The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by Legal Base (Pvt) Limited, Sri Lanka.
The Respondent is Helen Clark of Hebei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 January 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2013.
The Center appointed Alexandre Nappey as the sole panelist in this matter on February 6, 2013. 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, Swarovski Aktiengesellschaft, is a company incorpated in Triesen, Liechtenstein. Swarovski is the world’s 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 has exclusive rights in several well-known registered SWAROVSKI trademarks (hereafter “SWAROVSKI Marks”), including China since 1987.
It also owns the domain names (since January 11, 1996) and (since April 16, 1998) (see Annexes I and J to the Complaint). The Swarovski Website enables Internet users to access information regarding Swarovski and its merchandise and to purchase genuine Swarovski products.
The Respondent is Helen Clark of Hebei, China. The disputed domain name was registered by Respondent on September 5, 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 claims that the disputed domain name is made up of the registered trademark SWAROVSKI to which the descriptive terms “outlet” and “online” have been added. They are therefore confusingly similar, by at the least creating initial interest confusion, to the Complainant’s registered trademarks SWAROVSKI.
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates.
In particular, the Complainant states that the website to which the disputed domain name resolves is used to sell products that purport to be SWAROVSKI products. The Complainant submits that purporting to sell SWAROVSKI products does not give the Respondent the right to register and use the trademark SWAROVSKI in the disputed domain name without the consent of the Complainant. The Complainant argues that the Respondent is not an authorised SWAROVSKI dealer and therefore does not have the right to use the trademark SWAROVSKI in the disputed domain name.
The Complainant asserts that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in SWAROVSKI and argues the unauthorized sale of products by the Respondent on the website that gives the impression of being a genuine website of the Complainant is clearly use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. 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 nearly identical to that of the Complainant) is 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.
Mere addition of the descriptive terms “outlet” and “online” as suffixes to the Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit are likely to be confused and may falsely believe that the website at the disputed domain name is operated by the Complainant for selling SWAROVSKI-branded products online. See Swarovski Aktiengesellschaft v. Xue Yan Yang,WIPO Case No. D2012-1041; Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139.
Thus, the Panel finds that the additional suffixes are not sufficient to negate the confusing similarity between the disputed domain name and the SWAROVSKI Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. 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. WhoisGuard, WhoisGuardProtected / Frank Amanda,WIPO Case No. D2012-2171; Drexel University v. David Brouda,WIPO Case No. D2001-0067.
In the light of the Complainant’s unrebutted prima facie case and the use of the nearly-identical website to that of the Complainant at the disputed domain name, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence provided and other relevant circumstances, that the Respondent has registered and is using the disputed domain name in bad faith.
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, and it is identified with jewelry.
Then, it is highly unlikely 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.
Furthermore, the Respondent’s registration of a domain name which included the name of a well-known 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.
At last, the Respondent’s bad faith use is confirmed by the fact that the disputed domain name directs Internet users to a variety of products such as “necklaces”, “bracelets” and “earrings” using an identical name to the Complainant’s trademark and either “Swarovski” products, or imitations of them.
The Panel therefore finds that the Respondent registered and has been using the disputed domain name only 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.
Alexandre Nappey
Sole Panelist
Date: February 20, 2013
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