The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Raymond Brady of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”). 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.
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 trademark rights in the word SWAROVSKI and the SWAROVSKI Swan Logo in numerous countries worldwide including, in the United Kingdom (e.g. Trademark No. 1344956, Trademark No. 1344958), in Australia (e.g. Trademark No. 224727, Trademark No. 478809, Trademark No. 517440), in Europe (e.g. CTM No. 007462922, CTM No. 006865794) and internationally via the international trademark system (e.g. 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 Raymond Brady, localized in London, United Kingdom.
The disputed domain names and currently resolve to websites (the “Infringing Websites”) containing the Complainant’s SWAROVSKI trademarks and the SWAROVSKI Swan Logo and proposing for sell various jewelries. The Infringing Websites are still active at the time the Panel renders this decision. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed 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 “aussies” and “uk” and the suffix “crystal” also create a likelihood of confusion.
Second, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names because it has never been known by the disputed domain 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 disputed domain names and that the incorporation of a well-known trademark in the disputed 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 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 names are 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 names; and (iii) that the disputed domain names have been registered and are 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) of the Policy 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 names. 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 or service mark in which it has rights.
The Panel considers that the Complainant has clearly established its rights in the SWAROVSKI trademarks as evidenced by the trademark registrations submitted with the Complaint. Besides, previous UDRP decisions also held that SWAROVSKI 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 disputed domain names and are not identical to the Complainant’s trademark SWAROVSKI, however there is no doubt that they are confusingly similar. 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 “crystal”.
Previous UDRP decisions have consistently held that a domain name is identical or confusingly similar to a trademark when it comprises a mark in its entirety and that the addition of generic terms such as “aussies”, “uk” and “crystal” is not sufficient to exclude similarity, especially with a world famous trademark such as SWAROVSKI (Pepsico Inc. v. Johan De Broyer,WIPO 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 term “crystal” increases the confusing similarity as it corresponds to the Complainant’s activities. The Panel finds that consumers who visit the disputed domain names are likely to be confused and may falsely believe that the Infringing Websites are operated by the Complainant for selling SWAROVSKI branded products online.
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 a domain name and the complainant’s trademark (F. Hoffmann-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, a respondent may demonstrate its rights and legitimate interests in a 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 a name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to it 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.
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 rights or legitimate interests in the disputed domain names (F. Hoffmann-La Roche AG v. Steven Pratt, supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., supra).
The Panel believes that the Complainant has right in the SWAROVSKI trademarks, including registration in the United Kingdom and Australia which long precedes the Respondent’s registration of the disputed domain names. It also appears that the Respondent has not been licensed or authorized by the Complainant to sell SWAROVSKI branded products, neither has it ever had a business relationship with the Complainant.
The Panel noticed that the disputed domain names direct to websites which reproduce the 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 Infringing Websites were run by the Complainant and/or that the Respondent is affiliated with or authorised to sell products by the Complainant. This is obviously not in favour of legitimate interest justifying the registration of the disputed domain names.
Taking all of these elements into consideration, the Respondent is deriving advantage from Internet users’ confusion. 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.
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 names. The Respondent did not explain its rights or legitimate interests behind the registration.
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 a 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 its 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 its website 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 its website or location or of a product or service on the website 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, it is not sufficient to prove that the disputed domain names are registered in bad faith, it is also necessary to prove that the disputed domain names are 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 SWAROVSKI trademark’s well-known character and its international establishment, including in the United Kingdom, where the Respondent is located according to the WhoIs information, the Panel believes that the Respondent must have known 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, such as SWAROVSKI, the Respondent’s bad faith could 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 Websites and reproduced the trademark SWAROVSKI as well as the SWAROVSKI Swan Logo if it was unaware of the Complainant’s reputation.
These findings lead the Panel to conclude that the disputed domain names have been registered in bad faith by the Respondent. b) Used in bad faith.
The disputed domain names direct toward websites which imitated the SWAROVSKI trademarks as well as the SWAROVSKI Swan Logo and referred to the Complainant’s activities. The Panel confirms that the Respondent uses, without valid consent, the SWAROVSKI marks and the Complainant’s official advertising materials throughout the Infringing Websites and offers products identical or similar to SWAROVSKI products for sale on the Infringing Websites.
It appears that the Respondent has done nothing to identify itself as being independent from the Complainant, but on the contrary, the Panel finds that the Respondent attempts to attract consumers for commercial gain to the Infringing Websites by misleading consumers into believing the sites were operated or authorised by the Complainant and purports to sell SWAROVSKI products. This type of behaviour is indicative of bad faith (PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Swarovski Aktiengesellschaft v. Chen Meifeng,WIPO Case No. D2011-0364). In addition, the mention of “OEM”, which stands for “Original Equipment Manufacturer”, on the Infringing Websites is usually used by counterfeiters to make consumers believe that the products offered for sale are authentic. This is proof of bad faith use.
Therefore, the Panel finds that the Respondent is using the disputed domain names to intentionally attempt to attract Internet users to the Infringing Websites by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, sponsorship, affiliation, or endorsement of its website for fraudulent gain and earning.
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 13, 2013
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