Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Hao Chen of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 18, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On July 19, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent a request for amendment to Complainant on July 21, 2011. Complainant filed an amendment to the Complaint on July 25, 2011. On July 21, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 25, 2011, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on July 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on August 25, 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
Complainant, Swarovski Aktiengesellschaft, is a company incorpated in Triesen, Liechtenstein. Swarovski is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and a presence in more than 120 countries.
Complainant has exclusive rights in the SWAROVSKI Marks. Complainant is the exclusive owner of famous and well known registered trademarks globally (see Annex B to the Complaint), including China (since 1987; see Annex C to the Complaint). It also owns the domain names (since January 11, 1996) and domain names (since April 16, 1998) and multiple other domain names incorporating the SWAROVSKI mark (see Annex J to the Complaint).
The disputed domain name was registered with Xin Net Technology Corp on January 21, 2011, long after the SWAROVSKI mark became internationally famous (Annex A to the Complaint). 5. Parties’ Contentions A. Complainant
(a) Complainant is the exclusive owner of trademark rights in the SWAROVSKI Marks.
Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones.
Complainant has registered the SWAROVSKI Marks globally (an excerpt of a selection of the registrations is attached as Annex B to the Complaint), including China (Annex C to the Complaint).
Complainant has registered several domain names, including and .
Both of these domain names point to Complainant’s official website, located at (Annex I and Annex J to the Complaint).
(b) The disputed domain name is confusingly similar to the SWAROVSKI Marks.
Respondent registered the disputed domain name on January 21, 2011.
Respondent is using the disputed domain name to confuse consumers into believing that Respondent’s website (the “Website”) is an official Complainant’s website and/or Respondent is affiliated with or authorised to sell products by Complainant.
The Website advertises for sale various purported Complainant’s products (Annex K to the Complaint).
Respondent is not an authorised seller of Complainant’s products and Complainant does not guarantee the authenticity or quality of the products sold on the Website.
By including the “About S” section on the homepage of the Website, Respondent clearly intended to create the impression among users that Respondent and Complainant are one and the same.
Respondent states on the homepage that “Our company is official authorization pro shop” and “our products come from the OEM factory directly and the properly tested and through the network selling we can save the charges from shop rent, logistic, advertising etc. That's why our products sells in such low price and good-quality” which is clearly intended to give consumers the impression of affiliation with or authorization by Swarovski.
(c) Respondent has no rights or legitimate interests in or with respect to the disputed domain name.
Complainant’s rights in the SWAROVSKI Marks have been recognized by several WIPO UDRP administrative panels.
Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI Marks in a domain name or in any other manner.
Respondent has never been known by the disputed domain name and has no legitimate interests in the SWAROVSKI Marks or the name “Swarovski”.
The disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the Website.
Respondent has used the SWAROVSKI Marks in a domain name to create the impression that it is associated with Complainant.
Respondent’s sale of purported Complainant’s products demonstrates that it is not making a bona fide offering of goods or services, nor does he have a legitimate interest.
Purporting to sell Complainant’s products does not give Respondent the right to register and use the SWAROVSKI Marks as a domain name without the consent of Complainant.
Respondent’s misappropriation of the disputed domain name was no accident.
(d) Respondent has registered and used the disputed domain name, which is confusingly similar to the SWAROVSKI Marks, in bad faith.
(i) Respondent has registered the disputed domain name in bad faith
It is inconceivable that Respondent was unaware of Complainant’s rights in the SWAROVSKI Marks at the time of registration.
Respondent’s selection of the disputed domain name, which wholly incorporates the SWAROVSKI Mark, cannot be a coincidence. “Swarovski” is not a descriptive or generic term; it is a famous and well known trademark.
Respondent states on the Website that “Our company is official authorization pro shop” which shows the intent of Respondent to pretend to be an authorized seller of Complainant’s products.
(ii) Respondent is using the disputed domain name in bad faith
Respondent must have been aware of Complainant’s trademark at the time of the registration of the disputed domain name. Complainant’s trademarks are well known in China and all over the world;
Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Website because of its purported affiliation with Complainant.
Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVKI Marks is further compounded by Respondent’s efforts to mislead consumers into believing the site was operated or authorized by Complainant.
Respondent, without valid consent, utilises the SWAROVKI Marks on the Website and offers products identical to or similar to Complainant’s products for sale (See Annex K to the Complaint). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language.
(b) Swarovski is an international brand with registered marks in multiple jurisdictions, including China but whose international business primarily operates in English.
(c) The disputed domain name displays all the contents in English (see Annex K to the Complaint) and the currency options provided for payment (US Dollar, Canadian Dollar, Australian Dollar, Euro and GB Pound) suggests that Respondent is catering to international and English speaking customers.
(d) There is no version of the disputed domain name with Chinese language content.
(e) As Respondent has prepared and chosen to display the contents of the disputed domain name in English (and not Chinese), Respondent clearly has sufficient capacity to present its case in English and English is clearly a language in which Respondent communicates fluently in.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Liechtenstein, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “Swarovski” and English word “outlet” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex A to the Complaint); (c) the Website appears to have been directed to users in worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SWAROVSKI Marks acquired through registration. The SWAROVSKI Mark has been registered worldwide including in China, and Complainant has a widespread reputation in producing cut crystal, genuine gemstones and created stones.
The disputed domain name comprises the SWAROVSKI Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the final word “outlet” to the mark SWAROVSKI. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.
Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere addition of the descriptive term “outlet” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Consumers who visit are likely to be confused and may falsely believe that is operated by Complainant for selling SWAROVSKI-branded products.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the SWAROVSKI Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the SWAROVSKI Mark globally (international registration - see Annex C to the Complaint), including SWAROVSKI Mark registration in China since 1987 – (see Annex B to the Complaint) which long precedes Respondents’ registrations of the disputed domain name (January 21, 2011).
According to Complainant, Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and a presence in more than 120 countries. In 2009, Complainant’s products were sold in 1014 of its own boutiques and through 819 partner-operated boutiques worldwide. Complainant’s approximate worldwide revenue in 2009 was EUR 2.25 billion. Moreover, Respondent is not an authorized dealer of SWAROVSKI branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Swarovski” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SWAROVSKI Mark or to apply for or use any domain name incorporating the SWAROVSKI Mark;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on January 21, 2011. The disputed domain name is identical or confusingly similar to Complainant’s SWAROVSKI Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Swarovski products at . (Annex K to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SWAROVSKI Mark with regard to its products. Complainant has registered its SWAROVSKI Marks internationally, including registration in China (since 1987). Moreover, according the information provided by Complainant, Respondent states on the homepage that “Our company is official authorization pro shop” and “our products come from the OEM factory directly and the properly tested and through the network selling we can save the charges from shop rent, logistic, advertising etc. That's why our products sells in such low price and good-quality” which is clearly intended to give consumers the impression of affiliation with or authorization by Complainant.
As such, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the SWAROVSKI Mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s Swarovski branded products.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s SWAROVSKI branded products and services without authorization. Complainant claimed that “Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVKI Marks is further compounded by Respondent’s efforts to mislead consumers into believing the site was operated or authorized by Complainant”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the SWAROVSKI Mark (as well as the affiliation statement on Respondent homepage - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex K to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents (including home page statement) created a likelihood of confusion with the SWAROVSKI Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website is either Complainant’s sites or the sites of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Website on to which the domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 disputed domain name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 7, 2011
Full & Egal Universal Law Academy