Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Matthew Mitchell of Covina, California, 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 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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 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 Swarovski is a leading producer of cut crystal, genuine gemstones and created stones.
Complainant owns, inter alia, the following trademark registrations:
Trademark Jurisdiction Registration No. Registration Date International Class
SWAROVSKI
United States
of America
3864495
October 19, 2010
16
SWAROVSKI
United States of America
934915
May 30, 1972
14, 21
SWAROVSKI
United States of America
1739479
December 15, 1992
8, 11, 14, 18, 21, 25
SWAROVSKI
CTM
007462922
July 21, 2009
1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44, 45
SWAROVSKI
CTM
003895091
August 23, 2005
2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28, 34, 35, 41
The disputed domain name was registered on October 14, 2011.
On November 23, 2011, Complainant informed Respondent by a cease and desist letter that the disputed domain name constituted trademark infringement and requested to discontinue use of the disputed domain name. At the time of filing the Complaint, Respondent had not replied to Complainant’s letter.
On January 25, 2012, the website at the disputed domain name showed a webpage under the title “Swarovski”, which displayed texts in German and English, and pictures of crystal beads, earrings, et cetera, offering these and other jewelry products for sale at presumably heavily rebated prices. 5. Parties’ Contentions A. Complainant
Complainant uses the SWAROVSKI marks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. Complainant has exclusive rights in the SWAROVSKI marks. Complainant owns numerous registrations for the SWAROVSKI marks in the United States, and Community Trade Marks applicable in Austria and Germany.
The addition of the term “osterreich” (“Österreich” means “Austria” in German) to the SWAROVSKI marks does not differentiate the disputed domain name enough to prevent confusion among consumers. Numerous UDRP panels have found that the addition of a geographical name or indicator to a trademark does not serve to differentiate the domain name from the trademark.
Respondent has no rights or legitimate interests in the disputed domain name. 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 misdirects Internet traffic to an infringing website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout the United States, Germany and Austria. As a result, these have become famous and well-known in those countries. Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of Complainant’s rights in the SWAROVSKI marks. It is inconceivable that Respondent was unaware of Complainant’s rights in the SWAROVSKI marks. Given the fame of the SWAROVSKI marks, there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith.
Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by using the SWAROVSKI 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 SWAROVSKI marks on the infringing website and offers products identical to or similar to Swarovski products for sale. UDRP panels have determined that this type of behavior is indicative of bad faith.
Complainant informed Respondent in a cease and desist letter that the disputed domain name constituted trademark infringement and requested Respondent to discontinue use of the disputed domain name. Complainant has not yet received any response from Respondent, which clearly demonstrates that despite being made aware that its use of the SWAROVSKI marks constitutes trademark infringement Respondent has continued to operate the infringing website using the disputed domain name. 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 has trademark rights in the SWAROSVSKI trademark. See “Factual Background” above.
The disputed domain name comprises the SWAROVSKI mark and the country name “osterreich”, plus the “.com” 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 […].” See also InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076 (finding that the mere addition of the word “India” in the domain name was not sufficient to distinguish it from the complainant’s trademarks since such addition appeared to be made most likely to induce Internet users to believe that they are connecting their computers to the site of an Indian affiliate of the complainant or to some kind of “Indian operation” of the complainant.)
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 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. Complainant adds that 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 misdirects Internet traffic to an infringing website. Complainant alleges that such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
Taken together, the Panel finds that Complainant’s contentions and supporting evidence amount to 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 WIPO Overview 2.0”.
Respondent has not submitted any comments or evidence in its own favor. It also failed to reply to Complainant’s cease and desist letter of November 23, 2011. See “Factual Background “ above. The Panel cannot but conclude 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 United States, the country of residence of Respondent, and elsewhere predate the registration of the disputed domain name by Respondent. Moreover, given the renown and fame of Complainant and its SWAROVSKI marks in the United States, Austria, Germany 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 at a website, thus creating the impression that this website is operated or endorsed by Complainant. This 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 website or location or of a product or service on its website 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 A. Bianchi
Sole Panelist
Dated: March 1, 2012
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