Gemological Institute of America, Inc. v Uriel Kaykov, NYC Diamond District

WIPO Case No. D2025-0278

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gemological Institute of America, Inc. v. Uriel Kaykov, NYC Diamond District
LLC

Case No. D2025-0278

1. The Parties

Complainant is Gemological Institute of America, Inc., United States of America (“United States”), represented by Lee & Hayes, PC, United States.

Respondent is Uriel Kaykov, NYC Diamond District LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <gailab.org> (the “Domain Name”) is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2025. connection with the Domain Name. On January 24, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Gemological Appraisal Industry, Inc. (“GAI”)) and contact information in the Complaint. The Center sent an email communication to Complainant on January 28, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 1, 2025.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2025. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on March 3, 2025.

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The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 20, 2025. 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

Complainant is a corporation with its principal place of business in California, the United States. Established in 1931, Complainant is one of the leading authorities on diamonds, colored stones, and pearls. As a public benefit, nonprofit institute, Complainant is one of the leading sources of knowledge, standards, and

education in gems and jewelry. Complainant discovers (through GIA Research), imparts (through GIA public. With 1,200 employees, Complainant’s scientists, diamond graders, and educators are regarded as foremost authorities in gemology.

Internationally, Complainant has distinguished itself as the preeminent source of gemological knowledge and professionalism. Complainant is the creator of the revolutionary 4Cs of diamond value (carat, color, clarity, and cut). It is also the birthplace of the trademarked International Diamond Grading System. Today, Complainant’s D-Z color-grading scale, Flawless–I3 clarity-grading scale and Excellent-to-Poor cut-grading scale are recognized by virtually every professional jeweler and savvy diamond buyer in the world.

For over 80 years, Complainant has been providing jewelers and jewelry professionals with expert training and world-class professional credentials in diamonds, colored stones, pearls, jewelry manufacturing arts, and design. Since at least as early as 1931, Complainant has consistently and continuously used, advertised, and promoted its goods and services under the mark GIA throughout the United States and worldwide.

Complainant is the owner of many trademark registrations in the United States and worldwide. In the United States, Complainant owns the following GIA marks, which cover a very wide range of products and services:

Registration No.	Word Mark	Goods and Services	Registration Date
2236549	GIA	Classes 9, 16 and 35	April 6, 1999
2370767	GIA	Class 42	July 25, 2000
2809656	GIA	Classes 9 and 11	February 3, 2004
2575357	GIA	Class 14	June 4, 2002
2333120	GIA	Class 41	March 21, 2000
5613292	GIA ID	Class 9	November 20, 2018
7280237	GIA ALUMNI COLLECTIVE	Class 35, 41 and 42	January 16, 2024
5613292	GIA ID100	Class 9	November 20, 2018
5743363	GIA ALUMNI	Class 35	May 7, 2019
(design)
4331240	GIA GIA KNOWLEDGE	Class 9, 16, 41 and 42	May 7, 2013
INTEGRITY EXCELLENCE 1931 (design)
5228431	GIA DIAMONDCHECK	Classes 9, 16 and 42	June 20, 2017
(design)
6019290	GIA (design)	Classes 9, 14, 41 and 42	March 24, 2020
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The domain name <gia.edu> has been registered since March 30, 1996, and the website to which it resolves prominently features the GIA marks.

The Domain Name was registered on June 27, 2013. It resolves to a website that purports to be for the
Gemological Appraisal Industry and offers services that are in direct competition with Complainant’s services

(e.g., jewelry and gemstone appraisal, certificates, and reports).

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

(i) Identical of confusingly similar

Complainant owns trademark registrations for its GIA marks worldwide and has provided evidence of its trademarks in the United States. Complainant contends its trademark registrations prima facie satisfy the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. Additionally, longstanding use and widespread unsolicited media coverage demonstrate the public readily associates the GIA mark with Complainant’s high-quality goods and services. As Complainant’s evidence demonstrates, the GIA mark is a highly distinctive acronym commonly associated with Complainant and its goods and services. As a result of Complainant’s promotion, use, and sale of branded goods and services under its GIA marks throughout the United States and worldwide, Complainant has built up valuable goodwill in these marks.

Complainant contends the Domain Name is an obvious intentional misspelling of the GIA marks. The term “lab” should be disregarded, as it is merely descriptive of the fact that Respondent holds itself out as a “laboratory.” Moreover, “laboratories” are of common usage in the industry for providing identification, appraisal, and valuation services for gems.

Finally, the website served by the Domain Name includes tests and grading specifically created by to leverage Complainant’s mark recognition via this impersonation. It is respectfully submitted that Complainant has satisfied the requirements under the first element of the Policy, and that the Domain Name is confusingly similar to trademarks in which Complainant has rights.

(ii) Rights or legitimate interests

Complainant submits that Respondent has no rights or legitimate interests with respect to the Domain Name because Respondent cannot meet any of the situations enumerated in the Policy at paragraph 4(c) that would indicate there is a legitimate interest in the Domain Name.

Complainant contends it is well understood by panels that promoting competing goods or services using a domain name confusingly similar to a complainant’s mark is not a bona fide offering of goods or services. Here, Complainant did not provide Respondent authorization or any other form of permission to use any

mark or domain name similar to its GIA marks. As the submitted evidence demonstrates, Respondent is offering goods and services that compete with Complainant. Respondent is also utilizing and promoting standards created by Complainant on its website. Respondent is using the Domain Name, which is
confusingly similar to the GIA marks, and Complainant’s goodwill in its GIA marks, to attempt to trade off
Complainant’s goodwill to trick consumers into believing Respondent is somehow associated with
Complainant.

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It is respectfully submitted that Complainant has satisfied the requirements under the second element of the

Policy and Respondent has no rights or legitimate interests in the Domain Name.

(iii) Registered and used in bad faith

Complainant submits that Respondent registered and uses the Domain Name in bad faith, namely, by using it, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or of a product or service on Respondent’s site.

Complainant recently became aware of Respondent’s Domain Name. The Domain Name directs users to a website offering services related to jewelry appraisal and gemological services – those which are directly competitive to Complainant. The Domain Name’s website also utilizes GIA’s “4C’s” of diamonds and touts itself as “The Diamond Industry’s Certificate of Choice!” – despite it being globally known that Complainant’s reports are considered to be the world’s premier credentials of diamond quality. Respondent appears to acknowledge consumer confusion with Complainant, as its “About Us” page attempts to claim no affiliation with Complainant “besides the fact that all gemologists of GAI are GIA GG CERTIFIED,” and despite the fact that Complainant does not “certify” gemstones or people.

As listed on the New York Secretary of State’s website, Respondent, NYC Diamond District, lists one of its four “assumed names” as “GIA Gemological Appraisal Industry”.

Respondent’s use of the Domain Name is intentionally confusing and deceptive in that it causes the public to believe Respondent is acting on behalf of or under the authority of Complainant. Furthermore, the Domain Name violates Complainant’s trademark rights in its GIA marks. Complainant has not provided Respondent authority to use its GIA marks, or to own, operate, maintain, or register websites in its name, or to utilize a web address confusingly similar to its GIA marks. Respondent’s use of the Domain Name is a violation of Complainant’s intellectual property rights and a violation of the Rules.

Complainant owned federal trademark registrations in its GIA marks before Respondent registered the
Domain Name. Complainant is also globally well known. It is therefore likely that Respondent had
Complainant’s trademark in mind when registering the Domain Name. Additionally, Respondent should have
known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser

search.

Complainant maintains the evidence demonstrates Respondent did, in fact, know about Complainant and its website. Panels have held that “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 3.7.

Complainant claims the overall circumstances here establish bad faith in this scenario: (1) the evidence demonstrates Respondent did in fact know about Complainant’s trademark rights in its GIA marks, but registered and is using a Domain Name that is a clear intentional misspelling of the GIA marks; (2) Respondent, through use of a hidden disclaimer, acknowledges consumer confusion, and even goes on to falsely state “all gemologists of GAI are GIA GG CERTIFIED;” (3) Respondent offers goods and services which compete with Complainant, and uses standards specifically created by Complainant; and (4) Respondent prominently touts itself as “The Diamond Industry’s Certificate of Choice!” despite the fact that it is known around the world that Complainant’s diamond reports are the standard; and (5) the parties’ business locations are literally one block from each other. To summarize, Respondent is using the GIA marks, and the goodwill associated therewith, for Respondent’s own commercial gain.

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Complainant submits that it has satisfied the requirements under the third element of the Policy by alleging and providing evidence to demonstrates the Domain Name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. Those elements are as follows:

(i) the Domain Name registered by Respondent 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) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the Domain Name. WIPO Overview 3.0, section 1.7.

WIPO Overview 3.0, section 1.8.

Complainant has shown rights in respect of its GIA trademark for the purposes of the Policy. and “a” being reversed and the descriptive word “lab” being added, which does not avoid confusion. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

In this case, the Panel exceptionally takes note also of the content of the website associated with the domain name which offers diamonds, colored stones, and pearls under the name GAI (Gemological Appraisal Industry) that compete with Complainant, while using and promoting standards created by Complainant, to confirm the confusing similarity. WIPO Overview 3.0, section 1.15.

Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. The Panel determines the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant did not provide Respondent authorization to use any mark or domain name similar to its GIA marks. Moreover, Respondent is offering goods and services that compete with Complainant, while using and promoting standards created by Complainant. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise

abuses a complainant’s mark.”

In the present case, the Panel finds that Respondent registered and is using the Domain Name in bad faith by using it to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or a product or service on Respondent’s site. The circumstances establish Respondent’s bad faith, including: (i) evidence to suggest it is likely Respondent knew about Complainant and its GIA trademark and target that mark when registering the Domain Name, which is an intentional misspelling of Complainant’s GIA marks; (ii) Respondent offers goods and services which compete directly with Complainant, and uses standards created by Complainant; (iii) Respondent, through use of a disclaimer, falsely states “all gemologists of GAI are GIA GG CERTIFIED”; and (iv) Respondent touts itself as “The Diamond Industry’s Certificate of Choice!” despite it is known that Complainant’s diamond reports are the standard.

Accordingly, the Panel concludes that Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gailab.org> be transferred to Complainant.

/Christopher S. Gibson/ Christopher S. Gibson Sole Panelist

Date: April 5, 2025