The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard of Los Angeles, California, United States of America / Linda Blue of San Jose, California, United States of America. 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 January 3, 2013. On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2013, 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 January 9, 2013 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 January 9, 2013.
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 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 Dietrich Beier 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
Swarovski uses the SWAROVSKI trademarks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles, and lighting industries. Swarovski is a known and 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 than120 countries. In 2011, Swarovski’s products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. Swarovski’s approximate worldwide revenue in 2011 was Euro 2.87 billion. Swarovski has registered the SWAROVSKI trademarks globally, inter alia the word mark SWAROVSKI, United States of America 934915 in classes 14, 21 dating back to 1972 and the word mark Swarovski, CTM 007462922 in classes 01, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44, 45 registered on July 21, 2009.
The Respondent has registered the disputed domain name on June 14, 2012 and the disputed domain name redirects to a website under the domain name being registered by an individual in China. The website advertises for sale various purported Swarovski products such as inter alia “Swarovski Necklaces”, “Swarovski Earrings”.
In the “About Us” section of the website, the Respondent states that
“…”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”. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the SWAROVSKI trademarks. WIPO panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.
The Respondent has used the SWAROVSKI trademarks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Swarovski approved websites. Internet users who intend to purchase Swarovski products online, may type into the address bar on their web browser, as a reference to the sale of Swarovski jewelry, and be directed to the disputed website.
This type of initial interest confusion is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI trademarks to divert Internet traffic to the disputed website.
The addition of the terms “sales” and “usa” as suffixes to the SWAROVSKI trademarks do not lessen the confusing similarity between the disputed domain name and the Complainant’s mark.
The Respondent has no rights or legitimate interest in 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 SWAROVSKI trademarks in a domain name or in any other manner.
The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”.
The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI trademarks, as it is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI trademarks.
Registration of a famous mark, like the SWAROVSKI trademarks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.
The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well known in the USA and worldwide.
Furthermore, 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 SWAROVSKI trademarks.
The Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVSKI trademarks is compounded by the efforts to mislead consumers into believing the site was operated or authorised by the Complainant. The Respondent, without valid consent, utilises the SWAROVSKI trademarks and official Swarovski advertising material throughout the website of the disputed domain name and offers products similar to Swarovski products for sale on the disputed website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The disputed 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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for SWAROVSKI in several classes.
The disputed domain name is confusingly similar to the SWAROVSKI mark of the Complainant since the element “sales” being a non distinctive word and the suffix “usa” being a geographical identifier are considered not being relevant to influence the overall impression of the designation in the disputed domain name (see The Nasdaq Stock Market, Inc. v. Vidudala Prasad,WIPO Case No. D2001-1493, with further references).
The Panel therefore considers the disputed domain name to be confusingly similar to the trademarks SWAROVSKI in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “Swarovski” nor that the Respondent is using the disputed domain name in connection with a bona fide offering of original goods or services.
The Panel therefore finds, also in light of the Panel’s findings below, that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the nature of the SWAROVSKI mark as well-known, if not famous, the Respondent must have been well aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant had not authorized the Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular domain name without the Complainant’s authorization.
Furthermore, by combining the suffix “sales” and the geographical identifier “usa” and a well-known trademark, it is evident to the Panel, that the Respondent has registered the disputed domain name in bad faith.
The circumstances of this case furthermore indicate that the Respondent registered and uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location (See also Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445; Swarovski Aktiengesellschaft v. putian coco kiss,WIPO Case No. DCC2012-0001). The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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.
Dietrich Beier
Sole Panelist
Date: February 19, 2013
Full & Egal Universal Law Academy