The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard Protected / Kate Red of Los Angeles, California, United States of America (“United States”) and Datong, Shanxi, China, respectively. 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 December 18, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 21, 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 December 24, 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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Luca Barbero 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 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 trademark SWAROVSKI is used in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. In 2011, the Complainant’s SWAROVSKI products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
The Complainant is the owner of several trademark registrations for SWAROVSKI in many countries, including the United States trademark Nos. 0934915, registered on May 30, 1972, in classes 8, 14, 19 and 21; 3864495, registered on October 19, 2010, in class 16; 1785590, registered on August 3, 1993, in class 21; 2402230, registered on November 7, 2000, in class 14; the International trademark No. 857107, registered on November 3, 2004, in classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41.
The Complainant is also the owner of trademark registrations for , such as the United States trademark Nos. 3864494, registered on October 19, 2010, in class 3 and 16; and 3230029, registered on April 17, 2007, in classes 2, 6, 8, 9, 11, 18, 19, 20, 21, 24, 25, 28, 34, 35 and 41.
The Complainant registered the domain name on January 11, 1996, and on April 16, 1998. Both domain names are pointed to the Complainant’s official website, located at “www.”.
The Respondent registered the disputed domain name on July 10, 2012.
The disputed domain name is redirected to a Web site in English language displaying the Swarovski swan logo on the top left corner of each Web page and an image apparently taken from one of the Complainant’s advertising campaigns. Various purported SWAROVSKI products are advertised for sale, including “Swarovski Necklaces”, “Swarovski Pendants”, “Swarovski Earrings” and “Swarovski Bracelets & Bangles”. In the “About us” section of the Web site, it is stated: “We're professional Swarovski jewelry online retailer. We know how much trust you're placing in us when you order Jewelry online. We believe your online shopping experience should be convenient and safe. Our goal is to ensure that you are completely satisfied with your purchase. All of our Swarovski items are made of real Swarovski elements, with first-quality, and, best of all, it's at 10% to 75%off retail prices. Your order will with original Swarovski blue package boxes, certificates”. No further information on the person or entity that operates the Web site is prima facie available. 5. Parties’ Contentions A. Complainant
The Complainant states that it spends substantial time, effort and money advertising and promoting the trademark SWAROVSKI throughout the United States and worldwide and highlights that, as a result, it has developed an enormous amount of goodwill in the trademark SWAROVSKI internationally and the public has come to associate the trademark SWAROVSKI exclusively with high quality items marketed by the Complainant.
The Complainant contends that the disputed domain name is confusingly similar with the trademark SWAROVSKI as the addition of the terms “jewelry” and “onsale” as suffixes to the trademark SWAROVSKI does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant points out that Internet users who intend to purchase SWAROVSKI products online may type into the address bar on their Web browser and be directed to the Respondent’s website. The Complainant underlines that this type of initial interest confusion is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the trademark SWAROVSKI to divert Internet traffic to the Web site published at the disputed domain name.
The Complainant states that the Respondent has no rights or legitimate interest in the disputed domain name as it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the trademark SWAROVSKI in a domain name or in any other manner.
The Complainant also asserts that the Respondent has never been known by the disputed domain name and has no legitimate interest in the trademark SWAROVSKI or in the name “Swarovski”.
The Complainant points out that the use of the disputed domain name to misdirect Internet traffic to the Respondent’s Web site and to advertise purported SWAROVSKI products is contrary to a bona fide offering of goods or services or to a legitimate interest. The Complainant contends that the Respondent has used the trademark SWAROVSKI in the disputed domain name to create the impression that it is associated with the Complainant, thus seeking to trade on the Complainant’s goodwill and reputation.
The Complainant further highlights that, as held by previous UDRP panels, when a respondent chooses to incorporate a well known trademark like SWAROVSKI into a domain name without the authorization of the trademark holder, this cannot be considered a bona fide offering.
With reference to the circumstances evidencing the Respondent’s bad faith registration, the Complainant states that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the trademark SWAROVSKI since it is inconceivable that the Respondent was unaware of the Complainant’s well-known trademark and the incorporation of SWAROVSKI in the disputed domain name cannot be a coincidence. The Complainant also highlights that the Respondent’s inclusion of the trademark SWAROVSKI in the disputed domain name and the use of it to sell SWAROVSKI products demonstrates the Respondent’s awareness of the Complainant’s trademark and its intention to capitalize on the Complainant’s fame.
As to the use of the disputed domain name, the Complainant indicates that the Respondent has created “initial interest confusion”, attracting Internet users to its website because of its purported affiliation with the Complainant. The Complainant also states that it is unlikely that the Respondent can prove good faith use of the disputed domain name because it is difficult to conceive of a use that would not infringe the trademark SWAROVSKI. The Complainant underlines that the disputed domain name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of it would “inevitably lead to confusion of some sort” and cause disruption to Swarovski’s business in contravention of paragraph 4(b)(iii) of the Policy.
The Complainant states that the purpose of the Respondent’s use of the trademark SWAROVSKI in the disputed domain name is to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy. In particular, the Complainant indicates that the Respondent’s attempt to attract consumers for commercial gain to its Web site is compounded by efforts to mislead consumers into believing that the Web site is operated or authorized by the Complainant, in particular, through the publication of the trademark SWAROVSKI and of the Complainant’s advertising material throughout the Web site and the offer for sale of goods identical or similar to the Complainant’s products.
The Complainant also informs the Panel that a cease and desist letter was not addressed to the Respondent prior to the filing of the Complaint since the Complainant was particularly concerned about the possibility of cyber-flight and about the detrimental effects of the Respondent’s exploitation of its trademark and thus opted for directly commence the present UDRP administrative proceeding. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations for SWAROVSKI in many countries, including the United States trademark Nos. 0934915, registered on May 30, 1972, in classes 8, 14, 19 and 21; 3864495, registered on October 19, 2010, in class 16; 1785590, registered on August 3, 1993, in class 21; 2402230, registered on November 7, 2000, in class 14; the International trademark No. 857107, registered on November 3, 2004, in classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. See paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (”WIPO Overview 2.0”).
In the case at hand, the Panel finds that the addition of the generic terms “jewelry”, “sale” and of the preposition “on” to “Swarovski” is not sufficient to prevent the finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
See also, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Indeed, the Panel finds that the inclusion of the term “jewelry” and “sale” is particularly apt to mislead Internet users into believing that the Web site published at the disputed domain name is an online shop operated by the Complainant for selling SWAROVSKI-branded product. See, amongst others, Swarovski Aktiengesellschaft v. Yuenan,WIPO Case No. D2012-1477.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the domain name (See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
There is also no indication before the Panel that the Respondent is commonly known by the disputed domain name, has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent cannot establish rights to, or legitimate interests in the disputed domain name since, in light of the contents published on the correspondent Web site, users might be mislead into believing that the Web site is associated with or approved by the Complainant.
Furthermore, the Panel notes that the Complainant and its trademark SWAROVSKI enjoy a worldwide reputation. Consequently, in the absence of evidence to the contrary and convincing explanations of the Respondent, the Panel also finds that the trademark SWAROVSKI is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. See, along these lines, Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Guccio Gucci S.p.A. v. Liuqing Wu, Feiji Lu,WIPO Case No. D2011-1506. See also Hertz System, Inc. v. D/Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615, in which the panel stated: “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel finds that, in light of the worldwide reputation of the Complainant and of the well-known character of the trademark SWAROVSKI, also in China, where the Respondent is prima facie based according to the registrar-disclosed WhoIs information, it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Moreover, the Respondent’s redirection of the disputed domain name to a web site featuring the Complainant’s trademarks and offering for sale SWAROWSKI products shows that the Respondent was actually aware of the Complainant’s trademark rights. See, along these lines, Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445, where it was stated that a similar conduct demonstrated the Respondent’s “awareness of the Complainant’s mark and an intention to capitalize on its fame”.
The Panel shares the view of a number of UDRP panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
As mentioned in the paragraphs above, the disputed domain name resolves to a web site where the trademark SWAROVSKI, the Complainant’s swan logo and an image taken from one of the Complainant’s advertising campaigns are published and purported SWAROVSKI products are offered for sale. The Panel finds that the Respondent’s use of the disputed domain name to divert users to a web site featuring the Complainant’s trademarks in order to sell identical or similar products to those of the Complainant constitutes bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel also finds that, as stated in Swarovski Aktiengesellschaft v. Whois Privacy Protection Service / Sprout Ltd., mamoru shiga,WIPO Case No. D2012-1496, even if the SWAROVSKI products offered for sale on the Respondent’s Web site were genuine goods deriving from the Complainant, Internet users could believe that the Web site published at the disputed domain name is operated by the Complainant or its authorized agents.
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its Web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its Web site and of the products promoted therein.
Moreover, in the present case, the Respondent has chosen not to respond to the Complainant’s allegations. According to the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See, along these lines, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 and Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646.
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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.
Luca Barbero
Sole Panelist
Date: February 20, 2013
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