The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is James Johnson of New York, United States of America (“USA”). 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2012. On January 18, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Names. On the same date, 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 the Respondent of the Complaint, and the proceedings commenced on January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2012.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 22, 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
Swarovski is one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution in 42 countries and presence in more than 120 countries. Swarovski’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
From the evidence submitted by the Complainant, as annexes to the Complaint, the Complainant is the proprietor of numerous marks containing SWAROVSKI worldwide. A selection of the SWAROVSKI marks which are applicable in USA and globally are as follows:
No.
Trademark
Category Reg.
No. Class
Registration
Date
1
SWAROVSKI
USA
3864495
16
19-10-2010
2
SWAROVSKI
USA
934915
14, 21
30-05-1972
3
SWAROVSKI
USA
1739479
8, 11, 14,
18, 21, 25
15-12-1992
4
SWAROVSKI
USA
1785590
21
03-08-1993
5
SWAROVSKI
USA
2402230
14
07-11-2000
6
SWAROVSKI
INT.
857107
2,3,6,8,9,11,
14,16,18,19,
20,21,24,25,
26,28,34,35,
41
03-11-2004
7
USA
3230029
2, 6, 8, 9,
11, 18, 19,
20, 21, 24,
25, 28, 34,
35, 41
17-04-2007
8
USA
3864494
3, 16
19-10-2010
The Complainant has been involved in many other UDRP procedures in respect of the mark SWAROVSKI.
It is also clear that the Complainant has spent substantial time, effort and money in advertising and promoting the SWAROVSKI marks throughout the United States and worldwide and as result the marks have become famous.
The Complainant has registered several domain names, including and .
The Respondent registered both Domain Names on June 14, 2011 and is operating both sites as online shops for purported SWAROVSKI products. 5. Parties’ Contentions A. Complainant
The Domain Names are confusingly similar to the SWAROVSKI marks. Therefore, and in respect to , the addition of the prefix “cheap” to the entirety of the SWAROVSKI trademark does not lessen the confusing similarity between the Domain Name and the Complainant’s mark. Likewise, the addition of the suffix “onlinestore” to the entirety of the SWAROVSKI trademark does not make distinctive. The Complainant asserts that both Domain Names merely add generic or descriptive terms to an otherwise distinctive trademark. Therefore, the Domain Names are confusingly similar to the Complainant’s trademarks.
The Domain Names were registered in June 2011 and the Complainant’s rights in the SWAROVSKI marks predate this registration. Moreover, the Respondent has no rights or legitimate interests in the Domain Names for the following reasons: first, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI marks in the Domain Names or in any other manner. Second, the Respondent has never been commonly known by the Domain Names and, third, the Domain Names misdirect Internet traffic to the infringing websites and through such use creates the impression that the Domain Names are associated with the Complainant.
In respect to the third element, the Complainant alleges that it is inconceivable that being SWAROSKI a well-known trademark throughout the world, the Respondent was unaware of its rights at the time of the registration. Further, the Complainant considers that previous UDRP decisions have found that coupling a descriptive word with the complainant’s mark in a domain name constitutes bad faith on the part of the respondent.
Finally, the Complainant states that the Respondent’s deliberate and misleading conduct related to the Domain Names and infringing websites obviously is intended “to attract, for commercial gain, Internet users to Respondent’s website[s], by creating a likelihood of confusion with Complainant’s mark”. Therefore, the Respondent has registered and used the Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. The UDRP procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus, where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc.,WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has made a continuous use of its registered and incontestable marks, in which SWAROVSKI appears to be a distinctive element and has spent much time, money and effort promoting the mark. Thus, the Complainant has established significant good will in respect to SWAROVSKI (see Swarovski Aktiengesellschaft v.Christine Jil,WIPO Case No. D2011-0981).
Previous UDRP panels have decided that a domain name in which a generic and descriptive term is added to a distinctive trademark will generally be considered confusingly similar to the trademark (Sanofi-Aventis v. US-M,WIPO Case No. D2004-0809; Visa Europe Limited v. DomainByP / Dahai Huang,WIPO Case No. D2011-0302).
Accordingly, in the present case, the addition of the word “cheap” or “onlinestore” to the Domain Names is not sufficient to distinguish new Internet sources from existing service sources. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of “cheap” or “onlinestore” to the Complainant’s trademarks to form the Domain Names is insignificant and consequently the Domain Names are confusingly similar to the Complainant’s trademark.
The Panel therefore concludes that 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 that the Respondent has no rights to or legitimate interests in the Domain Names. In this respect, the Complainant has established that the Respondent has no connection or affiliation with the Complainant and has not been licensed or otherwise permitted to use any of their trademarks or business names. Finally, the Complainant has also established that the Respondent misdirected Internet traffic to the infringing websites.
In this case, the Respondent has failed to rebut the assertions made and has not done so since it did not reply to the Complainant’s contentions nor to the cease and desist letter sent by the Complainant.
Neither does the use of the Domain Names appear to the Panel to be in connection with a legitimate noncommercial or fair use, nor to be without the intent to misleadingly divert customers for commercial gain.
Accordingly, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations and use of the Domain Names in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Names in bad faith.
The Complainant has also established that its trademarks have been used extensively and are known throughout the world and that the Complainant's trademarks are famous and valuable. Accordingly, it is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage.
Therefore, 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 and this is the approach of the Panel in the present case (Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte,WIPO Case No. D2010-0456).
In respect to the use of the Domain Names, the Complainant has proved to the satisfaction of the Panel, by mean of the printouts of the website to which the Domain Names resolve, that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are 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 Domain Names and be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Dated: February 29, 2012
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