Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase, Sri Lanka.
Respondent is A. S. of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 26, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On March 27, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication to the Parties on March 27, 2012, notifying them that according to information the Center received from Jiangsu Bangning Science & technology Co. Ltd., the concerned registrar, the language of the Registration Agreement for the disputed domain name is Chinese. In this email communication Complainant was requested to provide satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or submit the Complaint translated into Chinese; or submit a request for English to be the language of the administrative proceedings. Respondent was given until April 1, 2012 to provide comments on Complainant’s submission. On March 28, 2012, Complainant sent an email communication to the Center, requesting English to be the language of the administrative proceedings, to which the Respondent has not replied.
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 Respondent of the Complaint, and the proceedings commenced on April 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2012. On April 24, 2012, the Center notified Respondent’s default. On April 26, 2012, the Center received a letter by courier from Respondent dated April 14, 2012 with a post office stamp of April 23, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 2, 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
Complainant is a world famous producer of cut crystal, genuine gemstones and created stones. In connection with its business, Complainant has used various trademarks consisting of or containing the SWAROVSKI sign.
Complainant shows to be the holder of inter alia the following SWAROVSKI trademarks:
- SWAROVSKI, word mark, registered as a Community trademark under number 007462922 on July 21, 2009 in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44, 45;
- SWAROVSKI, word mark, registered as a Chinese trademark, under number 384001 on July 30, 1987 in class 14 for imitation jewelry, and duly renewed.
It is stated in the WhoIs records that Aurelie Sorin, Respondent in the instant case, is the current holder of the disputed domain name , which was registered on February 4, 2012.
The disputed domain name is linked to a website offering for sale jewerlry products bearing the SWAROVSKI trademark. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name since its registration. Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not respond to the Complaint. In a non-standard communication, dated April 14, 2012 with a post office stamp of April 23, 2012, received by the Center on April 26, 2012, Respondent claims not having used the SWAROVSKI trademark on a website. 6. Discussion and Findings 6.1 Language of Proceedings
As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “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”.
In cases where the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint, panels often decide to use the English language in the UDRP proceedings (See e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement).
This can for instance be the case where a respondent understands English, but is not proficient in writing. In such cases and in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights to present their respective cases, and ensure that both parties are treated with equality in the administrative proceedings, a panel may agree to receive and consider all writs, information and documents submitted also in other languages than the language of the proceedings (See Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez,WIPO Case No. D2000-1025).
In the present case, Complainant argued that a website on which Respondent has contains some English words, and that it would be unfair to require translation of the Complaint into Chinese.
On the other hand, when the Center finally received a reply in a letter on April 26, 2012, the content of the non-standard communication in French, in which the named registrant argues that its name improperly appears in the WhoIs and requests that further communications be discontinued. In such circumstances, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. Indeed, it would appear that whomever the registrant of the disputed domain name may be, it has taken steps to avoid being contacted, thus while the Center has sought to ensure the rights of Respondent to defend itself and the right to equal treatment, Respondent appears to have taken steps to frustrate such efforts. Respondent cannot say that it has not been given an opportunity to be heard. See INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard,WIPO Case No. D2011-1978.
For these reasons, the Panel determines that the language of the proceedings is English. 6.2 Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. 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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is the holder of the famous and widely-known SWAROVSKI trademark used in connection to Complainant’s jewelery business.
The disputed domain name only differs from Complainant’s SWAROVSKI trademark by the addition of a hyphen and the non-distinctive text “bijoux”. Previous panels have considered that the addition or deletion of a hyphen is an insignificant change, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See T, Inc. v. Port-A-John, WIPO Case No. D2007-1497; Universal City Studios, Inc. v. HarperStephens,WIPO Case No. D2000-0716).
The Panel is also of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, where the addition of the generic word “machines” to complainant’s trademark CAT did not serve to distinguish the domain name ; Nike Inc. v. Farrukh Zia,WIPO Case No. D2000-0167, where the domain name was held to be confusingly similar to the trademark NIKE; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ”mail”, ”post”, ” “fan” and “top50” to the word “POKÉMON” in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the mark POKÉMON; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
The addition of the non-distinctive term “bijoux”, separated from the SWAROVSKI trademark with a hyphen does nothing to reduce the confusing similarity of the disputed domain name with Complainant’s widely and well-known SWAROVSKI trademark. On the contrary, “bijoux” means “jewelry” in French. As this term directly refers to the products of Complainant, the addition of this term rather increases the risk of confusion with the SWAROVSKI trademark of Complainant. See Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524 (); Swarovski Aktiengesellschaft v. Hopper Dirt,WIPO Case No. D2011-1525 ()
For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to place the burden of rebuttal on Respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the way in which Respondent has been using the disputed domain created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site as figurative trademarks of Complainant were taken up on the webpage, together with a copyright notice and a “powered by”-mention, both falsely indicating Complainant’s endorsement.
Finally, Respondent did not reply to Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location. 1. Bad Faith Registration
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the SWAROVSKI trademark at the moment it registered the disputed domain name, since the use that Respondent made of the websites linked to the disputed domain name shortly after registration clearly shows that Respondent knew Complainant’s trademark. The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with Complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that Respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix “voip” suggested knowledge of Complainant’s rights in the trademarks).
Therefore, it is established that the disputed domain name was registered in bad faith. 2. Bad Faith Use
Respondent made the website linked to the disputed domain name look like an official website from Complainant and used the disputed domain name in connection with selling items under Complainant’s trademark. The Panel is of the opinion that Respondent attempted to attract Internet users for commercial gain to its website and other online locations, while creating a likelihood as to the source, sponsorship, affiliation or endorsement by Complainant under 4(b)(iv) of the Policy .
Therefore, it is established that the disputed domain name was not only registered, but also is used in bad faith. 7. Decision
For all 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: May 16, 2012
Full & Egal Universal Law Academy