The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America and ning ning of Frankfurt, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 9, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 10, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 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 amendment to the Complaint on May 14, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on May 14, 2012.
The Center verified that the Complaint together with the amendments to 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 May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2012.
The Center appointed Alfred Meijboom as the sole panelist in this matter on June 11, 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 has registered SWAROVSKI trademarks with the United States Patent and Trademark Office for various classes through various registrations, including United States trademark registration no. 1739479, registered on December 15, 1992, United States trademark registration no. 1785590, registered on August 3, 1993, United States trademark registration no. 2402230, registered on November 7, 2000, and United States trademark registration no. 934915, registered on May 30, 1972, as well as an international trademark with International Registration no. 857107, registered on November 3, 2004. These trademarks are hereafter referred to as the “Trademarks”.
The disputed domain name was registered on February 2, 2012 and is operating a website associated with the disputed domain name as an online shop for purported “Swarovski” products. 5. Parties’ Contentions A. Complainant
The Complainant claims to be one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution in 42 countries and presence in more than 120 countries. In 2010, the Complainant’s products were sold in 1,084 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 contends that it has spend substantial time, effort and money advertising and promoting the Trademarks throughout the United States of America and worldwide. As a result, the Trademarks have become famous and well-known in the United States and worldwide.
The Complainant alleges that the disputed domain name is being used to confuse consumers into believing that the website associated with the disputed domain name is an official “Swarovski” website and/or the Respondent is affiliated with or authorized to sell products by “Swarovski”.
The Complainant contends that the disputed domain name is confusingly similar to the Trademarks. The addition “uk”, which is commonly used as an abbreviation for the “United Kingdom”, to the SWAROVSKI Trademarks does not differentiate the disputed domain name enough to not cause confusion among consumers. The Complainant also states that previous UDRP panels have found that the addition of a geographical indicator as a suffix to the SWAROVSKI Trademarks does not serve to differentiate the domain name from the SWAROVSKI Trademarks. In addition, the use of the “.net” extension does not decrease the confusing similarity of the disputed domain name form the SWAROVSKI Trademarks and is irrelevant in establishing a finding of confusing similarity.
According to the Complainant the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with “Swarovski” and has not received any license or consent, express or implied, to use the SWAROVSKI Trademarks in a domain name or in any other manner.
The Respondent has never been known by the disputed domain name and has no legitimate interests in the Trademarks or the name “Swarovski”.
The Complainant further claims that the disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the Trademarks at the time of registration. Products purporting to be “Swarovski” products would not have been advertised via the disputed domain name if the Respondent was unaware of the Complainant’s reputation. Furthermore, the Complainant contends that registration of a famous mark, like the Trademarks, as a domain name by an entity that has no legitimate relationship with the mark is by itself sufficient to demonstrate bad faith.
Finally the Complainant contends that the disputed domain name is being used in bad faith for the following reasons. The Respondent had done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent had incorporated the Trademarks in the disputed domain name, throughout the website, and is attempting to attract consumers for commercial gain by purporting to sell “Swarovski” products.
For these reasons, the Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The identity of the Respondent
The Respondent was originally named in the Complaint as “Whois Privacy Protection Services, Inc.” which was indicated to be the holder of the disputed domain name in the publicly available WhoIs database consulted by the Complainant. Upon receiving the usual request from the Center for verification of the registrant, the Registrar advised that the registrant, or holder of the disputed domain name, was “ning ning” from Germany.
According to paragraph 1 of the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Therefore, the Panel finds that “Whois Privacy Protection Services Inc.” was properly named as the Respondent in the original Complaint.
Although Whois Privacy Protection Services, Inc. was properly named as the Respondent, it would appear to be used to conceal and protect the identity of the real beneficial owner “ning ning”.
For purposes of the application of the Policy, the Panel should consider who is the beneficial owner of the disputed domain name.
The Panel finds that both the beneficial owner “ning ning” and the original respondent “Whois Privacy Protection Services, Inc.” should be named as Respondents. In the remainder of this decision, they will be described in the singular, as the Respondent (e.g., The iFranchise Group v. Jay Bean/MDNH, Inc./Moniker Private Services [23658],WIPO Case No. D2007-1438; Spenco Medical Corporation v. “”/ Private Whois Service,WIPO Case No. D2011-0595; Alegent Health v. surper tree / Domains by Proxy, Inc.,WIPO Case No. D2011-2288. Assessment of the case
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of UDRP panelists find that the Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that disputed domain name is confusingly similar to the Trademarks. It is consistently decided that adding a geographical indicator – in this case “uk” which is the commonly-used acronym for “United Kingdom” – to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Playboy Enterprises International, Inc. v. Joao Melancia,WIPO Case No. D2006-1106 and Omya AG and Omya UK Limited v. DomainProtect LLC,WIPO Case No. D2012-0164, finding that the addition of the element “portugal” and “uk”, respectively, does not distinguish a domain name from being confusingly similar). Furthermore, the addition of the top level domain “.net” is non-distinctive because it is required for the registration of a domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Trademarks, and the first element is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant claims that it did not authorize the use of the Trademarks to the Respondent. The Panel is satisfied that there is no indication that the Respondent was commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of the goods or services, in particular since the Complainant undisputedly asserted that the Respondent used the disputed domain name to operate an online shop that sells purported “Swarovski” products.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is met. C. Registered and Used in Bad Faith
The evidence submitted by the Complainant sufficiently constitutes that the Trademarks have a reputation and are well-known worldwide (as also found in e.g., Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947; Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065; Swarovski Aktiengesellschaft v. Marzena Marzena,WIPO Case No. D2011-0980; and Swarovski Aktiengesellschaft v. shenglin fan,WIPO Case No. D2012-0170).
The registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, generally constitutes bad faith registration and this is the approach of the Panel in this case (e.g., Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte,WIPO Case No. D2010-0456). Moreover, the Respondent’s awareness of the Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration.
In respect to the use of the disputed domain name, the Complainant has proven to the satisfaction of the Panel, by means of the printouts of the website to which the disputed domain name resolves, that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the website.
Therefore, the Panel finds the disputed domain name was registered and used in bad faith, so that the third element of paragraph 4(a) of the Policy is met. 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.
Alfred Meijboom
Sole Panelist
Dated: June 13, 2012
Full & Egal Universal Law Academy