The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase, Sri Lanka.
The Respondent is Sami Hooti of Hampshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CentralNic and eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2010. On October 8, 2010, the Center transmitted by email to CentralNic and eNom a request for registrar verification in connection with the Domain Name. On October 8, 11 and 13, 2010, CentralNic and eNom transmitted by email to the Center verification responses 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 CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 10, 2010. 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 is a Liechtenstein corporation that holds trademarks used by the Swarovski group of companies. The Swarovski group, with some 25,000 employees worldwide and 2009 revenues of EUR 2.25 billion, manufactures and sells SWAROVSKI-branded crystal and gemstone jewelry, fashion accessories, and decorations, both online and in retail shops located in 43 countries including the United Kingdom.
In addition to design marks, the Complainant holds the following SWAROVSKI word marks in the United Kingdom and the European Union:
MARK JURISDICTION REGISTRATION NO. REGISTRATION DATE
SWAROVSKI
United Kingdom
1344959
Oct. 13, 1989
SWAROVSKI
United Kingdom
1344953
Dec. 1, 1989
SWAROVSKI
United Kingdom
1344955
Dec. 1, 1989
SWAROVSKI
United Kingdom
1344956
Jan. 29, 1990
SWAROVSKI
United Kingdom
1344954
Feb. 19, 1990
SWAROVSKI
United Kingdom
1344958
Apr. 10, 1990
SWAROVSKI
CTM
000120576
Oct. 15, 1998
The Domain Name was initially registered by an individual in the People’s Republic of China, who transferred the registration to the Respondent. According to the registrar’s WhoIs database, the registration was recorded on February 16, 2010. The Domain Name resolves to a website that advertises and sells a wide range of crystal jewelry and decorative items, quoting prices in several currencies and offering worldwide shipping for a flat rate. The “About Us” and “Contact Us” pages of the website simply provide a Yahoo email address with “swarovsky.crystal” in the address. A “FAQ” page begins with the following statement:
“www. (website) was registered in Hongkong in 1999. We have sold ‘swarovski’ style silver jewellery for years. We are dedicated to providing the best quality swarovski jewllery to our customers now. In 2010, swarovski will try harder to meet various demands from you.”
The website does not disclaim affiliation with the Complainant and does not identify the operator of the website or its relationship, if any, with the Complainant. The reference to “‘swarovski’ style” jewelry suggests to the discerning eye that some or all of the items sold might not be genuine articles produced by the Complainant.
The Complainant investigated the prior owner of the Domain Name in the People’s Republic of China and then communicated with the Respondent after learning that the Domain Name had been transferred to him. In a letter dated August 24, 2010, the Respondent claimed that he did not authorize the transfer of the Domain Name to himself and that his identity had been “hijacked”. He agreed to cooperate with the Complainant in arranging the transfer of the Domain Name to the Complainant but then failed to provide information and instructions required by the registrar to effect this change.
In response to communications from the Complainant and the Center, the Respondent sent the Complainant’s representative an email on October 15, 2010 stating that the Respondent was spending “way too much of my time” reading forms, emails, and “Complains” [sic] in connection with this dispute and “would like [his] time to be appreciated.” The Respondent asked for GBP 550 to compensate him for his time. The Respondent did not submit a Response to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant observes that the Domain Name is identical to its SWAROVSKI marks and argues that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant infers bad faith from the continuing use of the Domain Name for a website selling SWAROVSKI or “‘swarovski’ style” products and from the Respondent’s failure to transfer the Domain Name after denying an interest in it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant indisputably holds SWAROVSKI marks, and the Domain Name is identical to those marks. (The “.” element of the Domain Name is not distinctive or relevant for the determination that the Domain Name is identical or confusingly similar to the Complainant’s marks). Thus, the Panel finds that the first element of the Complaint has been established. B. Rights or Legitimate Interests
The Respondent did not submit a Response in this proceeding. In correspondence with the Complainant prior to this proceeding, the Respondent denied intentionally acquiring the Domain Name. Thus, there is no evidence in the record that the Respondent has any rights or legitimate interests in the Domain Name. The Respondent himself informed the Complainant that he had received complaints from consumers who provided their credit card details on the website and did not receive the goods they had ordered. On the available record, it is not clear that any legitimate business is conducted using the Domain Name, or that the website associated with the Domain Name is in any way connected with the Respondent.
Even assuming that the Respondent was involved in operating the website and used it to resell some genuine articles manufactured by the Complainant, the “nominative use” justification for a domain name reflecting a manufacturer’s mark would not apply in this case. This is commonly viewed as a conditional right based on the particular facts and circumstances of the case in question, with the decisions typically citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which enunciated conditions based on the application of trademark law principles to the domain name context. One of those conditions is that “[t]he site must accurately disclose the registrant’s relationship with the trademark owner”; another is that it must not be used to sell products other than those of the trademark owner. Here, there is no disclosure concerning the identity or relationship of the Respondent or any third-party website operator with the Complainant. Moreover, the website associated with the Domain Name sells “‘swarovski’ style” items that are not necessarily manufactured by the Complainant.
The Panel finds on the available record that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
It is undisputed that the Complainant’s SWAROVSKI marks are well known internationally and in the United Kingdom, where the Respondent is located. The Complaint attaches evidence of the mark’s appearance in advertising and publicity in the United Kingdom. The website associated with the Domain Name expressly offers “Swarovski” and “‘swarovski’ style” crystal jewelry and decorative objects, which demonstrates awareness of the Complainant’s marks and a probable intention of trading on their fame.
The Respondent denies intentionally acquiring the Domain Name or operating the associated website. His responses to the Complainant have been dilatory, however, and over the course of several months he has failed to furnish proof of identity and instructions to the registrar in order to effect the transfer of the Domain Name to the Complainant. In the Panel’s view, this conduct is irresponsible, especially given that the website associated with the Domain Name continues to operate and generates, by the Respondent’s own account, consumer complaints of possible fraud.
The Domain Name is plainly being used in bad faith within the meaning of the Policy, paragraph 4(b)(iv) (misleading Internet users for commercial gain). This suffices to establish the third element of the Complaint, since the Policy, paragraph 4(a)(iii), requires bad faith in the registration or in the use of the Domain Name (unlike the Uniform Dispute Resolution Policy that applies to “.com” and other top-level domains, which requires establishing bad faith in both the registration and use of a disputed domain name). The Panel finds that there was bad faith in the registration of the Domain Name as well. Either the Respondent did, in fact, register the Domain Name, for no discernable reason other than to trade on the fame of the Complainant’s marks, or another person used the Respondent’s name and address to register the Domain Name under false pretenses and then continued to use the associated website for misleading and possibly fraudulent activities. Both circumstances indicate bad faith in the registration, as well as the use, of the Domain Name. 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 the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: November 24, 2010
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