The Complainant is Swarovski Aktiengesellschaft, Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is N/A, delu xei, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 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 April 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2013.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 11, 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's company is a producer of cut crystal, genuine gemstones and created stones which are sold worldwide. The Complainant is the owner of a number of device and wordmarks which include or consist of the word "Swarovski" and which are registered throughout the world, including Brazil (the "Trademarks"). The oldest of the Brazilian trademarks (reg. no. 811740773) was registered on October 16, 1984.
The Respondent registered the domain name (the "Domain Name") on February 27, 2013. The Domain Name directs to a website which displays a blog relating to the brand Oakley and an "Oakley sunglasses sale". 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trademarks. It submits that the Trademarks have become famous and well known in Brazil, the domicile of the Respondent.
The Complainant also claims that the Respondent has no rights or legitimate interest in the Domain Name. According to the Complainant the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Trademarks in a Domain Name or in any other matter. Furthermore, the Complainant submits that the Respondent has never been known by the Domain Name and has no legitimate interest in the Trademarks or the name "Swarovski".
The Complainant asserts that the Respondent's use of the Trademarks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant, whereby the Respondent is seeking to trade on the Complainant's good will and reputation.
Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith, because it was registered with the knowledge of the Complainant's rights in the Trademarks. The Respondent's use of the Trademarks serves to lure consumers to its website and the use of the Domain Name creates initial interest confusion which attracts internet users to the website under the Domain Name because of its purported affiliation with the Complainant. Finally, according to the Complainant, it is difficult to conceive of use of the Domain Name that would not infringe the Trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trademarks. The element "Swarovski" which is identical to (the word element in) the Trademarks, is to be considered the dominant part of the Domain Name, while the word "crystalss" is a misspelling of the descriptive word crystals. In the Panel's view, the use of this descriptive word cannot prevent the Domain Name from creating a likelihood of confusion with the Trademarks (see eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, and BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson,WIPO Case No. D2008-1338, inter alia).
Therefore, the Panel concludes that the Domain Name is confusingly similar to the Trademarks. B. Rights or Legitimate Interests
Based on the evidence submitted, the Panel accepts that there is no connection or affiliation between the Respondent and the Complainant and the Respondent has not received any license or consent to use the Trademarks in the Domain Name.
The Domain Name resolves to a website containing information on Oakley sunglasses which are unrelated to the Trademarks or the Complainant's products. It is well established that pages with commercial information trading on the goodwill of a trademark do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial or fair use. These cases generally relate to commercial information (including links to websites) relating to goods of competitors of the Complainant. However, in the Panel's view the same is true for commercial information on goods of a third party (under a different brand), of which the first time owner apparently believes that persons attracted by the presence of the Trademarks in the Domain Name would be interested. Furthermore, it may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. The advertisements profit a third party, in particular the operator of an advertising revenue arrangement. Moreover, it is likely that the Respondent receives a share of the advertising revenue generated by the operator (see Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396, ).
Therefore, the circumstances of this case lead the Panel to conclude that the Domain Name is used to trade on the goodwill of the Trademarks and not in connection with a bona fide offering of goods or services.
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the documents provided by the Complainant, the Panel assumes that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trademarks and that the registration of the Domain Name was done in bad faith.
First, the registrations of the Trademarks on which the Complainant relies predate the Domain Name registration by many years. Secondly, some of the Trademarks have been registered in Brazil, the residency of the Respondent, for 20 to 30 years. Thirdly, on the basis of the evidence provided the Panel is satisfied that the Trademarks have are well known (also) in Brazil, so that it is very likely that the Respondent has seen or was aware of the Trademarks. Fourthly, the Trademarks contain the word "Swarovski" which is not a word that a person wishing to register a Domain Name would accidently think of.
Finally, if the Respondent had carried out a simple trademark register search it would know of the existence of the Trademarks. Therefore, even if the Respondent had not actually been aware of the Complainant's rights, a small effort on its part would have revealed those rights. If the Respondent has not made that effort, this comes for its account, since that would imply that the Respondent has been willfully blind to the Complainant's rights.
By using the Domain Name for a commercial website, it is likely that the Respondent is attempting to attract internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, affiliation or endorsement of Respondent's website. This constitutes bad faith use.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: June 25, 2013
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