The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is David Lee of Nanning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 2, 2012, the Center transmitted by email to eNom and CentralNic a request for registrar verification in connection with the disputed domain name. On February 2, 2012, eNom 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 transmitted a further request for registrar verification to CentralNic on February 7, 2012. On February 7, 2012, CentralNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 7, 2012, a Complaint Deficiency Notification was transmitted to the Parties by email regarding the Complainant’s Mutual Jurisdiction election. The Complainant filed the first Amendment to the Complaint on February 8, 2012. The Complainant filed the second Amendment to the Complaint on February 9, 2012.
The Center verified that the Complaint together with the Amendments to the Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”), the Rules for CentralNic Dispute Resolution Policy (the “Rules”), and the World Intellectual Property Organization Supplemental Rules for CentralNic 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 February 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed William F. Hamilton as the sole panelist in this matter on March 6, 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 has obtained international registrations for the SWAROVSKI mark and, more pertinent for the purposes of this proceeding, has also registered the SWAROVSKI mark in the United Kingdom of Great Britain and Northern Ireland and in China. SWAROVSKI is a well-known, international brand for, among other things, cut crystal and genuine gemstones. The Complainant has sold its products in nearly two thousand retail stores worldwide. See e.g. Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080. The Complainant has also registered several domain names consisting of or containing its SWAROVSKI mark, including, in particular, and . Swarovski Aktiengesellschaft v. love Swarovski,WIPO Case No. D2010-2141.
According to the publicly available WhoIs database, the disputed domain name was registered September 23, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts the Respondent registered and is using the disputed domain name in bad faith to lure unsuspecting Internet users to the Respondent's website that purports to offer genuine Swarovski products for sale. The Complainant asserts that the Complainant has never authorized the Respondent to utilize the SWAROVSKI mark or the disputed domain name. The Complainant asserts that the disputed domain name was registered and is being used in bad faith because the SWAROVSKI mark is well known internationally and highly distinctive. Moreover the disputed domain name resolves to a website that bears a strikingly similar “look and feel” to the Complainant's “www.” website. 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 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 or is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's SWAROVSKI mark.
The mere addition of the suffixes “uk” and “.” to the Complainant's mark do nothing to diminish the likelihood of confusion and actually heighten the potential for confusion by implicitly and falsely suggesting that the disputed domain name resolves to a special “UK” website sponsored by the Complainant. Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. love Swarovski,WIPO Case No. D2010-2141; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,WIPO Case No. D2009-1638 (citing Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252 “[T]he mere addition of a common or generic word such as ‘beads’ to a registered trademark has consistently been deemed insufficient to avoid confusing similarity between the domain name and the complainant's trademark”); Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947 (“The Panel finds that the designation ‘swarovski’ is the distinctive part of the disputed domain name and the additional term ‘beads’ does not diminish the similarity between the disputed domain name and the Trade Mark.”).
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
On this record, the Panel finds that the Respondent lacks any rights or legitimate interests in the SWAROVSKI mark or the disputed domain name. The disputed domain name resolves to a website clearly established for commercial purposes and offering what are purportedly genuine SWAROVSKI products. The Complainant specifically disavows any commercial or other relationship with the Respondent that would entail any authorization by the Complainant for Respondent to use the SWAROVSKI mark or register the disputed domain name. It does not appear that the Respondent has conducted any legitimate business under the disputed domain name or the SWAROVSKI mark as the Respondent does not appear to be commonly known as “Swarovski” or by a similar name. Moreover the Respondent has not come forth with any evidence of any rights or legitimate interests in the SWAROVSKI mark or the disputed domain name. Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,WIPO Case No. D2009-1638.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, five circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location;
(v) the respondent has provided false contact details to CentralNic.
The Panel has little difficulty in finding that the disputed domain name was registered and is being used in bad faith. In the Panel’s view, it is inconceivable that the Respondent was unaware of the SWAROVSKI mark when it registered the disputed domain name because the disputed domain name resolves to a website that brazenly mimics the look and feel of the Complainant’s website and purports to offer for sale genuine Swarovski products. Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080. One can draw no other reasonable conclusion under the facts presented but that the registration and use of the disputed domain name is in bad faith and designed to lure and divert to Respondent's website consumers searching the Internet for SWAROVSKI sponsored products for the Respondent’s commercial gain. Swarovski Aktiengesellschaft v. love Swarovski,WIPO Case No. D2010-2141. The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
William F. Hamilton
Sole Panelist
Dated: March 20, 2012
Full & Egal Universal Law Academy