Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Luc Sun of Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2012. On January 17, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On January 17, 2012, GoD, 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 Respondent of the Complaint, and the proceedings commenced on January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 14, 2012
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 17, 2012. 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 is a leading producer of cut crystal, genuine gemstones and created stones
Complainant owns numerous trademark registrations for the SWAROVSKI mark, Inter alia, the following federal registrations in the United States of America:
Trademark Jurisdiction Reg. No. Reg. Date International Class
SWAROVSKI
USA
3864495
October19, 2010
16
SWAROVSKI
USA
934915
May 30, 1972
14, 21
SWAROVSKI
USA
1739479
December 15, 1992
8, 11, 14, 18, 21, 25
SWAROVSKI
USA
1785590
August 3, 1993
21
SWAROVSKI
USA
857107
November 3, 2004
2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35, 41
The disputed domain name was registered on September 21, 2011.
On January 24, 2012, the lookup visit routinely conducted by the Center to the website at the disputed domain name showed a webpage under the title “swarovski Crystal OUTLETS.org”, which displayed texts in English and pictures of necklaces, and offered these and other jewelry products for sale at presumably discount prices. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to the SWAROVSKI marks. WIPO UDRP panels have 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.
Respondent has no connection or affiliation with Swarovski 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. The disputed domain name is being used to advertise purported Swarovski products and misdirects Internet traffic to the infringing website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
Respondent has used the SWAROVSKI marks in a domain name to create the impression that he is associated with Swarovski. Furthermore he has used the SWAROVSKI marks throughout the infringing website, offering purported Swarovski products for sale, which supports the contention that Respondent chose the disputed domain name only because he was seeking to create an association with Complainant.
Purporting to sell Swarovski products does not give Respondent the right to register and use the SWAROVSKI marks as a domain name without the consent of Swarovski. Respondent is not an authorized Swarovski agent and therefore does not have the right to use the SWAROVSKI marks in the disputed domain name. Respondent’s misappropriation of the disputed domain name was no accident. Where a mark is famous and well known, as the SWAROVSKI marks, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the complainant (see Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
Respondent’s use of the SWAROVSKI marks is clearly for the purpose of misleading consumers into believing that Respondent and the infringing website are associated with or approved by Swarovski. Respondent is clearly seeking to trade on Swarovski`s goodwill and reputation. Accordingly, Respondent does not have a legitimate interest in the SWAROVSKI Marks.
Respondent has registered the disputed domain name in bad faith, with the knowledge of Complainant's rights in the SWAROVSKI marks. It is inconceivable that Respondent was unaware of Swarovski’s rights in the SWAROVSKI marks. “Swarovski” is not a descriptive or generic term, but a famous and well-known trademark. Furthermore, the infringing website offers to sell a variety of Swarovski products. Respondent would not have advertized products purporting to be Swarovski products on the infringing website if he was unaware of Swarovski`s reputation.
Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by using the SWAROVKI marks is further compounded by Respondent’s efforts to mislead consumers into believing the website was operated or authorized by Complainant. Respondent, without valid consent, uses the SWAROVKI marks on the infringing website and offers products identical to or similar to Swarovski products for sale. WIPO UDRP panels have determined that this type of behavior is indicative of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(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 and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the SWAROVSKI mark. See “Factual Background” above.
The disputed domain name incorporates the SWAROVSKI mark in its entirety as principal component, and adds the generic terms “crystal” and “outlets”, plus the “.org” gTLD. It is well established that the addition in a domain name of descriptive or generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9: “Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name […].”
Moreover, the addition in the disputed domain name of the term “crystal” only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals. The addition of “outlets” also contributes to this association in referring to points of sale for crystals made by Complainant. See Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-2241 (“The addition of the terms “crystal” and “outlet” as suffixes to the SWAROVSKI mark in the Domain Name does not lessen the confusing similarity between the mark and Domain Name. The Complainant manufactures crystal jewellery and the use of the word “crystal” along with the SWAROVSKI mark is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity between mark and Domain Name. The use of the word “outlet” creates the impression that the website at the Domain Name contains information and products from the Complainant’s own outlets.”)
The Panel concludes that the disputed domain name is confusingly similar to Complainant's SWAROVSKI mark. B. Rights or Legitimate Interests
Complainant contends that Respondent has no connection or affiliation with Swarovski, and has not received any license or consent to use Complainant’s SWAROVSKI marks, that Respondent has never been known by the disputed domain name, and that the disputed domain name is being used to advertise purported Swarovski products, misdirecting Internet traffic to an infringing website. Complainant also contends that such a use is contrary to a bona fide offering of goods or services or a legitimate interest. Complainant adds that Respondent is using the SWAROVSKI marks to create the impression of an association with Complainant. Complainant alleges that purporting to sell Swarovski products does not give Respondent the right to register and use the SWAROVSKI marks as a domain name without the consent of Swarovski. As the SWAROVSKI mark is famous, it is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant. Complainant concludes that Respondent is clearly seeking to trade on Swarovski’s goodwill and reputation, and that it does not have a legitimate interest in the SWAROVSKI marks.
Taken together, Complainant’s contentions and supporting evidence constitute a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
However, Respondent is in default and has not submitted any comments or evidence in its own favor. Accordingly, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant's registrations of the SWAROVSKI mark in the USA, the country of residence of Respondent, predate the registration of the disputed domain name. Moreover, given the renown and fame of Complainant and its SWAROVSKI marks in the USA and elsewhere, and the fact that Respondent is using the website at the disputed domain name to offer purported Swarovski products for sale, Respondent obviously must have known of Complainant, its mark and products at the time of registering the disputed domain name, i.e. the registration of the disputed domain name was in bad faith.
As seen at “Factual Background” above, Respondent’s unauthorized use of the disputed domain name in the corresponding website consists of offering purported SWAROVSKI products for sale, thus creating the impression that this website belongs to, or is affiliated with, or is operated or endorsed by Complainant. This conduct clearly is evidence of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: March 1, 2012
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