The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Timer Lsan of New York, United States of America. 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 January 23, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 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.
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 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2013.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 26, 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 the owner of trademarks SWAROVSKI or containing SWAROVSKI with the swan logo in numerous countries worldwide in particular in the United States (e.g. Trademark No. 1739479, Trademark No. 1785590, Trademark No. 2402230), in Europe (e.g. CTM No. 00012051, CTM No. 3895091, CTM No. 6865794) and via international trademarks (International Trademark No. 857107, International Trademark No. 303389A, International Trademark No. 528189).
The Complainant uses the SWAROVSKI mark in connection with crystal jewellery and crystalline semi-finished goods for the fashion, jewellery, home accessory, collectible, and lighting industries.
The Complainant is the world leading producer of cut crystal, guenine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2011, the Complainant’s products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
According to the WhoIs database, the disputed domain name was registered on September 12, 2012. The Respondent is known as Timer Lsan, localized in the city of New York, United States.
The disputed domain name currently resolves to a page requesting a username and password. The disputed domain name used to resolve to an active website. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is confusingly similar to its well known trademark SWAROVSKI which is reproduced in its entirety in the disputed domain name. The Complainant argues that the addition of the prefix “mini” and the suffix “crystals” which are common words creates a link with the Complainant’s activity.
Second, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because he has never been known by the name, trademark or trade name “Swarovski”. The Complainant further claims that no license or any authorization has been given to the Respondent to use the well known trademark SWAROVSKI in the domain name and that the incorporation of a well known trademark in the domain name is evidence that the Respondent has no rights or legitimate interests in .
Third, the Complainant contends that the disputed domain name was registered and is being used in bad faith due to the worldwide reputation of the trademark SWAROVSKI. The Complainant claims that the Respondent could not have ignored the trademark SWAROVSKI when registering . The Complainant also asserts that the Respondent used the disputed domain name in bad faith as it lures consumers about his identity by creating a likelihood of confusion with the Complainant’s trademark, in order to attract Internet users for commercial gains. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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 Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that Complainant has rights in the SWAROVSKI trademark as evidenced by the trademark registrations submitted with the Complaint.
The disputed domain name incorporates the mark SWAROVSKI in its entirety and only differs from the Complainant’s trademark by the addition of the terms “mini” and “crystals”. Previous UDRP decisions have consistently held that a domain name is identical or confusingly similar to a trademark when it comprises a well known mark in its entirety and that a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-descriptive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark SWAROVSKI as it fully integrates its highly distinctive element “Swarovski”.
When it comes to the adjunction of the gTLD “.com”, it is now well established that the generic top-level domain should not be taken into account when evaluating the identity or confusing similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the disputed domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
The overall burden of proof rests with the Complainant but it is well established by previous UDRP decisions that once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to prove its right or legitimate interest in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
The Panel believes that the Complainant has rights in the SWAROVSKI trademarks, including registration in the United States which long precedes the Respondent’s registration of the disputed domain name. It also appears that the Respondent has not been licensed or authorized by the Complainant to sell Swarovski products, nor has he never had a business relationship with the Complainant.
The Panel noticed that a login and password are now required to access the website. But the Complainant showed that the disputed domain name used to direct to a website which reproduced Complainant’s trademarks SWAROVSKI as well as the SWAROVSKI swan logo. It seems that the Respondent tried to lure Internet users and more particularly the Complainant’s customers into thinking that the website was run by the Complainant and/or that the Respondent was affiliated with or authorised to sell products by the Complainant. The Panel finds this is not in favour of legitimate interest justifying the registration of the domain name.
The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
The Respondent is identified as Timer Lsan, located in New York, United States. However, the word “Hanjiang” mentioned in the address refers to a region, place or a river in China. At this stage of the UDRP procedure, the contact details of the registrant are still uncertain. This is obviously not in favor of legitimate interest.
In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Respondent did not come forward with any right or legitimate interest in the disputed domain name. Had the Respondent a serious project linked to the disputed domain name, he most likely would have fought the Complaint by responding to it.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, a complainant needs to prove that the disputed domain name has been registered and is being used in bad faith.
a) Registered in bad faith.
As it has been held in previous UDRP decisions, the Panel confirms that SWAROVSKI is a well known trademark with an international reputation (Swarovski Aktiengesellschaft v. A.S.,WIPO Case No. D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No. D2012-2267; Swarovski Aktiengesellschaft v. Derk Hond, WIPO Case No. D2013-0005).
Considering the reputation of Complainant’s trademarks and products, the Panel finds that it is unlikely that the Respondent was unaware of the Complainant’s rights. Therefore, the Panel considers that the registration of a famous trademark such as SWAROVSKI as a domain name by an entity that has no legitimate relationship with the mark constitutes bad faith registration (Swarovski Aktiengesellschaft v. Liu Ji,WIPO Case No. D2011-0445).
The Panel considers that the Respondent would not have advertised products allegedly from Swarovski if he was unaware of Complainant’s reputation. In other words, it is not conceivable 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. The Panel therefore finds that the Swarovski products are not ones that traders could legitimately adopt other than for the purpose of creating an impression of association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Swarovski Aktiengesellschaft v. Zhang Ting,WIPO Case No. D2012-1791). Such a conduct is evidence of bad faith registration.
Moreover, previous UDRP panels have found that provision of inaccurate WhoIs information shows evidence of bad faith registration and use under paragraph 4(b) of the Policy on the part of the respondent (e.g., MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074.
b) Used in bad faith
When the Complaint was filed, the disputed domain name directed towards a website which imitated the Complainant’s trademarks as well as the SWAROVSKI swan logo and referred to the Complainant’s activities. The Panel confirms that Respondent uses, without valid consent, the SWAROVSKI mark and official Swarovski advertising material throughout the website at the disputed domain name and offers products identical or similar to Swarovski products for sale.
It appears that the Respondent has done nothing to identify himself as being independent from the Complainant. On the contrary, the Panel finds that the Respondent has tried to attract consumers for commercial gain by creating confusion by using the SWAROVSKI mark to mislead consumers into believing the site was operated or authorised by the Complainant. This type of behaviour is indicative of bad faith (PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700; Nikon Corp. v. Technilab, Inc.,WIPO Case No. D2000-1774; Swarovski Aktiengesellschaft v. Chen MeifengWIPO Case No. D2011-0364).
When this decision was drafted by the Panel, the disputed domain name directed towards a page requesting a user name and a password. It is very likely that the Respondent is behind this change and that it is only caused by the filing of the Complaint. The Panel does not believe that this change is sufficient to consider that the disputed domain name is not used in bad faith.
Therefore, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s renowned trademark as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.
Nathalie Dreyfus
Sole Panelist
Date: March 13, 2013
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