The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is women of Hefei, Anhui, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2012. On April 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 18, 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on June 1, 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 a 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. 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.
The Complainant has registered various SWAROVSKI marks worldwide, including Chinese Trademark Reg. No. 384001 and No. 3520173 in class 14.
The Domain Name was registered on December 20, 2011 and the Respondent has used the Domain Name to direct Internet users to a website selling purported Swarovski products. 5. Language of the Proceedings
Under paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant initially filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language;
(b) the content on the website associated with the Domain Name is in English which clearly demonstrates that the Respondent has proficiency and is able to communicate in English;
(c) conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having to translate the Complaint and its annexes into Chinese.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the Complainant is a company registered in Liechtenstein and operates its business in multiple jurisdictions whose international business primarily operates in English.
The Panel also views that the website to which the Domain Name resolves displays all its contents in English and there is no version of the Domain Name with contents in Chinese. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel has also taken into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as its annexes is requested to be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the evidence into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its SWAROVSKI marks. The Domain Name incorporates the SWAROVSKI mark in its entirety. The addition of the term “company” as a suffix to the SWAROVSKI mark in the Domain Name does not lessen the confusing similarity between the Domain Name and the SWAROVSKI mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any express or implied license or consent from the Complainant to use the SWAROVSKI mark in a domain name or in any other manner. Moreover, the Respondent has never been known by the Domain Name and has no legitimate interest in the SWAROVSKI marks or the name “Swarovski”. The Respondent uses the Domain Name for the purpose of creating an association with the Complainant.
The Complainant finally contends that the Respondent has registered and is using the Domain Name in bad faith. The SWAROVSKI marks are well-known in China and worldwide and it is inconceivable that the Respondent was unaware of the SWAROVSKI marks at the time of registering the Domain Name. Moreover, the Respondent has provided false contact details, which is further indicative of bad faith. In addition, the registration and use of the Domain Name by the Respondent creates “initial interest confusion”, which attracts Internet users to the website associated with the Domain Name because of its purported affiliation with SWAROVSKI. The Respondent is attempting to attract consumers for commercial gain by utilizing the SWAROVSKI marks. Furthermore, it is unlikely that the Respondent can prove good faith use of the Domain Name because it is difficult to conceive of a use that would not infringe the SWAROVSKI marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the SWAROVSKI marks. The Complainant’s SWAROVSKI mark is protected as a trademark and the Complainant holds registration for the SWAROVSKI mark worldwide including Chinese Trademark Reg. No. 384001 registered as early as in 1987, and Chinese Trademark Reg. No. 3520173 registered in 2004, covering goods in class 14. The registration of the SWAROVSKI trademarks predates that of the Domain Name.
The Domain Name consists of two parts, one is the word “swarovski”, and the other is the word “company”. The word “swarovski” is identical to the Complainant’s trademark SWAROVSKI, while the other word “company” is a generic word. The Panel finds that the addition of the generic word “company” is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s SWAROVSKI mark in the Domain Name. See Wal-Mart Stores, Inc vs. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”).
The Panel holds that the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s SWAROVSKI trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) 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 is not connected or affiliated with the Complainant and has not received any license or consent to use the trademark of the Complainant in a domain name or in any other manner as contended by the Complainant. The Panel is therefore satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
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 of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel however notes that in this case the Respondent did not respond to the contentions made by the Complainant and failed to present any evidence to prove its rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
Besides, the Panel holds that the Respondent’s use of the Domain Name to direct Internet users to a website selling purported Swarovski products creates a likelihood of confusion with the Complainant’s SWAROVSKI marks as to the source, sponsorship, affiliation, or endorsement of the website, which precludes a bona fide offering of goods and services.
After reviewing the case, the Panel finds there is no evidence that the Respondent has used or intends to use the Domain Name for purposes of bona fide offering of goods or services. The Panel finds that the Respondent’s use does not satisfy with the Oki Data requirement that the respondent’s site should disclose its relationship with the trademark holder. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The Complainant is well-known in China and worldwide. Additionally, the word “Swarovski” has no generic meaning in English. The Panel views that it is inconceivable that the Respondent was unaware of the SWAROVSKI mark when registering the Domain Name. Bad faith can be found when the Respondent was aware of the Complainant’s trademark at the time of registering the Domain Name. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004.
As evidenced by the documents submitted by the Complainant, the Respondent is using the Domain Name to direct Internet users to a website selling purported Swarovski products. Given the widespread reputation of the trademark SWAROVSKI, the Panel finds that the public is very likely to be confused and misled into the belief that the Domain Name is connected with the Complainant. Thus, the Panel determines that bad faith is established by the Respondent’s use of the Domain Name to intentionally confuse Internet users and to trade on the Complainant's rights and reputation in accordance with paragraph 4(b)(iv) of the Policy.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: June 18, 2012
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