The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard, WhoisGuardProtected of Los Angeles, California, United States of America / Frank Amanda of Andover, Hampshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2012. On November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 November 7, 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 November 8, 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”).
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 November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2012.
The Center appointed Leon Trakman as the sole panelist in this matter on December 6, 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 produces cut crystal, genuine gemstones and created stones, with production and distribution facilities across the world. The Complainant has registered numerous trademarks in the United States and the United Kingdom including in 2011 and 2012. The Complainant has also registered several domain names, including and , which direct Internet users to its website, located at “www.”.
The Respondent registered the disputed domain name on July 19, 2012. Internet users are directed to a website at which the Respondent offers for sale a variety of products, such as “necklaces”, “bracelets” and “earrings” which are referred to as “Swarovski” products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name, is identical or confusingly similar to its trademark in terms of paragraph 4(a)(i) of the Policy; that the Respondent has no right nor interest in the disputed domain name in terms of paragraph 4(a)(ii) of the Policy; and that the disputed domain name was registered and is being used in bad faith in terms of paragraph 4(a)(iii) and 4(b) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel holds that the disputed domain name, , is identical in key respects and also confusingly similar to the Complainant’s trademarks, contrary to paragraph 4(a)(i) of the Policy. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name and the fact that the website at the disputed domain name is identical to that of the Complainant’s are evidence that the disputed domain name is confusingly similar to the Complainant’s marks. See Swarovski Aktiengesellschaft v. Blue Crystal,WIPO Case No. D2012-0630; Swarovski Aktiengesellschaft v. Cao Zhiming,WIPO Case No. D2012-1028; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning,WIPO Case No. D2012-0979.
The addition of the term “outletsale” as a suffix in the disputed domain name attenuates such confusion that the “outletsale” is being offered by the Complainant, which is clearly not the case. See Swarovski Aktiengesellschaft v. Hanguo,WIPO Case No. D2012-0749; Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139.
Nor does the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” differentiate the disputed domain name sufficiently to differentiate it materially from the Complainant’s mark. See Swarovski Aktiengesellschaft v. Linyuan Zhang,WIPO Case No. D2012-0259; Swarovski Aktiengesellschaft v. Luigi Donatello Asero,WIPO Case No. D2012-0668.
Coupling a generic term to the Complainant’s mark is also likely to accentuate the confusing similarity between the disputed domain name and the Complainant’s mark, particularly insofar as the disputed domain name provides Internet users with access to a website that features products bearing the “Swarovski” name. See Swarovski Aktiengesellschaft v. Xue Yan Yang,WIPO Case No. D2012-1041; Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139.
For the above reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name, . The Respondent is not known by the disputed domain name and has no rights or legitimate interests in the Complainant’s mark, or in the name “Swarovski”. Nor does the Respondent have any authority, whether express, implied, or ostensible, by which to use 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 Complainant’s trademark in the disputed domain name or in any other capacity. See Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981; Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Accordingly, the Panel holds that the Complainant has no rights or legitimate interests in the disputed domain name, . C. Registered and Used in Bad Faith
The Panel holds that the Respondent has registered and used the disputed domain name in bad faith, contrary to paragraph 4(a)(iii) and 4(b) of the Policy.
First, it is highly probable that the Respondent is aware of the Complainant’s numerous and registered trademark registrations in the name “Swarovski”. The Complainant’s mark is unusual; it is widely known across the world; it is identified with jewelry.
Second, it is highly improbably for the Respondent to have used the disputed domain name for the purpose of selling jewelry at the Respondent’s website, without knowledge of the Complainant’s mark. See Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. Meiguo,WIPO Case No. D2012-0745.
Third, the very choice of that disputed domain name by the Respondent was most likely intended to create the impression that the Respondent was the Complainant, or was associated with the Complainant, or was authorized by the Complainant to use the disputed domain name. Given that the Respondent had no such authorization, the Respondent clearly acted in bad faith in registering and using the disputed domain name.
Fourth, the Respondent’s registration of a domain name which included the name of a well know trademark in the absence of any legal connection to the Complainant, or any right or legitimate interest in the name or in the Complainant’s mark is strong evidence of bad faith. See Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning,WIPO Case No. D2012-0979.
Fifth, the fact that the Respondent’s website currently displays jewelry using an identical and confusing similar name to the Complainant name affirms the Respondents continuing bad faith use of that name. So long as the Respondent retains the disputed domain name, it can upload content to its website that further replicates the Complainant’s trademark and business. It can misdirect Internet users to that website. It can do so for commercial gain. It can do so at the expense of the Complainant’s marketing, sales, reputation and goodwill. See Ticketmaster Corporation v. Polanski,WIPO Case No. D2002-0166 and W. & G. Foyle Ltd. v. Robert G. Foyle,WIPO Case No. D2000-1543.
Sixth, the Respondent’s bad faith registration and use is affirmed by the fact that the disputed domain name directs Internet users to a variety of products such as “necklaces”, “bracelets”, “earrings” using an identical name to the Complainant’s trademark and either “Swarovski” products, or imitations of them. That continuing practice confirms not only the Respondent’s awareness that the advertised products were Swarovski products, but the Respondent’s actual and ongoing use of the Complainant’s name in bad faith.
Seven, the fact that the Respondent adopted the Complainant’s well-known mark to direct Internet users to the Respondent’s website in the past and present affirms that, if it retains the disputed domain name, it intends to continue to use it in bad faith and at the expense of the Complainant, if the Respondent is permitted to retain that domain name. See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007- 0645; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 and The Marigny Corporation v. Discount C, Inc.,WIPO Case No. D2001-0354.
The only logical conclusion that this Panel can draw is that the Respondent registered and has been using the disputed domain name for the purpose of attracting and misleading Internet users to its website for commercial gain and at the expense of the Complainant. See Swarovski Aktiengesellschaft v. Transure Enterprise Ltd,WIPO Case No. D2009-1638; Swarovski Aktiengesellschaft v. Putian Coco Kiss,WIPO Case No. DCC2012-0001; Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445.
The Panel concludes that the Respondent has registered and used the disputed domain name, in bad faith. 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.
Leon Trakman
Sole Panelist
Dated: December 11, 2012
Full & Egal Universal Law Academy