The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Stewart Donald of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 1, 2012, the Center transmitted by email to B, Inc a request for registrar verification in connection with the disputed domain name. On March 6, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 6, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On March 8, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 in both Chinese and English, and the proceedings commenced on March 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on April 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. Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceedings for the disputed domain name to be English on the grounds that the Complainant is not familiar with the Chinese language and that the international language of business is English. The Complainant added that the website previously hosted at this domain name was in German and English, which clearly demonstrates that the Respondent has proficiency and is able to communicate in English. The Complainant further asserts that “the content of the other two domain names operated by the Respondent, namely and are in English which further supports the contention that the Respondent is able to communicate in English.”
While the website under the disputed domain name did include some English words, it was however, principally written in German. The Complainant did not submit evidence to substantiate its claim that and are in English or were registered by the Respondent.
However, the Respondent’s name is “Stewart Donald” and all contact details given for the Respondent are in the United States of America, where the official language is English. The Respondent has neither responded to the proceedings nor to the request that the language of the proceeding to be English. The Panel considers it is very likely the Respondent is familiar with, if not fluent, in English.
In the circumstances of this case, and taking into account the Respondent’s failure to respond to the submissions on the language of proceedings, the Panel, therefore, determines that English shall be the language of the proceedings. 4. Factual Background
The Complainant is the registered proprietor of the trademark SWAROVSKI, registered and used for different kinds of goods and services in different classes, including jewellery. The Complainant has trademark registrations globally, including in the United States and as a Community Trademark. The first mark was registered in the United States in 1972 and as a Community Trademark in 2005.
The disputed domain name was registered on February 8, 2012. Until recently, it resolved to a webpage written principally in German where Swarovski jewellery was advertised and sold. 5. Parties’ Contentions A. Complainant Identical or confusingly similar
The Complainant argues that the disputed domain name is made up of the registered trademark SWAROVSKI, to which the German words “schmuck”, meaning jewellery, and “kaufen”, meaning purchase, have been added. German speaking consumers looking for the Complainant may type “Swarovski Schmuck Kaufen” into search engines and arrive at the webpage of the Respondent, mistakenly thinking that it is affiliated, sponsored or somewhat connected with the Complainant. It is therefore confusingly similar to the Complainant’s trademark by at the least creating initial interest confusion with the trademark SWAROVSKI. Rights or legitimate interests
The Complainant submits that the Respondent has not been known by the name “Swarovski” and the Respondent has no connection with the Complainant or any of its affiliates.
In particular, the Complainant submits that the website to which the disputed domain name resolves to is used to sell products that claim to be Swarovski products and is clearly for the purpose of misleading consumers. Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark SWAROVSKI. The Complainant argues that the unauthorized sale of products by the Respondent on the website “www.” and giving Internet users the impression of the website selling genuine products of the Complainant is clearly use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In this Panel’s view, this is a very simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop. A. Identical or Confusingly Similar:
The disputed domain name is made up of the registered trademark SWAROVSKI and two German words, “schmuck”, meaning jewellery and “kaufen” meaning purchase. The key part of the disputed domain name is the trade mark SWAROVSKI, to which descriptive words have been added. The disputed domain name is clearly confusingly similar to the registered trademark SWAROVSKI.
The Panel finds the first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests:
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
The use made by the Respondent of the website under the disputed domain name , where the Complainant’s trademark features prominently, makes it hard to imagine that the Respondent could establish any rights or legitimate interests.
None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The Panel finds the second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith:
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls within 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.”
The Panel finds that the third part of paragraph 4(a) of the Policy is satisfied. 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.
Douglas Clark
Sole Panelist
Dated: April 27, 2012
Full & Egal Universal Law Academy