The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Swarovski AG of Triesen, Liechtenstein, Liberia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing contact details.
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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2011.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 20, 2011. 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 the owner of numerous registrations for trademarks consisting of the word “Swarovski”. These registrations include the following registration for the word mark SWAROVSKI with basic registrations in Liechtenstein dating back to 1988 and/or designation to Liberia or South Africa:-
Serial No.
Trademark
Category
Reg. No.
Class
Registration Date
1
SWAROVSKI
International
857107
2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35, 41
03-11-2004
2
SWAROVSKI
International
663366
8, 9, 11, 14, 18, 21, 25, 26
17-10-1996
3
SWAROVSKI
International
528189
8, 9, 11, 14, 18, 21, 25, 26
06-09-1988
4
SWAROVSKI
South Africa
88/3880
14
17-05-1988
The uncontradicted evidence produced by the Complainant shows that the use and registration of its aforesaid SWAROVSKI mark occurred well over 20 years before the registration of the disputed domain name on August 26, 2010.
The Complainant has also registered domain name on January 11, 1996 and on April 16, 1998 (Annex H to the Complaint). It operates an official website at “www.” which enables Internet users to have access to information and buy genuine SWAROVSKI merchandise.
Other than the particulars shown on the printout of the data base searches conducted by the Complainant of the WhoIs database (as provided in Annex A to the Complaint), the verification response provided by the Registrar on December 10, 2010, the website to which the disputed domain name resolves as provided in Annex J to the Complaint, the WhoIs database search results and website visit record updated to December 23, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business. 5. Parties’ Contentions A. Complainant
The Complainant has made the following contentions:-
The Complainant has rights in the trademark SWAROVSKI with registrations extending to Africa and globally. It claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and presence in over 120 countries. Products were sold in its own 1,014 boutiques and through 819 partner-operated boutiques worldwide with revenue of 2.25 billion Euros in 2009. The Complainant has used the mark in connection with crystal jewellery stones and crystalline semi-finished goods for fashion goods, jewellery, home accessories, collectibles and lighting. The mark SWAROVSKI has become well-known in Africa due to its devotion of substantial time, effort and money to advertise and promote the mark (Annexes D and G to the Complaint].
The disputed domain name has incorporated the SWAROVSKI mark in its entirety. The addition of the word “line” as a suffice does not avoid confusion but aggravates the likelihood of confusion when the generic word “line” suggests a line or image of products offered by the Complainant. The disputed domain name is identical or confusingly similar to the Complainant’s SWAROVSKI Mark.
The Respondent has no rights or legitimate interests in the disputed domain name. It has never been known as such. The Complainant has not licensed the Respondent to use the SWAROVSKI mark in a domain name or in any other manner.
The disputed domain name aims to direct Internet users to the website to which it resolves where the operator of that site was offering rings and pendants. In the “Rings” section of the infringing website the Respondent provides users with information on the origin of Swarovski products and under the “Pendants” section it stated “Swarovski Crystallized Elements are considered the finest of their kind in the world and are crafted at the highest of quality in Austria. These Swarovski Crystal Pendants captivate your eyes with their uniform color, precision cut facets and dazzling array of shapes and sizes”. The Respondent is trying to create an impression that the website to which the disputed domain name resolves is associated with the Complainant and thereby attract consumers to that website to purchase jewelry made by the Respondent or the operator of that website in competition with the Complainant. Even if goods sold on the website are genuine, it does not give the Respondent the right to use the SWAROVSKI mark or constitute a bona fide offering of goods under the Policy.
The Respondent deliberately adopted the name “Swarovski AG” with AG being the abbreviation for “Aktiengesellschaft” which is part of the full name of the Complainant. They have also adopted an address which is almost identical to the Complainant’s address in Liechtenstein although the country is stated to be Liberia. Further, the fax number contains a country code for Belgium (“32”) suggests that it is false and fictitious because it does not contain enough digits to be a real and legitimate Belgium telephone number. The provision of false and fictitious name and address constitute a breach of the registration agreement.
As the Complainant’s SWAROVSKI mark is well known, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI mark at the time of registration. Further, the offering of goods of the same types as those being sold by the Complainant supports the contention that the Respondent was aware of Complainant’s mark and products at the time of registration and use of the disputed domain name.
The purpose of the Respondent’s use of the disputed domain name is to obtain commercial gain by attracting Internet users to the site to which the disputed name resolves where the Respondent’s jewelry are offered for sale. Such use of the disputed domain name must be expected to cause harm to the Complainant and disruption to its business. 6. Discussion and Findings A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex A to the Complaint, the information provided by the Registrar in its verification response on December 10, 2010 and the WhoIs search results updated to December 23, 2010 as provided by the Center.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center. B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he 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”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. 1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark SWAROVSKI by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”.
The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI as shown in Annexes “G” and “H” of the Complaint will make actual confusion among consumers likely.
It is well established practice to disregard the top-level part of the domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
After removing the said indistinctive elements and generic top-level domain, only the word “Swarovski” is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. 2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark SWAROVSKI decades prior to the Respondent’s registration of the disputed domain name on August 26, 2010. The Complainant has confirmed that the Respondent is not a licensee or authorized seller of the Complainant. The Respondent was not authorized to register or use the disputed domain name. However, Annex J to the Complaint shows that the website at the disputed domain name has used the Complainant’s registered word mark and Swan logo. There is also no evidence available to demonstrate any bona fide offering of goods or services. Reference is also made to the discussion under Section 3 below.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “Swarovski” in its domain name.
There is no evidence to show legitimate non-commercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves would be genuine Swarovski goods, in the Panel’s view, it does not necessarily provide the owner of such website the right to use the Complainant’s trademark and materials in that website. Sanofi-Aventis v. DomainsByP and Ravikant Singh,WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. 3. Registered and Used in Bad Faith
The choice of the name Swarovski AG shown in Annex A to the Complaint as the name of the registrant and use of an extremely similar (as the Complainant’s address) but ineffective address, itself supports the contention that the Respondent was aware of the Complainant and the SWAROVSKI trademark at the time of the registration of the disputed domain name. The fact that the Complainant has used and registered the SWAROVSKI mark in Liechtenstein and Liberia for decades before the Respondent’s registration of the disputed domain name (who claimed to be having an address in Liberia) lend further support to this.
The printout of the website at the disputed domain name as shown in Annex J to the Complaint contained the following information or materials:-
(a) the Swan logo device of the Complainant as well as its word mark SWAROVSKI appearing at the top left corner of the web page;
(b) a whole range of product names such as Bangles, Bracelets, Brooches, Crystals, Necklaces, Pendants, Rings, and jewelry sets are preceded by the word Swarovski; and
(c) the claim that it is a Swarovski Crystal Outlet.
In view of the Complainant’s unequivocal assertion that the Respondent is not its licensee or an authorized agent, the claim for selling SWAROVSKI items and a site operating as a Swarovski outlet as shown in the disputed website would be false claims. Similarly, the implied claim of legitimately using the Complainant’s Swan logo and SWAROVSKI trademark on the disputed website by putting them prominently on the website is also a false claim.
The Panel finds that the Respondent has registered the disputed domain name and intended to use the site primary for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
In this Panel’s view, it is not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the evidence available.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator of the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affliction, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Dated: February 2, 2011
Full & Egal Universal Law Academy