

 

See what happens when we had Diamond Doctor unknowingly appraise
its own garbage diamonds…
We sent an undercover customer to Diamond Doctor to have it appraise a diamond it previously sold  one of our clients.  See the difference in grades when Diamond Doctor sold the diamond and when Diamond Doctor had no clue it was looking at one of its own fraudulently overgraded stones!

 

STONE COLD PROOF.

Diamond Doctor knowingly sells overgraded diamonds. In this example, Diamond Doctor claimed the diamond was 5 grades better when it was selling the diamond, than when it later appraised it.

 

The <dallasdiamonddoctorclassaction.com> domain name resolves to a virtually identical website in terms of content.

 

Respondent submits that:

 

 “it is important to note that a respondent’s commercial use of a trademark within a domain name is not per se prohibited under the Policy. For example, the Oki Data line of cases all address situations in which a reseller or distributor, authorized or not, sells the manufacturer’s goods under a domain name containing the manufacture’s mark. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).

 

A similar doctrine is well established in United State federal law: nominative fair use. … The Respondent’s use of the Complainant’s mark must be used to properly identify the types of lawsuits which Respondent is advertising. Respondent is not just seeking potential plaintiffs for “diamond lawsuits”; instead, Respondent is seeking potential plaintiffs that have been harmed through their purchase of diamonds from a specific retailer, Diamond Doctor. As a result, the “product” Respondent are offering is not “readily identifiable” without use of the DIAMOND DOCTOR mark. And Respondent is not using more of this mark than necessary.  Finally, it is hard to imagine any reasonable person would look at Respondent’s websites and conclude Complainant is affiliated with a group of attorneys advocating lawsuits against it. While Complainant may not appreciate attorneys soliciting clients for lawsuits against it, the Respondent’s use of the Domain Names to do exactly that is fair use under United States law. As a result, Respondent’s use is a fair use under the Policy and it has rights and legitimate interests in the Domain Name. Complainant has not satisfied its burden under Rule 4(a)(ii).

 

The Panel finds that these arguments are distractions from the Complainant’s uncontested claim that there are no pending lawsuits or class actions brought against it, whether or not Complainant may have in fact engaged in the overgrading of diamonds.  Further, the resolving websites far from adhere to the principles of fair use laid out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).  Finally, the resolving websites exist for commercial gain insofar as their mixed, if not principal, purpose is the solicitation of professional services, but with – in quantitative terms – incidental reference to Complainant’s business.

 

Contrary to Respondent’s claim, 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”.  The Panel notes, for example, that Respondent has chosen relatively recently to redirect the <diamonddoctorlawsuit.com> name to a website resolving from the generic domain name, <diamondlawsuit.com>. 

 

In terms of paragraph 4(c) of the Policy, Respondent has by its actions 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.  Finally, Panel sees no other evidence that would give Respondent a right or legitimate interest in the domain names.

 

For these reasons Panel finds that Respondent has no right or legitimate interest in the domain names and has not rebutted the case made against it.  Complainant has accordingly satisfied the second element of the Policy in respect of both domain names.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

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

 

(ii) 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the site or location.’

 

Complainant has not argued for the application of any of those scenarios but Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above.  Panel has found the domain names to be confusingly similar to the trademark.  The resolving websites exist for commercial gain.  In terms of the Policy, Respondent is using the domain names to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the trademark.

 

The Panel finds registration and use in bad faith and the third limb of the Policy established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel majority concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <diamonddoctorlawsuit.com> and <dallasdiamonddoctorclassaction.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons (chair),

Sandra J. Franklin

panelists

Dated: June 24, 2016

 

DISSENT:

With all due respect to my fellow Panelists, I dissent.  The first point of dissention is whether or not the Panel should hear this case.  I would not.

 

Based upon the pleadings submitted to the Panel, it seems clear the issue of the domain names’ propriety was squarely addressed by the parties and will undoubtedly be determined by at least one of the courts involved.  The fact no party directly addressed the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) in their pleadings is neither here nor there.  Perhaps the lawyers didn’t know of the Act (although they will certainly know about it once this decision is issued!).  Perhaps the lawyers felt Rule 11 precluded them from arguing the Act applied because they concluded the domain names were not confusingly similar to the mark.  Panels should not be in the business of second guessing counsel nor interpreting the fine nuances of court pleadings.  The general scope of the lawsuit seems clear.

 

The issue before this Panel is squarely before the court and in a much larger context than a traditional UDRP case.  The court will have access to live testimony and the court’s issues are broader than those contemplated by the UDRP.  It seems clear to this Panelist Complainant is trying to make an “end run” around the court on a preliminary issue.  The Panel should decline to exercise its jurisdiction to assist such an attempt.  The Panel should not proceed further until the court proceedings have terminated.

 

As a side note, it is fairly predictable Respondent will appeal this Panel’s decision (as Respondent is allowed to do).  That matter may (or may not) end up before one of the two courts involved.  A third court may become involved.  It would seem as though this Panel should not unnecessarily multiply the proceedings at Complainant’s request.  That would violate William of Ockham’s razor.

 

Trademark Rights / Identical or Confusingly Similar

My dissent on this point is fairly simple.  Policy ¶ 4(a)(i) requires the domain names be confusingly similar to Complainant’s mark.  While this Panelist was perturbed at Respondent’s domain names (because this Panelist was admitted to the bar long before such client soliciting tactics were contemplated much less allowed), this Panelist was not confused.  This Panelist doubts any consumer would be confused.  No actual confusion was shown.  This Panelist does not believe there would be any confusion.

 

<diamonddoctorlawsuit.com> does not make me think of purchasing diamonds.  It makes me think of someone who is suing a diamond purveyor (or a diamond repairer).  I don’t think Complainant would create a domain name to advertise the fact it was party to a lawsuit, so such an interpretation is unlikely and strains common sense.  Likewise, <dallasdiamonddoctorclassaction.com> does not make me think of purchasing diamonds.  It makes me think of someone who is trying to put together (or has) a class action to sue a diamond purveyor.  No actual confusion was reported by any party.  The mark is being used in its correct sense…because it refers to Complainant (which is what Complainant’s real objection is).  While Complainant might not like this or feel it has been damaged, that issue is beyond the scope of the UDRP.  This Panelist would not find any potential confusion.

 

UDRP precedent is clear adding the geographic term “Dallas” does not adequately distinguish the <dallasdiamonddoctorclassaction.com> domain name from Complainant’s mark.

 

Therefore, I would say the first element fails.

 

Rights or Legitimate Interests

Policy ¶ 4(c)(i) provides Respondent has rights if “before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.  While the scope of legal professional ethics is beyond a UDRP proceeding (another reason to decline jurisdiction of this matter), Respondent is offering a real service to the public.  Respondent is really looking for consumers who have been cheated by Complainant and want to sue Complainant (although such consumers may not exist).  Regardless of the truth of the matter (which this Panel understands is hotly contested between the parties), Respondent is actually offering a bona fide service.

 

It is fair use of Complainant’s mark to correctly identify Complainant under Policy ¶ 4(c)(iii).  Respondent is actually referring to Complainant.  Just because Complainant has trademarked the “Diamond Doctor” phrase does not remove it from the English language lexicon.  Respondent may have fair use of Complainant’s mark.  Respondent does not intend to obtain a commercial gain by misleadingly diverting consumers.  Complainant and Respondent are not in the same channels of commerce.  They don’t compete.  Therefore, Respondent is making a fair use of Complainant’s mark.

 

The last question is whether Respondent is “tarnishing” Complainant’s mark.  To say Respondent’s actions “tarnish” the mark seems to be exaggerating.  Respondent is using the mark in such a way that the origin of the goods remains clear.  There is no competition between Complainant and Respondent.  Respondent is doing nothing to reduce the distinctiveness of Complainant’s mark.  If there are any problems with Complainant’s goods, this is due to Complainant’s actions.

 

Therefore, I would say the second element fails.

 

Registration and Use in Bad Faith

Bad faith must exist in both the registration and use of a domain name.  The majority claims only Policy ¶ 4(b)(iv) is applicable, which reads “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the site or location.”

 

Some parts of this are easier to answer than others.  There is no doubt Respondent intends to profit from its domain names.  Otherwise, Respondent would have no motivation to have the domain names.

 

There is no doubt Complainant is not sponsoring Respondent’s attempts to locate clients to sue Complainant.  No rational consumer would ever think Complainant was endorsing Respondent’s actions.

Respondent is actually using Complainant’s mark to refer to Complainant…and only Complainant.  Respondent would not want to solicit consumers who wanted to sue other jewelers (at least with these web sites).  Respondent wants to solicit consumers who wanted to sue THIS jeweler.  Complainant does not intend to create any confusion and none has been created.

 

Therefore, I would say the third element fails because there is no bad faith registration and use under Policy ¶ 4(b).

 

Houston Putnam Lowry, Chartered Arbitrator, panelist