Fine Diamond of Domain Names

Complainants have been the owners of well-known marks WINSTON and HARRY WINSTON for fine jewelry and watches since 1932, which marks are especially associated in the minds of the public with fine diamonds.  Complainants seek transfer of the disputed domain name www.harrywinstondiamond.com from the Respondent h.    Respondent failed to reply to the Complaint.

In holding that the disputed domain name is confusingly similar to the Complainants' mark, as a threshold matter the Panel found that a trademark registration adequately demonstrates a complainant's rights in a mark.  The addition of the generic term "diamond" and the top-level domain ".com" to Complainants' mark does not effect the domain name for the purpose of determining whether it is confusingly similar. 

The disputed domain name resolved to a website containing various links to websites featuring jewelry and other products competitive with Complainants' products. Determining that Respondent had no rights or legitimate interest in the disputed domain name, the Panel inferred that the Respondent collects click-through fees for each internet user redirected to competing commercial websites.  The Panel concluded that this was a bona fide offering of goods or services under the Policy, not a legitimate non-commercial or fair use.

Ordering transfer of the disputed domain name to Complainants, the Panel lastly concluded that the Respondent's use of the disputed domain name constituted a disruption of the Complainant's businesses and evidenced bad faith under the Policy due to the website providing internet users with links to various websites offering competing goods.  The Panel also indicated that the domain name will likely cause confusion as to Complainants' sponsorship of, and affiliation with, the resulting website and, consequently, the use of a confusingly similar domain name for Respondent's own commercial gain is evidence of bad faith registration and use under the Policy.  Interestingly, the Panel found further evidence of bad faith by Respondent's intentional hiding of its true identity by providing false and incomplete contact information.  Respondent and its address were both listed as "h" and the Respondent's administrative contact was listed as "hh" in the US with a telephone number of "10000000000".  As the Panel has done in the past, a finding of bad faith was founded (at least in part) on Respondent's failure to provide any contact information.  Harry Winston, Inc.  and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266