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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Signet Group Plc v. Domain Admin, Networktransfers.com

Case No. D2008-1743

1. The Parties

The Complainant is Signet Group Plc, London, of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Herbert Smith, of the United Kingdom.

The Respondent is Domain Admin, Networktransfers.com, of Tuvalu.

2. The Domain Name and Registrar

The disputed domain name <ernestjones.com> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2008. On November 12, 2008, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On November 13, 2008, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2008.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on January 5, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns United Kingdom trademark registrations for ERNEST JONES, No. 1511798, granted on August 20, 1993, in international class 14; ERNEST JONES FAMILY RING, No. 1520015, granted on April 29, 1994, in international class 14; ERNEST JONES FAMILY JEWELLERY, No. 1520103, granted on April 5, 1994, in international class 14; ERNEST JONES FAMILY COLLECTION, No. 1520104, granted on February 4, 1994, in international class 14; ERNEST JONES THE DIAMOND AND WATCH SPECIALIST, No. 2283215, granted on March 29, 2002, in international classes 14, 16, 18, 20, 21, 34, 35, 36, 37, and 42; ERNEST JONES PLATINUM COVER, No. 2147475, granted on June 19, 1998, in international classes 14 and 36; ERNEST JONES, No. 2283248, granted on March 29, 2002, in international class 35; and No. 1519932, granted on March 4, 1994, in international class 37. Complainant further owns a Community trademark registration for ERNEST JONES, No. 2184794, granted by the Office of Harmonization of the Internal Market on December 9, 1998, in international classes 14, 18, and 37.

Ernest Jones Limited, the Complainant’s subsidiary, operates a large chain of retail stores throughout the United Kingdom trading under the name Ernest Jones, being the second largest specialty retail jewellery brand in the United Kingdom.

Since September 2006, the Complainant has also operated an online store at <ernestjones.co.uk>.

The disputed domain name <ernestjones.com> was registered on April 7, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant owns nine marks consisting of or comprising the ERNEST JONES name.

Seven out of the nine trademarks owned by the Complainant were registered prior to the Respondent’s registration of the disputed domain name in 1999.

The ERNEST JONES trademarks are used by Ernest Jones Limited of which the Complainant is the ultimate parent company.

Ernest Jones Limited operates a large chain of retail stores throughout the United Kingdom trading under the name Ernest Jones, and is the second largest specialty retail jewellery brand in the United Kingdom. The first store was opened in 1949 in Oxford Street, London.

Since September 2006, the Complainant has also operated an online store at “www.ernestjones.co.uk”.

The disputed domain name <ernestjones.com> is identical to the Complainant’s trademark ERNEST JONES.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Furthermore, the Complainant contends that from at least February 14, 2008, up to June 26, 2008, the website “www.ernestjones.com”, to which the disputed domain name resolved, transferred Internet users to a website entitled “Welcome to ernestjones.com” which displayed a search box apparently linked to the Google Search engine.

Moreover, from June 26, 2008, up to November 3, 2008, the website “www.ernestjones.com” transferred Internet users to a website entitled “Ernestjones.com - Engagement rings Resources and Information. This website is for sale!”, which contained a series of sponsored links to Complainant’s competitor’s websites, as part of the domain name action site Sedo.com’s domain name parking service. Said service is designed to generate advertising revenue.

As of November 12, 2008, the disputed domain name transferred users to a website entitled “Ernestjones.com - diamonds carat Resources and Information”, and it has sponsored links to other online locations that sell jewellery, including one for Goldsmiths, a competitor of the Complainant and it subsidiary Ernest Jones Limited.

None of the above-mentioned activities constitutes the use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Moreover, the Complainant contends that neither the Complainant nor its subsidiary Ernest Jones Limited have licensed or otherwise permitted the Respondent to use the ERNEST JONES trademark or any other marks.

In addition, the Complainant contends that the Respondent has never carried out business under, or been known commonly by the name “Ernest Jones” or any other similar name.

The Respondent has not made and is not making a noncommercial or fair use of the disputed domain name as it is attracting, for commercial gain, Internet users to its website and to the Complainants’ competitor’s websites.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent has registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has submitted relevant evidence showing that it owns rights in the trademark ERNEST JONES.

The disputed domain name is <ernestjones.com>.

The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the complainant must prove is that the respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and therefore has not made such showing.

Furthermore, the Complainant has submitted relevant evidence showing that the Respondent is attracting, for commercial gain, Internet users to its website and to the websites of Complainant’s competitors. Such use cannot be considered a bona fide use, or fair or noncommercial use.

Moreover, the Complainant has submitted relevant evidence showing that the disputed domain name is parked and for sale through the well-known domain name auction site Sedo.com, which in the circumstances of this case cannot be considered a bona fide use of the disputed domain name.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “Ernest Jones”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, in accordance with paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.

The Policy in its paragraph 4(b) sets out various circumstances that may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant owns United Kingdom and Community registrations for the trademark ERNEST JONES, widely known in the jewellery business, which were first registered in 1993, pre-dating the registration of the disputed domain name on April 7, 1999.

Moreover, the Complainant operates the website “www.ernestjones.co.uk” (corresponding to the domain name <ernestjones.co.uk>, registered on August 11, 1998), which is almost identical to the disputed domain name.

Therefore, the Panel finds that the Respondent in all likelihood was aware of the trademark ERNEST JONES before registering the disputed domain name, which evidences its bad faith registration.

Moreover, it has been proved that by using the disputed domain name <ernestjones.com> the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the links thereon.

This is evidenced by the fact that the Respondent’s website “www.ernestjones.com” has sponsored links that transfer visitors to other on-line locations, which offer services which compete with or are strongly related to the ones offered by the Complainant.

Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith, and that the Complainant has therefore made out the third element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ernestjones.com> be transferred to the Complainant.

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Miguel B. O’Farrell
Sole Panelist

Date: January 12, 2009