WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Comdot Internet Services Private Limited
Case No. D2007-1788
1. The Parties
Complainant is Swarovski Aktiengesellschaft, of Triesen, Liechtenstein, represented by SafeNames Ltd., of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Comdot Internet Services Private Limited, of Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2007. On December 6, 2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On December 14, 2007, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response stating that the above Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 19, 2007. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. Respondent did not submit any response by this date. Accordingly, the Center notified Respondent’s default on January 11, 2008.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on January 22, 2008. 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.
On January 15, 2008 Respondent submitted a belated email response without giving reasons for this delay. As the email was received prior to the Panel’s appointment, in the interests of having before it as complete a record as possible, the Panel has had appropriate regard to the content of the document and evidentiary weight thereof. Questions of timeliness and formal compliance with the Rules aside, the Panel notes that its contents do not in any case affect the Panel’s finding in this case.
4. Factual Background
Complainant Swarovski is the distributor of renowned Swarovski crystal glass and gem stone products, first manufactured in Austria in 1895. Complainant holds numerous registered trademarks for SWAROVSKI, including U.S. Registration No. 1739479, issued September 22, 1992. Complainant holds the domain name , among others incorporating the mark SWAROVSKI. Complainant registered its domain name in India on February 14, 2005. Respondent registered the disputed domain name on May 7, 2005.
5. Parties’ Contentions
Complainant contends, and Respondent’s late response denies, that the disputed domain name is confusingly similar with the SWAROVSKI mark in which it has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a timely response, the Panel would be entitled to decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel would also be entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Case No.95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). However in the interest of completeness, the Panel has at least considered Respondent’s late-filed response.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established sufficient rights in the SWAROVSKI mark through registration of the mark with the USPTO pursuant to paragraph 4(a)(i) of the Policy. See Innomed Techs., Inc. v. DRP Servs., NAF Case No. 221171 (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., NAF Case No. 198803 (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark pursuant to paragraph 4(a)(i) of the Policy, regardless of the addition of the generic top-level domain “.com.”. See Pomellato S.p.A v. Tonetti,WIPO Case No. D2000-0493 (finding identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Likewise, adding “www” to the beginning of the mark SWAROVSKI does nothing to distinguish the domain name from Complainant’s mark. See Google, Inc. v. and Jimmy Siavesh Behain, WIPO Case No. D2000-1240.
The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied
B. Rights or Legitimate Interests
Complainant asserts that Respondent lacks rights and legitimate interests in the domain name. Once Complainant has established a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See Clerical Med. Inv. Group Ltd. v. C,WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624 (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Nothing in the record persuades the Panel to conclude that Respondent has rights or legitimate interests in the disputed domain name.
Respondent is using the domain name to resolve to a commercial website that features links to various websites in direct competition with Complainant. Respondent presumably receives referral fees from advertisers listed on Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. See Wells Fargo & Co. v. Lin Shun Shing, NAF Case No. 205699 (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, NAF Case No. 139720 (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
There is no evidence that suggests that Respondent is commonly known by the domain name. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. See Gallup, Inc. v. Amish Country Store, NAF Case No. 96209 (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, NAF Case No. 139720 (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that paragraph 4(c)(ii) of the Policy does not apply).
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website that features links to Complainant’s competitors. The Panel finds that such use constitutes bad faith registration and use of the disputed domain name under paragraph 4(b)(iii) of the Policy, as it is intended primarily to disrupt Complainant’s business. See EBAY, Inc. v. MEOdesigns,WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of paragraph 4(b)(iii)) of the Policy.
Respondent presumably receives referral fees from advertisers listed on Respondent’s website. Such use is an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s SWAROVSKI mark as to the source, sponsorship, and affiliation of Respondent’s website that resolves from the disputed domain name. The Panel therefore finds that Respondent has engaged in bad faith registration and use pursuant to paragraph 4(b)(iv)of the Policy. See H-D Michigan, Inc. v. Petersons Auto., NAF Case No. 135608 (finding that the disputed domain name was registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Furthermore, the Respondent contacted the Complainant and requested $1,350 for the transfer of the domain name to Complainant, an amount in excess of its out-of-pocket costs. This also constitutes bad faith under paragraph 4(b)(i) of the Policy.
The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 be transferred to Complainant.
Sandra J. Franklin
Sole Panelist
Dated: February 5, 2008
Full & Egal Universal Law Academy