The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Domains By Proxy, LLC, DomainsByP of Arizona, United States of America / Seek Knight of Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 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 GoD, LLC a request for registrar verification in connection with the disputed domain names. On the same date, GoD, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 10, 2012 consolidating its two Complaints separately filed for each of the disputed domain names.
The Center verified that the Complaint together with the amended 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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Response was filed with the Center on March 6, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on March 19, 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 registered proprietor of the trademarks SWAROVSKI registered and used for different kinds of goods and services in different classes including class 14 (which covers jewellery) with registrations in Europe, United States of America, China and many international registrations. These marks have been registered as early as the 1970s.
The disputed domain names and were both created on November 30, 2011. 5. Parties’ Contentions A. Complainant Identical or confusingly similar
The Complainant argues that the disputed domain names and are made up of the registered trademark SWAROVSKI to which the descriptive terms “outlet shop” and “star” have been added. They are therefore confusingly similar, by at the least creating initial interest confusion, to the Complainant’s registered trademarks SWAROVSKI. No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain names and the Respondent has no connection with the Complainant or any of its affiliates.
In particular, the Complainant submits that the websites to which the disputed domain names resolve are used to sell products that purport to be SWAROVSKI products. The Complainant submits that purporting to sell SWAROVSKI products does not give the Respondent the right to register and use the trademark SWAROVSKI in the domain names without the consent of the Complainant, citing Burberry Limited. v. Kang Kyungnam,WIPO Case No. D2006-0186 (“Even if the Respondent is selling genuine goods bearing the Complainants’ trademark on the website, the Panel finds that such a resale activity does not confer the Respondent any proprietary rights in the Complainants’ trademark”). The Complainant argues that the Respondent is not an authorised SWAROVSKI agent and therefore does not have the right to use the trademark SWAROVSKI in the disputed domain names. Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant’s rights in SWAROVSKI and argues the unauthorized sale of products by the Respondent on the websites that gives the impression of being genuine websites of the Complainant is clearly use in bad faith. B. Respondent
The Respondent filed a Response 2 days after the deadline for filing a response. The Respondent apologised for filing the Response later due to being abroad on business. Given the short delay, the Panel has determined to accept the Respondent’s submission and evidence even though filed out of time.
The Respondent’s submissions were, essentially:
1. The Respondent is not a domain cybersquatter. Swarovski company started in 1908, the Respondent registered the disputed domain name in 2011.
2. The Respondent is not creating initial interest confusion. The websites at the disputed domain names sell different types of jewellery, among them, the resale of SWAROVSKI products. The resale of SWAROVSKI products is officially authorized. The Respondent attached certain documents to seek to prove this (these are detailed below).
3. The Respondent applies for a re-trial of Complaint and hopes WIPO will remain impartial, with a clear understanding that some companies abuse WIPO procedures to make high profits from their own monopoly.
The attachments were 1) two authorisations written in Chinese to T400 Jewellers and NeoGlory Jewellers as Swarovski Elements authorised brands (referred to below as “the Authorisations”) and 2) a “Confirmation of Genuineness”, also written in Chinese, dated October 1, 2011 and valid until September 30, 2012 from Swarovski Hong Kong Co Ltd to Yiwu City Thousand Colours Daily Use Products Co Ltd (Referred to below as “the Confirmation”).
No explanation was given as to the relationship between the Respondent and the entities named in the documents. The Confirmation also stated on its face “this authorization is not applicable to retail outlets or online retail shops.”
The Panel considered whether to seek comments from the Complainant as to the genuineness of the Authorisations and the Confirmation. However, the Panel determined that it could proceed without further submissions from the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark SWAROVSKI and a descriptive terms “outlet shop”. The disputed domain name is made up of the registered trademark SWAROVSKI and the word “star”. Both domain names are confusingly similar to the registered trademark SWAROVSKI. The Respondent does not challenge this, but rather bases its defence on the second and third elements, namely that it is selling authorised products.
The first part of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has responded to the Complaint to assert that is has a legitimate interest in using SWAROSKI as part of its domain names, namely that it is selling genuine products under the domain names and is authorised to do so.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) sets out the current consensus view of UDRP panels in cases such as this, namely:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”
The reference to the Oki Data principles is to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, , where the panel held the following principles:
- The respondent must actually be offering the goods or services at issue.
- The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weathermen, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official United States website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Panel accepts the Oki Data principles as the applicable principles to this case. This Panel considers that Burberry Ltd. v. Kyungnam,WIPO Case No. D2006-0186 cited by the Complainant goes too far in stating that only authorised agents can register domain names incorporating a trademark. The Panel does not base its decision on the Burberry case (supra).
In this case, the key issue to consider is the third of the Oki Data principles, namely: does the site accurately disclose the Respondent’s relationship with the Complainant? In the Panel’s view, the sites to which the disputed domain names previously resolved to did not make sufficient disclosure. The webpages both featured prominently the trademark SWAROVSKI. They also included a large statement “Swarovski Authorised Partner” at the top of the page.
The evidence submitted by the Respondent even taken at its highest does not make it a “Swarvoski Authorised Partner”. At the highest, the Authorisations authorise certain companies to sell “Swarovski Elements” jewellery. They do not make them “Swarovski Authorised Partners”. The Confirmation specifically states it does not apply to online sales.
The Panel therefore finds that there has not been sufficient disclosure of the relationship with the Complainant as required by Paragraph 2.4 and the Oki Data principles.
The Panel does note the Respondent’s submission that the Complainant is trying to create a monopoly. While questions of competition law go beyond the scope of the UDRP, the Panel notes that a registered trademark right is a government granted monopoly. In all countries, there are exceptions which allow legitimate use to be made of a registered trademark. The Oki Data principles also allow for legitimate use. It is, however, for the registrant of a domain name to ensure that any use they make is legitimate.
In conclusion, The Panel finds that the second element of the Policy is made out. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names and were registered in bad faith and are being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” 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 names, and , be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: April 5, 2012
Full & Egal Universal Law Academy