Chopard International just won control of the domain name HappyDiamonds.com which was registered on November 1, 2002.
The domain is going to a parked page and I can tell you as a buyer of Chopard Jewelry the term Happy Diamonds is a major brand for the company and they have held a trademark on the term since 1979.
The issue for me is how is it possible for a brand that sells VERY expensive jewelry allow someone to use a direct match domain for 13 years before deciding we should take some action on this?
If you’re wondering, yes Chopard does own the new gTLD Happy.Diamonds but they were not the original registrant. The domain was transferred or sold to Chopard in January of this year (I didn’t find a UDRP or URS for happy.diamonds)
Here are the highlights of this three member UDRP:
The Complainant, Chopard International SA, is a luxury brand owner in the watch and jewelry industry. The Complainant was first established in 1860 in Switzerland. The Complainant has offices in a dozen countries, including in Hong Kong, China, where its first boutique opened in 1983. One of the Complainant’s collections of luxury watches and jewelry is marketed and sold under the HAPPY DIAMONDS brand.
The Complainant owns a number of international trade mark registrations for HAPPY DIAMONDS mostly in respect of watches adorned with diamonds, spectacles, various items of jewelry and writing materials (the “Trade Mark”). The earliest of these was registered on July 2, 1979 (international registration No. 446502). The Complainant has also held a Hong Kong registration for the Trade Mark since November 4, 1986 (Hong Kong registration No. 19890080).
“”The Respondent submits it has been making preparations to use the Disputed Domain Name to retail a mobile phone the Respondent was designing in 2002. The Respondent states he intended to market these phones using the brand and mark HAPPY, and it was for this reason that the Disputed Domain Name was registered. The Respondent noted that for this intended use, he also registered the domain name on the same date that he registered the Disputed Domain Name.””
The three member panel found:
“The Complainant never authorized the Respondent to utilize the Trade Mark, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent.
Given the exclusive trade mark rights that reside in the Complainant (and have resided in the Complainant since 1979), the Respondent could not legitimately acquire any public association between himself and the Trade Mark, at least for goods which are either identical or sufficiently similar to those listed on the Complainant’s trade mark registrations, without infringing on the exclusive trade mark rights of the Complainant.
Additionally, the Respondent’s use of the Disputed Domain Name over the years cannot be said to have been bona fide – the Respondent has not used the Disputed Domain Name for purposes other than linking it to a parking page containing numerous references to the Trade Mark and displaying sponsored links to competitors’ websites and non-official websites offering the Complainant’s products for sale, thus generating profits for the Respondent and creating a false impression of association or affiliation with the Complainant.
The Respondent claimed “it has been making preparations to use the Disputed Domain Name to retail a mobile phone the Respondent was designing in 2002”. However, the only evidence provided by the Respondent to support his claim consists of four images showing two digital designs of (outdated) mobile phones with inlaid diamond clusters and the fact that he registered another domain name at the time he registered the Disputed Domain Name. For the reasons set out below, the Panel finds that this evidence does not meet the required threshold.
Sub-paragraph 4(c)(i) of the Policy requires the Respondent to provide proof of “demonstrable preparations” to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent has not provided any evidence about the business other than an intention (supposedly ongoing for the last 12 years) to develop it at some indeterminate time in the future. For example, the Respondent has not provided a business plan or any evidence regarding potential partners, the proposed technology or how it would function, how the business would be financed, a timetable, a draft website, or indeed, an explanation of the delay in developing the business or a website since 2002.
In circumstances where the Respondent has owned the Disputed Domain Name for 13 years and has made no use of it other than to obtaining revenue by exploiting the reputation and goodwill of the Complainant’s Trade Mark, the Panel finds that the provision of two digital images showing old mobile phones bearing the word “happy” and inlaid diamonds does not constitute evidence sufficient to prove demonstrable preparations by the Respondent to use the Disputed Domain Name in connection with a proposed business or any other bona fide offering of goods or services.
The Respondent claims that he registered the Disputed Domain Name innocently and that he had no knowledge of the Trade Mark. The Respondent claims that he and the Complainant “live thousands of miles apart and have never had contact”. (The Panel notes that the Complainant sent a letter to the Respondent on November 13, 2014 and the parties exchanged email correspondence until April 2015.)
In light of the significant reputation of the Complainant and the Trade Mark, the Panel finds that it is more than likely than not that the Respondent had knowledge of both the Complainant and the Trade Mark when it acquired the Disputed Domain Name.
Further, as discussed in relation to bona fide use above, the Respondent’s use of the Disputed Domain Name has not been in good faith. Rather the Respondent appears to have been using the Disputed Domain Name predominantly as an attempt to misdirect and/or divert Internet users to its website and thus increase the profits made from the cost per click advertisements it contains.
The Respondent claims that he was not responsible for these advertisements as they were generated automatically by the Respondent’s
Registrar, however previous UDRP panels have found that this is not sufficient to cure bad faith where elements of cybersquatting are otherwise present (see, e.g., Owens Corning v. NA, WIPO Case No. D2007-1143). Given the inference made as to registration in bad faith, the Panel is not satisfied that the Respondent had no influence over the type of links that appeared of the landing page. In any event, the Respondent did not cease to use the Disputed Domain Name for this purpose even after he was expressly made aware of it by the Complainant in November 2014.
The Respondent has invoked the doctrine of laches to argue that the element of registration and use in bad faith is not made out. However, the principle established by a number of UDRP panels is that the doctrine or defense of laches as such does not generally apply to proceedings under the UDRP.
This is because the principal concern of the UDRP is to avoid ongoing or future confusion as to the source of communications, goods or services
The Panel finds no reason to depart from this principle, particularly where the transfer of the Disputed Domain Name to the Complainant would not create any potential damage or risk of confusion for Internet users as the Respondent has only used the Disputed Domain Name in relation to a parking page and has not become known by the Disputed Domain Name.
The Complainant succeeds on the third element of the Policy.
7. Decision
