The Complainant is Swarovski Aktiengesellschaft, in Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Hallo-Com Bt., in Budapest, Hungary. 2. The Domain Name and Registrar
The disputed domain name is registered with GLOBIX Kft (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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.
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 August 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2012.
The Center appointed Zoltán Takács 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. Language of the Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceedings 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.
The Complainant submitted its Complaint in English and requested that English be the language of the proceedings since its international business is primarily operated in English.
In its Registrar Verification Response of August 3, 2012, the Registrar listed both the Hungarian and English languages as the languages of the registration agreement for the disputed domain name. In reply to this correspondence, the Center requested the Registrar to confirm the correct language of the registration agreement, and “if in the extremely particular circumstances that either Hungarian or English (or both Hungarian and English) is the language of the registration agreement, please kindly confirm specifically”.
On August 6, 2012, the Registrar replied to the Center and stated that “this registrant is Hungarian, they accept the registration agreement in Hungarian language”.
The Center thereafter proceeded to issue its case-related communications to the parties in both English and Hungarian.
In its Supplement to the Complaint dated August 9, 2012, the Complainant requested that the English be the language of the proceedings because it is not familiar with the Hungarian language and its international business is primarily conducted in English. The Complainant stated that conducting the proceedings in Hungarian would incur substantial added expense and inconvenience if it is requested to translate the Complaint and all the attached documents.
The Panel notes that although the Center has accepted the Complaint in the language filed and concluded that the language of the registration agreement was Hungarian, the ultimate determination of the language of the proceedings is left by the Center to the Panel.
In the present case, the Panel is not convinced that the registration agreement for the disputed domain name was made in the Hungarian language.
The Registrar’s website - available only in Hungarian - under the “Sources” section does refer to the ICANN registration agreement the Registrar uses, but this agreement is available in English language only. Should the Registrar be using a dual language registration agreement as it advised the Center, or should the Registrant accepted the registration agreement in Hungarian, as the Registrar also advised the Center, it is fair to assume that a Hungarian language version of the registration agreement should also be available to the Registrar customers at a website operated in Hungarian language only.
The Center made several attempts to clarify the language of the registration agreement, but the Registrar provided questionable and contradictory information, none of which being conclusive to the Panel that Hungarian was the language of the registration agreement.
The Panel further notes that the Respondent made no objection to either the Complaint filed in English or the subsequent request of the Complainant that the proceeding be conducted in English.
In its English and Hungarian language notification of August 8, 2012, the Center invited the Respondent to submit any arguments and support as to why the proceedings should not be conducted in English as per the Complainant’s request. In this notification the Center specifically advised the Respondent that in absence of its response by August 13, 2012, the Center would proceed on the basis that the Respondent did not object to the Complainant’s request that English be the language of the proceedings. The Respondent did not respond to the notice and had decided not to participate in the proceedings despite the Center’s fair and appropriate efforts to that end.
Having considered all the above discussed facts and circumstances, the Panel’s view is that if the Complainant were to submit all documents in Hungarian, the proceedings would be unduly delayed, and the Complainant would have to incur considerable expenses to translate extensive documents submitted in support of its Complaint. On the other hand, despite all efforts the Center made, the Respondent did not show any intention to participate in the proceedings. Therefore, observing the spirit of paragraph 11 of the Rules, the Panel rules that English be the language of this administrative proceeding. 5. Factual Background
The Complainant is the world’s leading manufacturer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and presence in more than 120 countries worldwide. In 2011, the Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques throughout the world.
The Complainant produces and markets these products under the trademark SWAROVSKI and owns a number of registered trademark rights for the mark SWAROVSKI including Hungary where the Respondent is located, e.g.:
- International Trademark Registration No. 663366, registered on October 17, 1996;
- Community Trademark Registration No. 003895091, registered on August 23, 2005;
for a wide variety of goods including crystal jewelry stones, crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries, as well as services including retail of precious stones, jewelry and decorative objects made of glass.
The Complainant also owns registrations for the domain names since January 11, 1996 and since April 16, 1998, from which it operates its websites. These websites enable Internet users to access information regarding the Complainant and its merchandise and to purchase genuine Swarovski products.
The disputed domain name was created on April 18, 2012.
At the time of submission of the Complaint, the website at the disputed domain name advertised for sale purported Swarovski products and operated an online shop which utilized the SWAROVSKI mark by offering for sale goods similar to those produced and sold by the Complainant. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contains the word “swarovski” and it is therefore confusingly similar to the SWAROVSKI trademark in which the Complainant has long established and reputed rights based on a number of registrations valid throughout the world. The addition of the generic term “plaza” as a suffix does not have any significant impact on the overall impression of an Internet user, because “swarovski” as instantly recognizable is the dominant part of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. It has no connection or affiliation with the Complainant and has not received any license or consent to use the SWAROVSKI trademark in a domain name or in any other way.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that “swarovski” is not a descriptive or generic word, contrariwise it is a famous mark and it is inconceivable that the Respondent was unaware of the mark at the time of registering the disputed domain name.
The website under the disputed domain name has been used to advertise purported Swarovski products as well as to offer for sale products identical with or similar to those of Swarovski, intending to confuse Internet users into believing that the Respondent’s website under the disputed domain name is either an official Swarovski website, or that the Respondent is affiliated with the Complainant or authorized to sell Swarovski products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP panel decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds registered trademark rights for the mark SWAROVSKI valid in many countries worldwide, including Hungary where the Respondent is located. For the purpose of this proceeding, the Panel establishes that the Complainant’s valid International Trademark Registration No. 663366, registered on October 17, 1996 and Community Trademark Registration No. 003895091, registered on August 23, 2005 satisfy the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in SWAROVSKI, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the trademark.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name fully incorporates the Complainant’s SWAROVSKI trademark, with addition of the term “plaza” as suffix.
The trademark SWAROVSKI is neither a common, nor a descriptive word; it identifies the business and products of the Complainant. Mere use of the descriptive term “plaza” in the disputed domain name otherwise identical with the Complainant’s SWAROVSKI trademark is not only not capable to eliminate confusing similarity with the Complainant’s trademark, but in fact increases it in the opinion of the Panel. Internet users would likely to believe that the disputed domain name is connected to or associated with the Complainant and its business.
For all these reasons, the Panel finds that the element of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) before any notice to it of the dispute, its 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) it has been commonly known by the domain name; or
(iii) it is 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.
In the present case, the Complainant submitted uncontested evidence that it holds well-established rights in the trademark SWAROVSKI.
The Complainant never gave permission to the Respondent to use its SWAROVSKI trademark in any way.
The Complainant’s prior rights in the trademark SWAROVSKI long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
In view of this Panel, there cannot be any plausible reason or explanation for the Respondent’s selection of the disputed domain name but to intentionally ride on the fame and reputation of the Complainant’s widely recognizable SWAROVSKI trademark. The Respondent could have provided evidence of the opposite, but it defaulted and failed to respond, and by doing so failed to offer to the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, or otherwise to counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have 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 you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location of a product or service on your website or location.”
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
This Panel finds it unlikely that the Respondent who registered and used the disputed domain name in relation to identical or similar products was unaware of the Complainant’s SWAROVSKI mark and that the choice of the disputed domain name was merely coincidental. The Respondent’s website under the disputed domain name offered to sell among other similar products a variety of purported Swarovski products.
The Respondent did provide information on the website under the disputed domain name as to the origin of such goods, advising customers that the Swarovski products they offered for sale have indeed not been manufactured by Swarovski, and such jewelry has only been tagged with genuine Swarovski crystals.
Given the recognition and actual knowledge of the Respondent of the SWAROVSKI mark at the time of registration and incorporation of the SWAROVSKI mark into the disputed domain name in its entirety indicates to the Panel that the Respondent has registered the disputed domain name with intent to misappropriate the value of the SWAROVSKI mark. Thus the Panel concludes that the disputed domain name was registered in bad faith.
The Respondent registered the disputed domain name many years after the Complainant’s SWAROVSKI trademark became widely known for products such as crystal jewelry stones and crystalline semi-finished goods and have used it for its jewelry sales in direct competition with such products of the Complainant.
The Respondent’s registration of the disputed domain name fully incorporating the SWAROVSKI mark and use of the disputed domain name for the Respondent’s jewelry sales in competition with the Complainant’s jewelry products supports the Panel’s finding that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s SWAROVSKI mark.
The Panel is convinced that the Respondent has registered and is using the disputed domain name in order to create confusion among Internet users and divert them to its website within the meaning of paragraph 4(b)(iv) of the Policy.
Under these circumstances the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and the element of paragraph 4(a)(iii) of the Policy is satisfied. 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 disputed domain name be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Dated: September 27, 2012
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