The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Catherine Loke of Adelaide, South Australia, Australia, represented by Derrick Ting. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 24, 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.
On February 22, 2013, the Center received an email communication from Mr. Derrick Ting claiming being the Respondent’s Representative. In the same email, Mr. Ting asserted Catherine Loke is not the registrant for disputed domain names rather a victim of identity theft. The Center acknowledged receipt of the email on the same day stating it would be in the sole discretion of the Panel upon appointment to decide the proper Respondent in this case.
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 the trademark SWAROVSKI and the SWAROVSKI Swan Logo in numerous countries and regions worldwide including, in the United Kingdom of Great Britain and Northern Ireland (e.g. Trademark No. 1344956, Trademark No. 1344958), Australia (e.g. Trademark No. 224727, Trademark No. 478809, Trademark No. 517440), European Union (e.g. CTM No. 007462922, CTM No. 006865794) and internationally via the international trademark system (International Trademark No. 857107, International Trademark No. 303389A, International Trademark no. 528189).
The Complainant is a world 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, 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 names were both registered on May 11, 2012. The Respondent is known as Catherine Loke, located in Adelaide, Australia. The Respondent denied that she had anything to do with the registration of the disputed domain names, arguing that she is the victim of identity theft.
The disputed domain names and currently resolve to websites containing the trademark SWAROVSKI and the Swarovski Swan Logo and proposing for sell various jewelries. The websites were still active at the time the Panel rendered its decision. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed domain names and are confusingly similar to its world well known trademark SWAROVSKI which is reproduced in its entirety. The Complainant argues that the addition of the prefixes, respectively: “aussies” and “uk” and the suffix “store” which are common words, does not negate a finding of confusing similarity.
Second, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names because she has never been known by that names, trademarks or trade names. 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 names and that the incorporation of a well known trademark in the domain names is evidence that the Respondent has no rights or legitimate interests in and .
Third, the Complainant contends that the disputed domain names were registered and are 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 and . The Complainant also asserts that the Respondent used the disputed domain names in bad faith as they lure consumers about her identity by creating a likelihood of confusion with the Complainant’s trademark, in order to attract Internet users for commercial gains. B. Respondent
In an email sent to the Center after the Response due date of February 18, 2013, a lawyer representing Catherine Loke of Dulwich in the State of South Australia, Australia claimed that she never registered the disputed domain names, that she has never used or owned the telephone and fax number mentioned on the WhoIs record, nor that she is the holder of the email address confirmed by the concerned registrar GoD, Inc. and that she has been the victim of an identity theft. 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 and legitimate interests in the disputed domain name.
The Panel is aware that Catherine Loke has indicated that she has nothing to do with the disputed domain names and that she had been victim of identity theft. The Panel does not question Ms. Loke’s assertions in this regard but notes that the Registrar in this case has confirmed that Catherine Loke is the registrant of record of the disputed domain names. Therefore, in accordance with the Policy and the Rules, the Panel has to issue its decision against the registrant of the disputed domain names, that is Catherine Loke. A. Identical or Confusingly Similar
The first element under the paragraph 4(a) (i) of the Policy requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark in which it has rights.
The Panel finds that the Complainant has rights in the SWAROVSKI trademarks as evidenced by the trademark registrations submitted with the Complaint. Previous UDRP decisions also held that the SWAROVSKI mark is well known internationally (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).
The Panel finds that the domain names and are not identical to the Complainant’s trademark SWAROVSKI, however there is no doubt that they are confusingly similar with this mark. The disputed domain names incorporate the mark SWAROVSKI in its entirety and only differ from the Complainant’s trademark by the addition of the terms “aussies”, “uk” and “store”.
The Panel finds that those terms are common words which are not sufficient to exclude similarity, especially with a world famous trademark such as SWAROVSKI (Pepsico Inc., of Purchase v. Johan De BroyerWIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng,WIPO Case No. D2008-0437; L’OREAL v. Domain Park Limited,WIPO Case No. D2008-0072). On the contrary, the terms “store”, increase the impression of confusion as they refer to the Complainant activities.
The Panel finds that consumers who visit the websites at the disputed domain names are likely to be confused and may falsely believe that the websites corresponding to and are operated by the Complainant for selling SWAROVSKI-branded products online.
Finally, when it comes to the adjunction of gTLD “.com”, it is now well established that the generic top-level domain should not be taken into account when evaluating the identity or similarity between the disputed domain names 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 names by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the contested domain name or name corresponding to contested 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 contested 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 contested domain name, without intent for commercial gain to misleadingly divert internet users or to tarnish the trademark or service mark at issue.
Once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to demonstrate its rights or legitimate interests in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
In an email sent to the Center after the Response due date of February 18, 2013, a lawyer representing Catherine Loke of Dulwich in the State of South Australia, Australia claimed that she never registered the disputed domain names and that she has been the victim of an identity theft.
The Complainant claims that the Respondent has not been authorized or licensed to use the Complainant’s trademark SWAROVSKI or to register the disputed domain names and that none of the circumstances listed in paragraph 4(c) of the Policy are present in this case. The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. In fact, it appears that the registrant’s email addresses confirmed by the Registrar do not belong to Ms. Loke, that the owner of these email addresses is probably the real registrant of record in this case and that by not submitting a Response, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case in this regard.
In addition, the websites towards which the disputed domain names direct offer what appears to be counterfeiting products, which is highly confusing to the Internet users. This is not proof of legitimate interests.
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.
Considering the well-known character of the trademark SWAROVSKI, its presence in more than 120 countries, the Panel believes that the Respondent must have known of the existence of the Complainant at the time of the registration of the disputed domain names. (See Credit Industriel et Commercial S.A v. Maison Tropicale SA WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
In previous UDRP decisions, panels have considered that in certain circumstances when the Complainant’s trademark is well-known and the Respondent is deemed not to have rights or legitimate interests, such as SWAROVSKI, the Respondent’s bad faith can be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of The Complainant’s marks, such that The Respondent was aware or should have been aware of The Complainant’s well-known marks and claims of rights thereto”).
Furthermore, the Panel considers that it is not conceivable that the Respondent had advertised products purporting to be Swarovski products on the Infringing Website and reproduced the trademark SWAROVSKI as well as the SWAROVSKI swan logo if it was unaware of Complainant’s reputation.
In the Panel’s view, the fact that the an individual named Catherine Loke has claimed that the disputed domain names have been registered through “identity theft”, and that she has never registered these domain names is a strong indication that the disputed domain names have been registered in bad faith by somebody whose identity is still unknown at this stage of the procedure.
When it comes to the active website offering alleged Swarovski goods, the Panel deems that the obvious goal is to attract consumers by creating a likelihood of confusion with the Complainant for commercial gains. The mention “OEM”, which stands for “Original Equipment Manufacturer”, on the disputed website is usually used by counterfeiters to make consumers believe that the products offered for sale are authentic. This is proof of bad faith use.
For all of these reasons, the Panel finds that the disputed domain names have been registered and are being 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 names and be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: March 12, 2013
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