Decisión del Panel Administrativo nº DAU2021-0028 of WIPO Arbitration and Mediation Center, October 04, 2021 (case Argyle Diamonds Limited v. Domain Manager / Argyle Diamond Investments Pty Ltd)

Resolution DateOctober 04, 2021
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer
DominioAustralia (.au)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Argyle Diamonds Limited v. Domain Manager / Argyle Diamond Investments Pty Ltd

Case No. DAU2021-0028

1. The Parties

The Complainant is Argyle Diamonds Limited, Australia, represented by Griffith Hack Lawyers, Australia.

The Respondent is Domain Manager, Australia / Argyle Diamond Investments Pty Ltd, Australia, represented by Chris Ryan Legal, Australia.

2. The Domain Name and Registrar

The disputed domain name [argylediamondinvestments.com.au] is registered with Synergy Wholesale Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On July 16, 2021, Synergy Wholesale Pty Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 30, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 6, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2021. The Response was filed with the Center on August 26, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 20, 2021. 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, and its related bodies corporate, has been operating the Argyle diamond mine in Western Australia since 1983. As part of its business, the Complainant has appointed a number of Authorised Partners and Select Atelier master jewellers around the world who offer for sale and sell the products of the mine.

According to the Response, the Complainant ceased production at the Argyle diamond mine in November 2020.

According to the Complainant, the Complainant has been promoting its products and services from a website at “www.argylepinkdiamonds.com.au” since 2009. This website, and other promotional collateral used by the Complainant, use a pink, black and white colour scheme. One example of the use of this colour scheme is what the Complainant refers to as the Argyle Trade Indicia:

Although on the website referred to above, the words ARGYLE PINK are currently presented in black and DIAMONDS is in pink.

The Complainant has provided evidence of a number of registered trade marks including:

(a) Australian Registered Trade Mark No. 628889, ARGYLE, which has been registered with effect from May 1994 in respect of all goods in International Class 14 including diamonds, other precious stones and jewellery incorporating the same;

(b) Australian Registered Trade Mark No. 1090002, ARGYLE, which has been registered with effect from December 2005 in respect of a range of services in International Classes 35, 37, 40, and 42 including retailing of diamonds, gems and other precious stones, retailing of jewellery, and valuation of diamonds, gemstones, and other precious stones;

(c) Australian Registered Trade Mark No. 1222118, ARGYLE DIAMONDS, which has been registered with effect from January 2008 in respect of the range of goods and services in International Classes 14, 35, 37, 40, and 42 referred to above.[1]

The Complaint also includes evidence of registrations for ARGYLE PINK DIAMONDS, ARGYLE PINK DIAMONDS SELECT ATELIER and ARGYLE PINK DIAMONDS AUTHORISED PARTNER, respectively Australian Registered Trade Marks Nos 1278753, 1264598 and 1264600. In addition, the Argyle Trade Indicia referred to above is Australian Registered Trade Mark No. 1933517 which has been registered with effect from June 2018 in respect of the relevant goods and services in International Classes 14 and 35.

So far as the record in this proceeding discloses, the Respondent was incorporated under its current name on November 3, 2016. Its principal business is the retail sale of pink diamonds from the Complainant’s Argyle diamond mine. According to the Response, this business also includes advising clients about pink diamonds as investments.

On August 17, 2017, the Respondent applied to register ARGYLE PINK DIAMOND INVESTMENTS as a trade mark in Australia in respect of a range of services in International Class 36. On November 30, 2017, the Registrar of Trade Marks issued an Adverse Report raising objections to the registration of this application. The application lapsed on March 12, 2019 without the Respondent attempting to overcome the objections.

On September 6, 2018, the Respondent registered the disputed domain name. It resolves to a website promoting the Respondent’s services.

On November 7, 2019, the Respondent applied to register ARGYLE DIAMOND ANALYTICS as a trade mark in Australia in International Class 1, specifying the “goods [and services]” as “Argyle Diamond Analytics; Argyle diamonds; Buy and sell Argyle diamonds; Financial reports; certificates; Argyle certificates; Rarity reports; Data Driven Decision making; pink diamonds; blue diamonds; red diamonds; financial growth; predictive systems; statistics; value; certified; value”. An Adverse Report against this application was issued on May 19, 2020 and a second adverse report on August 14, 2020 following several submissions from the Respondent. On September 8, 2020, the Respondent requested withdrawal of this application and it was subsequently withdrawn on September 9, 2019.

On January 23, 2020, the Complainant arranged for a first cease and desist letter to be sent to the Respondent.

On February 18...

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