The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Zhiheng Zhao / xin wei du xin xi ji shu you xian ze ren gong si of fu zhou, fu jian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2012. On March 15, 2012, the Center transmitted by email to Chengdu West Dimension Digital Technology Co., Ltd a request for registrar verification in connection with the disputed domain name. On March 26, 2012, Chengdu West Dimension Digital Technology Co., Ltd 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 27, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 28, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 April 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 7, 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 uses the SWAROVSKI marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. It 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. The Complainant’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Complainant has registered the SWAROVSKI marks globally and has also obtained the following selected trademark registrations for the SWAROVSKI marks in China:
No.
Trademark
Registration No.
Class
Registration Date
1
SWAROVSKI
384001
14
1987-07-30
2
施华洛世奇
385013
14
1989-08-30
3
施华洛世奇
361346
14
1989-09-20
4
346372
14
1989-04-20
5
3520173
14
2004-11-07
6
4285551
26
2008-05-28
7
4285550
14
2007-10-14
The Complainant has expended substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout China. As a result, the Complainant contends that the SWAROVSKI marks have become famous and well-known in China.
The Complainant has registered several domain names, including and , which point to the Complainant’s official website, located at “www.”. The Complainant’s official website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine SWAROVSKI branded products.
The disputed domain name was registered on May 9, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The reasons are as follows:
1. The addition of the terms “crystal” and “mall” as a suffix to the word “Swarovski” does not lessen the confusing similarity between the disputed domain name and the Complainant’s SWAROVSKI mark. The Complainant manufactures crystal jewellery and the use of the word “crystal” along with the word “Swarovski” creates an association with the Complainant and its business. Thus, it strengthens rather than weakens the likelihood of confusion between the disputed domain name and the Complainant’s SWAROVSKI marks.
2. In the same way, the use of the word “mall” along with the word “Swarovski” creates the impression that the disputed domain name leads to a Swarovski website which also provides information on Swarovski shopping mall store locations from which Swarovski products can be purchased. Thus, the addition of generic words like “crystal” and “mall” to a trademark (and in particular for a trademark such as “Swarovski”) is not enough of a differentiation from that trademark to avoid a finding of confusing similarity.
3. Previous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent has never been known by the disputed domain name and has no legitimate interests in the SWAROVSKI marks or the name “Swarovski”.
2. The disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the Respondent’s website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
3. The Respondent has used the word “Swarovski” in the disputed domain name to create the impression that he is associated with the Complainant and its SWAROVSKI mark. Furthermore he has used the word “Swarovski” throughout the website upon which the disputed domain name resolves and offers purported Swarovski branded products for sale on the said website which supports the contention that the Respondent chose the disputed domain name only because he was seeking to create an association with the Complainant.
4. The Respondent’s sale of purported Swarovski products demonstrates that he is not making a bona fide offering of goods or services, nor does he have a legitimate interest. Furthermore, purporting to sell Swarovski products does not give the Respondent the right to register and use the SWAROVSKI marks in the disputed domain name without the consent of Swarovski. Furthermore, the Respondent is not an authorised Swarovski agent and therefore does not have the right to use SWAROVSKI marks in the disputed domain name.
5. The Respondent’s use of the SWAROVSKI marks is clearly for the purpose of misleading consumers into believing that the Respondent and the website upon which the disputed domain name resolves are associated with or approved by the Complainant. Thus, the Complainant contends that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. Consequently, the Respondent does not have a legitimate interest in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the SWAROVSKI marks. The selection of the disputed domain name, which wholly incorporates the SWAROVSKI marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term. Instead it is a famous and well-known trademark. Thus, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI marks. The Respondent would not have advertised products purporting to be Swarovski products on his website if he was unaware of Swarovski’s reputation.
2. 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 sufficient to demonstrate bad faith. Previous UDRP administrative panels have found that coupling a descriptive word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name may constitute bad faith on the part of the respondent. 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.
3. The Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Respondent’s website because of its purported affiliation with the Complainant. This is evidence of the Respondent’s bad faith registration and use of the disputed domain name.
4. The Respondent is attempting to attract consumers for commercial gain to the disputed domain name by utilising the Complainant’ SWAROVSKI marks on the Respondent’s website and by offering products identical to or similar to the Complainant for sale. This type of behavior is indicative of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant contends that English is an appropriate language for the proceedings as the Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language.
2. The Complainant, and its SWAROVSKI marks, is an international brand with registered marks in multiple jurisdictions, including China. However, the Complainant’s international business primarily operates in English. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
3. The website hosted at the disputed domain name is in English which clearly demonstrates that the Respondent has proficiency and is able to communicate in English.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On the record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, he could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to 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. Moreover, in accordance with 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 of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the SWAROVSKI marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the SWAROVSKI marks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s SWAROVSKI mark is a well-known mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s SWAROVSKI mark in its entirety followed by two English words “crystal” and “mall” and the top level domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “swarovski” which is identical to the Complainant’s registered trademark SWAROVSKI. Given the fame and notoriety of the Complainant’s SWAROVSKI mark, the addition of the words “crystal” and “mall” does not provide sufficient distinction from the Complainant. The Panel is of the view that since the word “crystal” has a direct reference to the type of goods offered for sale by the Complainant under its SWAROVSKI mark and the word “mall” indicates a location whereby such goods may be obtained, the incorporation of these two words in the disputed domain name has the effect of strengthening the likelihood of confusion which has been created by the use of the word “swarovski” instead of providing a distinguishing feature to the Complainant’s SWAROVSKI mark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s SWAROVSKI mark as a result of its fame and notoriety; (b) the distinctive character of the Complainant’s SWAROVSKI mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the SWAROVSKI mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “swarovskicrystalmall” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the SWAROVSKI mark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant Swarovski branded products on his website without the consent of the Complainant. The Respondent is not an authorised agent and therefore does not have the right to use SWAROVSKI marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that he is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
5. The Complainant and its SWAROVSKI mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries and is a registered trademark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the SWAROVSKI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) A 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) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its SWAROVSKI mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has established a substantial presence on the internet through the registration of several domain names, including and , which point to the Complainant’s official website, located at “www.”. The Complainant’s brand of crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries is also available on the Internet via its official website located at “www.”. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant SWAROVSKI branded products on his website without the consent of the Complainant. The Respondent is not an authorised agent and therefore does not have the right to use SWAROVSKI marks in the disputed domain name. Such a behaviour on the part of the Respondent is indicative of bad faith registration and use. The burden is on the Respondent to explain his choice of the disputed domain and his subsequent conduct. However, the Panel finds that the Respondent has not discharged this burden with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s SWAROVSKI mark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous mark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorisation is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Dated: May 21, 2012
Full & Egal Universal Law Academy