The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Michael Edwards of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2013. On May 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on June 5, 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.
The proceedings are conducted in English as this is the language of the disputed domain name’s registration agreement. 4. Factual Background
The Complainant is a worldwide leading producer of cut crystal, gemstones, and crystalline semi-finished goods for the fashion, jewelry, home decor, collectibles, and lighting industries.
The Complainant markets its high-end crystal products in more than 120 countries through its 1,218 boutiques, and more than 1,000 partner-operated retail stores located all over the world, including the United States of America where the Respondent is domiciled.
The Complainant holds trademark registrations for SWAROVSKI in the United States of America with the earliest trademark registration dating back to May 30, 1972. The Complainant also owns international trademark registrations for SWAROVSKI since November 3, 2004.
The Respondent registered the disputed domain name on February 19, 2013. The disputed domain name is currently inactive but once resolved to a website offering Hollister-branded clothing for sale.
The Complainant claims to have been concerned of the possibility of cyber-flight in this case. Accordingly, instead of serving a Cease and Desist Letter on the Respondent first, it brought this administrative proceeding as quickly as possible after finding out about the Respondent’s registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant’s factual and legal contentions can be summarized as follows:
i. Previous administrative panels have found that coupling a common word with the Complainant’s mark in a domain name, especially a well-known mark like SWAROVSKI, reinforces rather than negates a finding of confusing similarity;
ii. The addition of “z” and “crystals” as suffixes to the SWAROVSKI mark does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark;
iii. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI marks in a domain name or in any other manner;
iv. The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI mark or the name Swarovski;
v. Previous WIPO UDRP panels have ruled out the existence of a bona fide offering where a respondent chooses to incorporate a well-known trademark like SWAROVSKI, into a domain name, without the authorization of the trademark holder;
vi. The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s trademark rights, as it is inconceivable that the Respondent was unaware of the SWAROVSKI mark;
vii. It is well established that registration of a famous mark like SWAROVSKI, as a domain name, by an entity having no legitimate relationship with the mark is itself sufficient to demonstrate opportunistic bad faith use and registration as per the Policy;
viii. The registration and use of the disputed domain name creates initial interest confusion among Internet users as a result of the Respondent’s purported affiliation with the Complainant;
ix. By using the SWAROVSKI mark in the disputed domain name, the Respondent is creating the false impression that the Complainant is affiliated with the Hollister brand;
x. The use of the disputed domain name to display content unrelated to the Complainant demonstrates the Respondent’s intention to capitalize on the fame of the SWAROVSKI trademark and generate commercial revenue. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
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 in respect of the disputed domain name; and
iii. the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The gateway question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain name resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights since 1972 in the United States of America, among many other countries, as well as worldwide reputation in the mark SWAROVSKI. Having so established, the Complainant goes on to allege that the disputed domain name is confusingly similar to the SWAROVSKI mark because the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant also contends that the addition of the terms “z” and “crystals” to the disputed domain name does not lessen the confusing similarity between the latter and the SWAROVSKI mark.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In subscribing to the consensus view, the Panel finds that the term “Swarovski” is immediately recognizable as a trademark within the disputed domain name.
The inclusion of “z” and “crystals” in does not make the SWAROVSKI mark any less recognizable within the disputed domain name. To the contrary, the fact that the Complainant produces and markets crystal items, reinforces a finding of confusing similarity.
In sum, by looking at the overall impression of the disputed domain name, and taking into account the fame of the SWAROVSKI mark, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark notwithstanding the addition of inconsequential or generic terms like “z” and “crystals”, respectively.
The Complainant has thus cleared the first hurdle of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.)
The Complainant avers to have never licensed or authorized the Respondent to apply for any domain name incorporating its SWAROVSKI mark. Equally, the Complainant submits that the Respondent is not known by the disputed domain name. On these credible assertions and the evidence put forward regarding the use to which the disputed domain name was subjected prior to the Respondent’s website being discontinued, the Panel finds that the Complainant has established a prima facie case against the Respondent.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc.,Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Further, the printouts produced by the Complainant of the Respondent’s website show that on May 2, 2013, the website at the disputed domain name promoted the sale of Hollister branded clothing with worldwide-free shipping.
In the Panel’s view, the above use of the disputed domain name can hardly be characterized as bona fide within the meaning of paragraph 4(c)(i) of the Policy because the Hollister garments advertised in the subject website bear no relationship whatsoever with the “Swarovski” name.
Neither does it constitute a legitimate noncommercial or fair use within the purview of paragraph 4(c)(iii) of the Policy because the Internet users are lured to the Respondent’s website in the hope of finding a Complainant’s website, only to find out later that they were deceived.
As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have 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 that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
For the Complainant, it is inconceivable that the Respondent could have been unaware of the Complainant’s trademark rights in the term “Swarovski” at the time of registration of the disputed domain name.
In light of the global and longstanding use of the SWAROVSKI mark, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame of a well-known mark like SWAROVSKI. This circumstance alone is sufficient to prove bad faith registration of the disputed domain name. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well-known trademark, the very use by someone with no connection with the complainant suggests opportunistic bad faith.)
Furthermore, by diverting traffic away from the Complainant’s official websites, to promote the sale of goods unrelated to the SWAROVSKI mark, the Respondent can be said to be profiting from the confusion that the disputed domain name creates among Internet users seeking to enter a Complainant-approved portal. The Respondent’s such conduct squarely falls within the bad faith use scenario laid down by Policy paragraph 4(b)(iv) above.
Três Corações It is also the Panel’s opinion that the Respondent has been tarnishing the reputation of the Complainant’s well-known trademark by misleading Internet users into thinking that there might be an association or joint venture involving the SWAROVSKI and HOLLISTER marks.
In closing, the Panel finds that the Respondent’s prior use coupled with the current non-use of the disputed domain name constitutes bad faith use within the meaning of the Policy.
The Complainant has therefore discharged its burden in connection 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.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: June 19, 2013
Full & Egal Universal Law Academy