The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Whois Privacy Protection Service / Sprout Ltd., mamoru shiga of Kanagawa, Japan and Fukuoka, Japan, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2012. On July 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2012, the Registrar 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 July 26, 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 July 26, 2012.
The Center verified that the Complaint together with the amendment 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”). On July 26, 2012, the Center issued a Language of Proceeding notification in both English and Japanese, inviting comment from the parties. In the same notification, the Center advised the Respondent of that if the Center did not hear from the Respondent by the due date of July 31, 2012, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of proceedings. On July 26, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not submit any objection to the Complainant’s request by the due date of July 31, 2012.
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 August 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2012.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on September 17, 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 the 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 owns registered marks for the word mark SWAROVSKI globally, and it obtained trademark registrations for the same mark in Japan, where the Respondent is located, which remain valid as follows:
Registration number: 892051
International classes of goods: 14, 18, 25, 26
Registration date: March 8, 1991
Registration number: 2289643
International classes of goods: 9, 14
Registration date: December 26, 1990
International Registration number: 857107
International classes of goods: 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35, 41
Registration date: November 3, 2004
The disputed domain name was registered on October 31, 2005. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the registered trademark SWAROVSKI in which the Complainant has rights;
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name should be considered as having been registered and used in bad faith by the Respondent; and
(iv) The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. The Language of Proceeding
The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Japanese. On July 26, 2012, the Center issued in English and Japanese a Language of Proceeding Notification. On July 26, 2012, the Complainant submitted a request that English be the language of the proceeding, as originally requested in the Complaint, on the grounds that it is presumable that the Respondent is able to communicate in English from the following facts: i) the Respondent knows English at least, as proven by the content of the website at the disputed domain name (even though the Panel notes that at the date of this decision the website is in Japanese); ii) the Respondent appears to operate internationally in multiple languages; and iii) that Swarovski is an international brand with registered marks in multiple jurisdictions whose international business primarily operates in English.
The Respondent did not submit any objection to the Complainant’s request that English be the language of the proceeding, notwithstanding the Center’s notifying the Respondent (in both English and Japanese) that the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceedings if the Respondent did not submit an objection by July 31, 2012.
It is the Panel’s view that the Respondent appears to have ability to communicate in English in light of the Complainant’s grounds for requesting that English be the language of the proceeding, to which the Respondent did not submit any objection.
In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Japanese, and therefore, if the Complainant were to submit all documents in Japanese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001). B. The Respondent’s default
The Center gave the Respondent the opportunity to file the Response in either language. The Center did this by notifying the Complainant of the Center’s preliminary decision to accept a Response in either Japanese or English and appoint a panel familiar with both languages. Notwithstanding the Center’s notification, the Respondent did not submit any response by the due date, and thus it is in default. C. Identical or Confusingly Similar
The Complainant owns trademark registrations for the word mark SWAROVSKI around the world, including in Japan as seen in Section 4 (“Factual Grounds”) above. The word “shop” in the disputed domain name is generic and descriptive in relation to the retail shops regardless of online or offline. The Panel finds that the addition of the term “shop” as a suffix to the SWAROVSKI mark does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark. (See Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630; and Swarovski Aktiengesellschaft v.Bingbing Chen,WIPO Case No. D2010-1736).
The prominent portion, “swarovski,” of the disputed domain name is identical with the Complainant’s trademark SWAROVSKI, and thus the Panel has found that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy has been established. D. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent in the disputed domain name. The burden of production will then shift to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel has found that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the SWAROVSKI mark in a domain name or in any other manner. The Panel further finds that on the record, it has been established that the Respondent has never been known by the disputed domain name.
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). E. Registered and Used in Bad Faith
The Panel has recognized that Swarovski is the world’s leading producer of cut crystal, genuine gemstones and created stones from the facts that it has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries with its products sold in 1218 of its own boutiques with a revenue in 2011 of EUR 2.87 billion. The Complainant has spent substantial time, effort and money advertising and promoting the SWAROVSKI marks in Japan and worldwide as evidenced by Annex D through G to the Complaint. The Complainant’s rights in the SWAROVSKI marks have been recognized by previous UDRP panels (Swarovski Aktiengesellschaft v. Lybing Fei,WIPO Case No. D2012-0187; and Swarovski Aktiengesellschaft v. liu ji,WIPO Case No. D2011-0353). In consideration of the circumstances above, the Panel has found that the Complainant’s SWAROVSKI marks have become famous and well known in Japan and worldwide.
In light of the well-known status of the Complainant’s SWAROVSKI marks, well before the registration date of the disputed domain name, it is presumed by the Panel that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the SWAROVSKI marks. The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI marks, in that it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark SWAROVSKI or that the disputed domain name might be of some type of economic advantage to the Respondent. (See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445; and Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981).
Registration of the disputed domain name incorporating famous Complainant’s mark SWAROVSKI by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated SWAROVSKI mark in the disputed domain name and used the Complainant’s mark, throughout the website resolved by the disputed domain name, in the “title bar” and purports to sell SWAROVSKI products. The Panel views such a behavior to be considered as constituting bad faith use of the disputed domain name even if the products the Respondent offer for sale were genuine goods because the Internet users are highly likely to conceive the website resolved to the disputed domain name to be operated by the Complainant or its authorized agents. This is one of the typical methods to attract and redirect Internet users to the website resolved to by disputed domain names for commercial gain. The Panel further finds that the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the website at the disputed domain name because of its purported affiliation with the Complainant’s mark SWAROVSKI. Furthermore, the Respondent failed to prove good faith use of the disputed domain name because it did not submit any Response to the Complaint.
As such, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith, and the third element of Policy has been established. 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.
Ho-Hyun Nahm
Sole Panelist
Date: September 30, 2012
Full & Egal Universal Law Academy