The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Nino Gogashvili of Tbilisi, Georgia. 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 19, 2012. On January 19, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2012.
The Center appointed Ian Blackshaw as the sole panelist in this matter on February 16, 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
The Complainant is the world's leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries; distribution to 42 countries; and a presence in more than 120 countries. In 2010, The Complainant's products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. In 2010, the Complainant's approximate worldwide revenue was € 2.66 billion.
The Complainant has registered the SWAROVSKI Marks globally in a variety of classes and the Panel has been provided with copies of a selection of these registrations, including ones for Georgia and the European Community.
The 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.
The Complainant spends substantial time, effort and money on advertising and promoting the SWAROVSKI Marks worldwide, including Georgia. As a result, the Complainant claims that the SWAROVSKI Marks have become famous around the world, including Europe and Georgia. The Panel has been provided with copies of some examples of these advertisements and promotions.
The Complainant has developed an enormous amount of goodwill in the SWAROVSKI Marks internationally, and the public has come to associate the SWAROVSKI Marks exclusively with high quality items marketed by the Complainant. Again, evidence in support of these claims has been provided to the Panel.
The Complainant has also registered several domain names, including and which point to the Complainant’s official website, located at "www.". This website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine products of the Complainant. Corresponding evidence has been provided to the Panel.
According to the registrar’s verification response, the disputed domain name was created on May 3, 2011. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name is confusingly similar to the SWAROVSKI Marks. Previous WIPO 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. See, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 ("Crichton").
The Respondent has used the SWAROVSKI Marks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Complainant’s registered domain names.
Misdirecting Internet users to the disputed domain name takes advantage of the behavior pattern identified in Crichton for commercial gain.
This type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalizes on the Complainant's goodwill in the SWAROVSKI Marks. See Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166; and W. & G. Foyle Ltd v. Foyle, WIPO Case No. D2000-1543. The doctrine of “initial interest confusion” has been applied in numerous UDRP cases and it is also acknowledged in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Regarding the disputed domain name, the name “Swarovski” has been misspelt by using the letter “v” instead of the letter “w”. This does not necessarily differentiate or reduce the confusing similarity with the SWAROVSKI Marks. See, Swarovski Aktiengesellschaft v. Venkateshwara Distributor Private Limited./ PrivacyP,WIPO Case No. D2010-2231, in which the panel noted that “It is also well-established that confusing similarity can result from the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation from a famous mark... or a deliberate misspellings of a trademark”; and Lemco, Inc v. Treasure Enterprise Ltd,WIPO Case No. D2010-0300, in which the panel noted that it was “well-established that domain names incorporating a slightly misspelled version of a trademark may be held to be confusingly similar to such trademark”. Therefore, it is well-established that domain names incorporating a slightly misspelled version of a trademark may be held to be confusingly similar to such trademark.
Similarly, Internet users may also inadvertently type “” into the address bar on their web browser and be directed to the website associated to the disputed domain name. It is not uncommon for consumers to mistype a domain name or use an alternate spelling. See, Swarovski Aktiengesellschaft v. Domain Administrator / Pepito DZZD, WIPO Case No. D2011-1213 and Specialty Store Services, Inc. v. Horoshiy, Inc., & LaPorte Holdings, Inc.WIPO Case No. D2005-0015 .
It is also recognized that where the misspelling of a domain name is phonetically similar to the trademark then the domain name is considered to be confusingly similar to the complainant’s trademark. See, Swarovski Aktiengesellschaft v. Domain Administrator / Pepito DZZD,WIPO Case No. D2011-1213 (“The disputed domain name includes a misspelt version of the SWAROVSKI trademark of the Complainant. Given that phonetically they are identical or highly similar, the Panel finds that this does not prevent the “svarovski” part of the disputed domain name being identical or confusingly similar to the SWAROVSKI trademark of the Complainant. The Panel also notes that it is quite common for Internet users to mistype a letter where the phonetically the correct and incorrect spelling would be identical or similar (in this case “v” and “w”)”); Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington WIPO Case No. D2003-0173, where it was held: “Considering that the pronunciation of the trademark LANE BRYANT and the derived Domain Name is the same, so that their sound could be spelled in these two different ways in the English language, this must be considered a case of "typo-squatting".”).
Therefore, the Complainant submits that the Respondent purposely misspelled the word “swarovski” in order to exploit the SWAROVSKI Marks. Given the fame and reputation of the SWAROVSKI Marks, there is little doubt that the Respondent’s registration of the disputed domain name was a deliberate attempt to confuse consumers by “typo-squatting”. See e.g. Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (“conduct, commonly referred to as "typo squatting," creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy”).
ii. The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant's rights in the SWAROVSKI Marks have been recognized by several WIPO administrative panels. In Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353, the panel stated that the "Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices... Complainant's trademark rights in SWAROVSKI precede this domain name registration".
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 a domain name or in any other manner. Further, it was held in NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 that "re-directing Internet users, who as a result of inadvertently and slightly misspelling the domain name of the Complainant, here from either "" or "" to the contested domain name "", away from the Complainant's web site to a commercial web site of its direct competitor clearly does not constitute legitimate use".
The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI Marks or the name "Swarovski". See, Marriott Int'l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 ("no legitimate interest can be claimed by a respondent when there is no evidence that a respondent is commonly known by the domain name").
The Respondent’s previous use of the disputed domain name to sell goods similar to and purporting to be those produced and sold by the Complainant can be taken into consideration by the panel in determining bona fide or legitimate use. In E. Gluck Corporation v. James L. Clark d/b/a Animationwerks,WIPO Case No. D2000-1651 (“E. Gluck”), the panel found that the respondent’s prior use of the disputed domain name was not bona fide and, therefore, there was no legitimate interest. The panel in E. Gluck made the following observations: “the Respondent initially registered the disputed domain name and tried to obtain the associated trademarks in order to pursue the same business as Complainant, i.e., to sell watches. At that point the domain name selling watches infringed the Complainant's trademark rights. The Panel finds this is the appropriate point to determine whether the Respondent was using the domain name to make a bona fide offering of goods and services, and the Panel finds Respondent's infringing use was not a bona fide use”. See also, Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413. Similarly, prior to directing the disputed domain name to a page with no website, the Respondent was operating an online shop on the disputed domain name and was selling products claiming to be the Complainant’s products.
WIPO panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda,WIPO Case No. D2001-0067. The Respondent has used the SWAROVSKI Marks in the disputed domain name to create the impression that the Respondent is associated with the Complainant.
The misappropriation of the disputed domain name was no accident. Where a mark is famous and well known, as with 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 Corp. Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The use of the SWAROVSKI Marks in the disputed domain name is clearly for the purpose of misleading consumers into believing that the Respondent and the disputed domain name are associated with or approved by the Complainant. The Respondent does not have a legitimate interest in the SWAROVSKI Marks.
iii. The domain name was registered and is being used in bad faith
Paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved.
(a) The Disputed Domain Name has been Registered in Bad Faith
The Complainant asserts that the disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks at the time of registration. See F. Hoffman-La Roche AG v. Web Mktg. Ltd.,WIPO Case No. D2006-0005 (bad faith was found to exist partly because the “Respondent must have been aware of the mark when Respondent’s website offered generic VALIUM”).
The selection of the disputed domain name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence, “swarovski” is not a descriptive or generic term; it is a famous and well known trademark.
Registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself, is sufficient to demonstrate bad faith. 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”) and AT&T Corp v. Woppies, WIPO Case No. D2000-1724 (“the fame and widespread use of the trademarks AT&T and ATT, the use of the letters “att” in the domain name immediately raises questions as to its bona fides”); see also Ameriquest Mortgage Co. v. Phayze Inc.,WIPO Case No. D2002-0861 (finding bad faith registration and use because respondent was “attracting traffic that he would otherwise not get for his website”).
In Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel considered the fame and reputation of a complainant’s mark persuasive in determining a respondent’s bad faith intent and found that the complainant’s numerous trademark registrations, together with its wide reputation in the name “Telstra” left no other possible interpretation of the respondent’s registration of the domain name other than that of bad faith. Similarly, 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. See Swarovski Aktiengesellschaft v. lin,WIPO Case No. D2010-2052 (“The Complainant has developed a reputation for the trademark SWAROVSKI in the crystal jewellery stones and crystalline semi-finished goods industry since 1987 and the Complainant’s trademarked products are sold worldwide… Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain”).
The deliberate misspelling of the word “swarovski” by replacing “w” with a “v” is enough to evidence the Respondent’s bad faith registration. See, Swarovski Aktiengesellschaft v. Domain Administrator / Pepito DZZD,WIPO Case No. D2011-1213; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161 (“Respondent’s mere act of typo-squatting a famous mark presents ample evidence of bad faith... In fact, Respondent’s commercial gain is derived directly from the good will of Complainant”); and Express Scripts, Inc. v. Kal Kuchora,WIPO Case No. D2005-1164 (“It is difficult to conceive of any genuine reason why the Respondent would wish to register a domain name consisting of the misspelling ... The Panel considers that the disputed domain name is intended to be a misspelling of the Complainant’s trademark in order to attract internet users who mistype the Complainant’s trademark into their web browsers ... Such users are diverted to a website with affiliate links to other websites including those providing services related to those of the Complainant ... The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith”).
(b) The Disputed Domain Name is being Used in Bad Faith
The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well known in Georgia and worldwide; and the disputed domain name is confusingly similar to the registered trademarks of the Complainant.
Prior to the Complainant directing the disputed domain name to a page with no website, the Respondent operated an online shop selling goods that claimed to be the Complainant’s goods at the website. In Cox Communications, Inc. v. COX Media Incorporated Venezuela,WIPO Case No. D2009-0614, the panel stated: “before the cease-and-desist letter was sent to the Respondent, the website displayed a webpage with a blatant imitation of the Complainant's trademark and a description of the company in Spanish which seemed very similar to the Complainant's activities. In view of the above, the Panel believes that these facts constitute an overwhelming proof that the Respondent was well aware of the Complainant's activities and trademarks. The Panel therefore considers that the disputed domain name has been registered in order to divert Internet users searching for the Complainant's marks and services to the Respondent's website and to free ride on its reputation”. The Respondent’s prior use of the disputed domain name clearly demonstrates the Respondent’s bad faith.
The Respondent is not currently using the website to operate an online shop. In Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, it was clearly recognized that “The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See, Swarovski Aktiengesellschaft v. David Osgood, David, WIPO Case No. D2011-0937, in which “The Panel noticed that there is currently no content other than the domain name itself listed in bold letters on Respondent’s website that is located under the disputed domain name. In that regard, the Panel agrees with Complainant’s contention that consumers were initially attracted to the disputed domain name by the use of the SWAROVSKI trademark in the disputed domain name is enough to contravene the Policy”).
The panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 held that “in considering whether a passive holding of a domain name, following a bad faith registration of it satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour”. Therefore, bad faith can be inferred from the strong reputation and wide recognition of the SWAROVSKI Marks and the fact that the Respondent continues to maintain the registration of the disputed domain name despite his awareness of the Complainant’s rights in the SWAROVSKI Marks.
Bad faith can be inferred from the strong reputation and wide recognition of the SWAROVSKI Marks and the fact that the Respondent continues to maintain the registration of the disputed domain name despite the fact that the Respondent is clearly aware of the Complainant’s rights in the SWAROVSKI Marks.
In Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877, the panel found bad faith use to exist where the respondent did not actively use a domain name because “Complainant has shown that it has a mark that is widely known and widely registered throughout the world, including in Peru where Respondent appears to be located. The combination of “power” and “alstom” seems to be uniquely connected with Complainant... The domain name has not been used for any legitimate reason even though many years have passed since it was first registered. Under these circumstances, it appears more likely than not that Respondent's passive holding of the domain name constitutes bad faith use of the domain name in violation of the Policy”. The same set of factors exist in relation to the disputed domain name and, therefore, the Respondent’s use of the disputed domain name constitutes bad faith use.
Furthermore, it is unlikely that the Respondent can prove good faith use of the disputed domain name because it is difficult to conceive of a use of it that would not infringe the SWAROVSKI Marks. See, Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade,WIPO Case No. D2004-0878: “it is not possible to imagine any active use of the disputed domain names by the registrant that would not be illegitimate, unless the registrant receives permission from a trademark holder”.
Finally,the Respondent was informed in a Cease and Desist Letter that the disputed domain name constituted trademark infringement and was requested to discontinue use of the disputed domain name.
The Complainant has not yet received any response from the Respondent which clearly demonstrates that, despite being made aware that its use of the SWAROVSKI Marks constitutes trademark infringement, the Respondent has continued to operate the website associated to the disputed domain name. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous WIPO cases that, where a disputed domain name incorporates a Complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates almost identically the Complainant’s well-known and well-established registered trademark SWAROVSKI. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its services marketed under its well-known and well-established registered trademark SWAROVSKI.
The slight misspelling of the name “swarowski” replacing the “w” with a “v” does not affect the fact that the disputed domain name is confusingly similar to the Complainant’s well-known and well-registered trademark SWAROVSKI. This misspelling would appear to be deliberate on the part of the Respondent.
The addition of a generic top level domain “.info”, to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademark SWAROVSKI, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior commercial use of the same.
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademark SWAROVSKI. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademark SWAROVSKI inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable registered trademark SWAROVSKI and also the valuable goodwill that the Complainant has established in this trademark through prior commercial use, advertising and promotion of the same, sufficient evidence of which has been provided to the Panel as mentioned above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and well-established registered trademark SWAROVSKI.
By registering and using the disputed domain name incorporating almost identically the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known and well-established registered trademark SWAROVSKI, by chance, but on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the retail jewelry industry.
Also, the Panel agrees with the Complainant’s contentions that the Respondent's use of the disputed domain name by redirecting Internet users interested in the Complainant's goods to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright,WIPO Case No. D2007-0267.
Likewise, the Panel agrees with the Complainant’s contention that the slight misspelling of the Complainant’s trademark SWAROVSKI constitutes “typo-squatting” and, as such, is further evidence of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to reply the Complaint’s “cease and desist” letter (see America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited) or to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as those advanced by the Complainant in its contentions, as set out above and supported by the previous WIPO cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 the Complainant.
Ian Blackshaw
Sole Panelist
Dated: February 17, 2012
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