The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Derk Hond of Sunset, Ohio, United States of America. 2. The domain name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 3, 2013. On January 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2013, 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 for the disputed domain name.
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 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2013.
The Center appointed Dietrich Beier as the sole panelist in this matter on February 4, 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 than 120 countries. In 2011, Swarovski’s products were sold in 1,218 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, US trademark No. 934915 in classes 14, 21 dating back to 1972 and the word mark Swarovski, CTM trademark No. 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 September 11, 2012 and is operating an online shop with content in the English language. The website advertises for sale various purported Swarovski products e.g. “Beads”, “Charms”, “Bracelets”, “Pendants”, “Rings”.
In the “About Us” section of the website, the Respondent states that “At “www.Cheap- S” your satisfaction is our number one priority. That's why we offer an unconditional 100% Satisfaction Guarantee on our exceptional selection of jewelry, collectibles and finest accessories. It's the www.Cheap-S way: We are committed to providing an extraordinary shopping experience to find fabulous selections and bring you life's luxuries at great prices.” 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the SWAROVSKI trademarks. UDRP panels have recognised 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 “www.” into the address bar on their web browser, as a reference to the sale of cheap SWAROVSKI jewelry, and be directed to the Website of the disputed domain name..
Having arrived at the Website Internet users will most likely be confused into thinking that the Website is an official Website because of the use of the SWAROVSKI name.
This type of initial interest confusion is illegal because it wrongfully capitalises on the Complainant’s goodwill in the SWAROVSK Itrademarks to divert Internet traffic to the Website.
The addition of the term “cheap” as a prefix to the SWAROVSKI trademarks does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark.
The Respondent has no rights or legitimate interests 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 rights or legitimate interests in the SWAROVSKI trademarks or the name “Swarovski”.
The Respondent’s use of the SWAROVSKI trademarks is clearly for the purpose of misleading consumers into believing that the Respondent and the disputed website are associated with or approved by Swarovski. The Respondent is clearly seeking to trade on Swarovski’s goodwill and reputation. Accordingly the Respondent does not have no rights of legitimate interests in the SWAROVSKI trademarks.
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 United States if America 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 disputed website and offers products identical or 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 “cheap” being a non distinctive word cannot be considered as relevant to influence the overall impression of the domain name (see also Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080.
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 Panel finds 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 rights or legitimate interests 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 related goods or services.
The latter could be discussed since it is not completely clear (”purported Swarovski products“) from the complaint whether or not the offered products are originally derived from the Complainant. However, the majority opinion of UDRP panelists follows in cases where a legitimate interest of resellers of original goods to use a trademark in the domain name is in question, the test of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, after which such use might be legitimate if the use comprises the actual offering of goods, only the trademarked goods are sold on the site, and the site is accurately and prominently disclosing the registrant's relationship with the trademark holder.
Although this Panel follows even the argumentation that any reseller is not allowed to use the trademark, unless otherwise authorized, in a manner which goes beyond the scope of informing the customer about the core of its business activities (see also Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262; Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601; dissenting opinion in DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160) and unless it is not clear for the customer that the retailer is not an authorized partner of the trademark owner, the present case does not meet even the less strong criteria of the test after Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, since the website under the disputed domain name creates the impression of being authorized by the Complainant.
The Panel therefore finds that the Respondent does not have any 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 “cheap” 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 18, 2013
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