The Complainant is D. Swarovski KG of Austria, represented by LegalBase (Pvt) Limited of Sri Lanka.
The Respondent is Domain Administrator of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 15, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 15, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response 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 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, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on January 18, 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 a company incorporated in Austria. It has been developing and producing high precision long-range optical instruments since 1987. The Complainant and its affiliates within the Swarovski group own a number of trademark registrations for the trademarks SWAROVSKI and SWAROVSKI OPTIK in numerous jurisdictions including China. One of the Complainant’s affiliates, Swarovski Optik KG, has registered the domain name which points to Swarovski Optik KG’s official website, located at “www.”.
The disputed domain name was created on April 30, 2010. The disputed domain name is used in connection with a website that displays sponsored links to third party commercial sites most of which are websites selling third party optical products. 5. Parties’ Contentions A. Complainant
(1) The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademarks
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks to which the Complainant has rights.
The Complainant asserts that WIPO panels had recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark, citing Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872. The Complainant then further alleges that it is likely that the consumers may mistype a domain name or use an alternate spelling and that the Respondent intentionally registered the disputed domain name which is confusingly similar to the Complainant’s trademarks in order to capitalize on the Complainant’s goodwill in its registered trademarks to divert Internet traffic to the website hosted at the disputed domain name thus constituting initial interest confusion. The Complainant cites Specialty Store Services, Inc. v. Horoshiy, Inc., & LaPorte Holdings, Inc, WIPO Case No. D2005-0015; Ticketmaster Corporation. v. Polanski, WIPO Case No. D2002-0166 and W. & G. Foyle Ltd. v. Robert G. Foyle, WIPO Case No. D2000-1543.
The Complainant asserts that the disputed domain name incorporates the Complainant’s registered trademarks SWAROVSKI and SWAROVSKI OPTIK in full, deviates from the marks only by omitting the letter “v” from “Swarovski” and by substituting the letter “k” with the letter “c” in the word “optik”.
The Complainant alleges that the misspelling of a word by omitting and substituting a single letter in a domain name is not sufficient to make the disputed domain name distinguishable in relation to the trademarks at issue.
The Complainant argues that the misspelling shows the Respondent’s attempt to confuse consumers by “typo-squatting”, citing precedents including Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; BzzAgent, Inc. v. c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187; Lemco, Inc v. Treasure Enterprise Ltd,WIPO Case No. D2010-0300; Playboy Enterprises International, Inc. v. SAND WebNames-For Sale,WIPO Case No. D2001-0094; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642 and Scandic Hotels AB v. xc2, WIPO Case No. D2007-0810.
The Complainant contends that the misspelling of the disputed domain name which is phonetically similar to the Complainant’s trademarks is deemed sufficient to establish confusing similarity to the Complainant’s registered trademarks, citing precedents including Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington WIPO Case No. D2003-0173; Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. Amcore & Company For sale domains $250 or best offer,WIPO Case No. D2003-0838.
(2) The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:
Firstly, the Complainant states that the Respondent has no connection or affiliation with Swarovski group and has not received any license or consent, express or implied, to use the Complainant’s registered trademarks, SWAROVSKI and SWAROVSKI OPTIK, in a domain name or in any other manner. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
Secondly, the Complainant asserts that the Respondent has never been known by the disputed domain name and has no legitimate interest in the trademarks, SWAROVSKI and SWAROVSKI OPTIK, citing Marriott International, Inc. v.Thomas, Burstein & Miller, WIPO Case No. D2000-0610.
Thirdly, the Complainant claims that the website hosted at the disputed domain name is being used as a click-through site which redirects traffic to other websites most of which advertise products that are in competition with the Complainant’s products. The Complainant alleges that operating a click-through site in the abovementioned manner is contrary to a bona fide offering of goods or services and a legitimate interest in the disputed domain name, citing St. Baldrick's Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707; Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation,WIPO Case No. D2007-0440; The Evening Store v. Henry Chan,WIPO Case No. D2004-0305; Swarovski Aktiengesellschaft v.Transure Enterprise Ltd.,WIPO Case No.D2009-1638 and Lilly ICOS LLC v. Saban Mihailovic,WIPO Case No. D2005-0356.
Fourthly, the Complainant argues that the Respondent has used the trademarks SWAROVSKI and SWAROVSKI OPTIK in the disputed domain name to mislead consumers for commercial gain by creating the impression that the Respondent is associated with the Complainant, citing the precedent Drexel University v. David Brouda,WIPO Case No. D2001-0067; Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
(3) The Respondent Registered and Is Using the Disputed Domain Name in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the basis of the following reasons:
Firstly, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant’s trademarks prior to registering the disputed domain name in April 2010. The Complainant asserts that its trademarks, SWAROVSKI and SWAROVSKI OPTIK, which have been used by the Complainant since 1987 is distinctive and well-known in China and internationally. The Complainant pointed out that numerous references to the Complainant’s trademarks, SWAROVSKI and SWAROVSKI OPTIK, are made in the “Related Searches” section of the website hosted at the disputed domain name and that the aforesaid website also displays sponsored links to businesses that sell products in competition with those offered by the Complainant. The Complainant contends that this prior knowledge constitutes bad faith in registration, citing the precedent F. Hoffman-La Roche AG v. Web Marketing Limited,WIPO Case No. D2006-0005 and DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003 and Telstra Corporation Ltd. v. Nuclear Marshmallows, supra.
Secondly, the Complainant argues that the Respondent’s registration and use of the disputed domain name as a click-through site creates “initial interest confusion”, which attracts, for commercial gain, Internet users to the website hosted at the disputed domain name because of its purported affiliation with the Complainant. The Complainant further alleges that it can be assumed that the Respondent receives commissions when Internet users click on the links contained in the website hosted at the disputed domain name, which constitutes bad faith registration and use of the disputed domain name, citing Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752; Movado LLC v. Titan Net,WIPO Case No. D2006-0824; Osuuspankkikeskus OSK v. R,WIPO Case No. D2006-0461 and Jafra Cosmetics, S.A. de C.V. v. Jafraproducts Admin,WIPO Case No. D2006-0416.
Thirdly, the Complainant asserts that the misspelling of the word of the trademark, SWAROVSKI OPTIK, in the disputed domain name by omitting and replacing letters is enough to evidence the Respondent’s bad faith registration, citing Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161 and Express Scripts, Inc. v. Kal Kuchora,WIPO Case No. D2005-1164.
Fourthly, the Complainant alleges that the Respondent would have expected that the registration and use of the Complainant’s well-known trademarks, SWAROVSKI and SWAROVSKI OPTIK, as a domain name by an entity that has no legitimate relationship with the marks would cause disruption to the Complainant’s business, citing AT&T Corp v. Woppies, WIPO Case No. D2000-1724; Popular Enters., LLC v. Am. Consumers First et al.,WIPO Case No. D2003-0742; Ameriquest Mortgage Co. v. Phayze Inc.,WIPO Case No. D2002-0861 and AT&T Corp. v. Fred Rice,WIPO Case No. D2000-1276.
Fifthly, the Complainant argues that the purpose of the Respondent’s use of the Complainant’s trademarks, SWAROVSKI and SWAROVSKI OPTIK, in the disputed domain name seems to be to obtain commercial gain, citing Microsoft Corporation v. Source One Management Services, Inc.,WIPO Case No. D2005-0508.
Sixthly, the Complainant asserts that the Respondent, without valid consent, utilizes the Complainant’s registered trademarks, SWAROVSKI and SWAROVSKI OPTIK, and redirects Internet users to the websites of the Complainant’s competitors, which constitutes bad faith in use. The Complainant cites Nikon Corp. v. Technilab, Inc.,WIPO Case No. D2000-1774; ebm papst St.Georgen GmbH & Co KG v. Admin, Domain,WIPO Case No. D2008-1380 and Swarovski Aktiengesellschaft v.Transure Enterprise Ltd.,WIPO Case No. D2009-1638. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademarks, SWAROVSKI and SWAROVSKI OPTIK, in many countries around the world. The Complainant has acquired substantial goodwill in the trademarks.
Compared to the Complainant’s trademarks, the disputed domain name completely reproduces the trademarks with the only difference being the omission of the letter “v” from the word “swarovski” and the substitution of the letter “k” with the letter “c” in the word “optik”, which does not negate the disputed domain name’s similarity to the Complainant’s trademarks.
The Panel holds that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
Given that there is no Response, the Panel bases its decision on the information and evidence submitted before it, and given the manner which the Respondent used the confusingly similar domain name in connection with a “click-through website” that redirects traffic to other websites most of which advertise products that are in competition with the Complainant’s products, finds that the use of the disputed domain name by the Respondent is contrary to a bona fide offering of goods or services, or a legitimate noncommercial or fair use, citing St. Baldrick's Foundation Inc. v. Web Advertising,Corp., supra.
Therefore, the Panel finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has developed a reputation for the trademarks SWAROVSKI and SWAROVSKI OPTIK in the field of high precision long-range optical instruments since 1987 and the Complainant’s trademarked products are sold worldwide. Moreover, the website hosted at the disputed domain name provides links to other websites most of which advertise products that are in competition with the Complainant’s products very strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.
In addition, the Respondent’s lack of rights or legitimate interests in the trademarks SWAROVSKI and SWAROVSKI OPTIK as well as the fact that the disputed domain name has been used as a “click-through” scheme, the Panel is convinced that the purpose of the Respondent’s registration of the domain name is to capitalize on the goodwill of the trademarks by merely registering the trademarks as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its website. This behavior constitutes bad faith registration and use of the disputed domain name.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy. 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.
Linda Chang
Sole Panelist
Dated: January 31, 2011
Full & Egal Universal Law Academy