The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Christine Jil of Monroe, New York, United States of America (“U.S.A”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2011. On June 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 10, 2011, GoD, Inc. 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 June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2011.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant, a corporation organized under the laws of the Principality of Liechtenstein, has submitted evidence that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):
SWAROVSKI (word), Reg. No. 3,864,495; registered on October 19, 2010 for goods in Class 16;
SWAROVSKI (word), Reg. No. 934,915; registered on May 30, 1972 for goods in Class 14;
SWAROVSKI (word), Reg. No. 1,739,479; registered on December 15, 1993 for goods in Classes 11, 14, 18, 21 and 25;
SWAROVSKI (word), Reg. No. 1,785,590; registered on August 3, 1993 for goods in Class 21;
SWAROVSKI (word), Reg. No. 2,402,230; registered on November 7, 2000 for goods in Class 14;
As well as the owner of
SWAROVSKI (word), International Reg. No. 857,107; registered on November 3, 2004 for goods and services in Classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41.
(Copies of extracts of registrations for these trademarks attached as Annex C of the Complaint).
The disputed domain name was registered on May 2, 2011. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant, using the trademark SWAROVSKI in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries, informs that it has production facilities in 19 countries, distribution to 43 countries and a presence in more than 120 countries. In 2009, the Complainant’s products were sold in 1,014 of its own boutiques and through 819 partner-operated boutiques worldwide with an approximate worldwide revenue of EUR 2.25 billion. The SWAROVSKI trademark is registered in a great number of countries around the world.
According to the Complainant, it spends substantial time, effort and money advertising and promoting the SWAROVSKI trademark throughout the U.S.A and worldwide, and as a result of these efforts the trademark has become famous and well known in the U.S.A. The public has come to associate the SWAROVSKI trademark exclusively with high quality items of the Complainant (Annex D – G of the Complaint showing examples of media articles on the Complainant and the SWAROVSKI trademark).
The Complainant holds several domain names, including which is used for the Complainant’s official web site.
The Complainant informs that the Complainant become aware of the disputed domain name when investigating another domain name, not hold by the Complainant. Upon clicking on “SWAROVSKI” links at the web site connected with the said domain name, users were re-directed to .
The disputed domain name is linked to a web site advertising SWAROVSKI goods (a copy of the web site attached as Annex L of the Complaint). The Complainant contends that even though both the disputed domain name and the other investigated domain name have been registered by different registrants, the fact that each of the domain names displays similar content clearly demonstrates that no bona fide use is being made of these domain names, that these registrants are collaborating with each other and that these registrants have registered these websites for the purpose of exploiting the goodwill associated with the SWAROVSKI trademark in order to obtain commercial gain.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant argues that the Respondent is using to confuse consumers into believing that the Respondent’s website is an official web site of the Complainant, and/or the Respondent is affiliated with or authorised to sell the Complainant’s products.
According to the Complainant, the Respondent is not an authorised seller of the Complainants products, and the Complainant does not guarantee the authenticity or quality of the products sold on the website connected to the disputed domain name. In addition, the Complainant points out that the Respondent also offers goods similar to the Complainant’s goods, which the Complainant state is a blatant infringement of the Complainants trademark rights.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by , and the use cannot be seen as bona fide offering of goods or services.
Finally, the Complainant argues that the disputed domain name is both registered and used in bad faith. The Respondent was obviously aware of the Complainant’s trademark rights to SWAROVSKI at the time of registration. SWAROVSKI is a famous and well known trademark, not a descriptive word or generic term. The combination of the trademark and descriptive words further constitutes bad faith.
The Complainant further states that the Respondent’s registration and use of the disputed domain name creates initial interest confusion, that the purpose of the Respondent’s use seems to be to obtain commercial gain by misleading consumers to believe that the connected site was operated or authorised by the Complainant. The Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. Initial procedural statement
The Complainant has referred to two domain name registrations, one being , registered in the name of the Respondent, and one other domain name registered in the name of another holder.
The Panel wish to make it clear that, although it is noticed that the Complainant become aware of the disputed domain name when investigating another domain name, not hold by the Complainant, the existence and use of the other domain name is in no other way considered by the Panel in this case. A. Identical or Confusingly Similar
The Complainant is the owner of the SWAROVSKI trademark, registered in a number of countries, including the USA – home country of the Respondent.
The relevant part of the disputed domain name is “swarovskicrystaloutlet”. The Panel concludes that the disputed domain name consists of the Complainants trademark SWAROVSKI, with the addition of the two generic words “crystal” and “outlet”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Swarovski Aktiengesellschaft v. wutianhao, WIPO Case No. D2010-0503:
(“the disputed domain name consists of ‘swarovskicrystalshop’, which can easily be read as ‘swarovski’, ‘crystal’ and ‘shop’… Given that the disputed domain name contains the Complainant’s mark SWAROVSKI in its entirety, adding the generic terms ‘crystal’ and ‘shop’ that are related to the Complainant's crystal products marked with SWAROVSKI does not preclude a finding of confusing similarity”).
The Panel therefore concludes that is confusingly similar to the Complainant’s trade mark SWAROVSKI. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),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).
The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating the trade mark SWAROVSKI.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the domain name, enabling it to establish a legitimate interest in the disputed domain name thereby.
The Complainant states that it does not guarantee the authenticity or quality of the products sold on the website connected to the disputed domain name. The Panel cannot see any specific details on the printouts of the corresponding website provided by the Complainant that clearly points to that the goods marked SWAROVSKI may not be real goods originating from the Complainant.
However, it is the Panel’s view that the collateral trademark use necessary to allow reselling, after market sale, customer support, etc. in connection with the Complainant’s products does not confer the right to use the trademark as a domain name without permission from the trademark owner. See Sanofi-Aventis v. DomainsByP and Ravikant Singh,WIPO Case No. D2007-0540 (“The mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of the website the right to register a domain name incorporating another’s trademark”); see also The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 and Nokia Corporation v. Nick Holmes t/a EType Media,WIPO Case No. D2002-0001.
According to the Complainant, and not commented or refused by the Respondent, the Respondent also offers goods similar to the Complainant’s goods, - considering the fact that this is done by using a domain name that relates to the Complainant and the Complainant’s goods - the Panel further finds that the Respondent does not have any legitimate interests to .
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As concluded above, the Complainant’s trademark SWAROVSKI is well protected and well known in (among other countries) the U.S.A. – the home country of the Respondent. The fact that the disputed domain name consists of the Complainant’s trademark added with two related generic words, further indicates that the Respondent registered specifically with the Complainant’s trademark in mind, see Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445 (“the registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark generally constitutes bad faith registration”).
Thus, it is clear that the Respondent had this trademark in mind when registering the disputed domain name, and that the addition of the generic words “crystal” and “outlet” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name.
The Respondent has done nothing specifically to identify itself as independent from the Complainant. On the contrary, the connected web site shows the domain name constructed with the Complainant’s design/figurative mark and the disputed domain name written with the “swarovski” part pointed out clearly from the non-distinctive part of . The Panel agrees with the Complainant that this is a further evidence of the Respondent’s bad faith registration and use of the disputed domain name. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364:
(“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s and domain names”).
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant.
Finally, it is clear from the provided copies of the Respondent’s corresponding website, that this also includes presumably sponsored links to shops and other companies with no relation to the Complainant, and which may be the Complainant’s competitors’.
Thus, the Panel concludes that the domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: August 1, 2011
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