The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Yang Liu of Zigong, Sichuan Province, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 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. On May 14, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 17, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of numerous trademark registrations, which consist of the mark SWAROVSKI, inter alia, International Trademark Registration No. 857107, registered on November 3, 2004, designating China among other jurisdictions.
(ii) The Complainant has used the trademark SWAROVSKI on which the Complaint is based, in connection with crystal jewelry stones and crystalline semi-finished goods in a variety of industries.
(iii) The Disputed Domain Name was registered on November 30, 2012.
(iv) The Disputed Domain Name resolves to a website that offers for sale of crystal products that include reference to the Complainant’s trademark SWAROVSKI. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “swarovski” element in its entirety, which is identical to the Complainant’s SWAROVSKI trademark. The incorporation of the suffix “us” is non-distinctive and does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never licensed nor otherwise given consent to the Respondent to use the Complainant’s trademark SWAROVSKI, and yet the Respondent has been offering crystal products by reference to the SWAROVSKI mark for sale via the website to which the Disputed Domain Name resolves. The Complaint states that the Respondent has never been known by the Disputed Domain Name and the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods and services.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used in bad faith for the purpose of attracting Internet users for commercial gain by offering crystal products purporting to be Swarovski branded goods for sale. The Respondent has incorporated the SWAROVSKI trademarks in the Disputed Domain Name as well as throughout the website, and is attempting to attract Internet users for commercial gain by purporting to sell the Complainant’s products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement of the Disputed Domain Name is Chinese. The Complainant confirmed its request, in its email dated May 14, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, Swarovski is an international brand with registered trademarks in multiple jurisdictions. Second, the Respondent is capable of communicating in English, which the Complainant claims to be established with the fact that the Disputed Domain Name resolves to a website in English and there is no version of the website with Chinese content.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The website to which the Disputed Domain Name resolves appears to contain text only in the English language, and appears to have been directed to Internet users worldwide rather than exclusively to Chinese speakers (as evidenced by the screen shots provided by the Complainant in Annex L to the Complaint). The Panel is satisfied that the Respondent is familiar with the Complainant’s requested language.
(ii) The Panel notes that all Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant's request that English be the language of the proceeding. The Panel finds that the Respondent has been given a fair chance to object, and has failed to do so.
(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of Liechtenstein, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondent has shown no interest in responding and requiring the Complainant to translate the Complaint into Chinese which will cause unnecessary delay to the proceeding.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a number of SWAROVSKI trademarks in China and internationally. Further, the filed evidence establishes that the Complainant’s products have been sold on a substantial and worldwide basis under this trademark.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; Time Warner Entertainment Company, L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the top-level domain (for example, “.com” and “.net”) may be disregarded. (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS)WIPO Case No. D2009-1194).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive SWAROVSKI trademark in its entirety, while adding only a non-distinctive descriptive element of “us” as a suffix to the Disputed Domain Name. The addition of these non-distinctive and descriptive elements is insufficient to effectively differentiate the Disputed Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Complainant has established that it is the owner of the SWAROVSKI trademark. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name.
The Panel notes that the registrant of the Disputed Domain Name is “Yang Liu”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
Furthermore, the evidence of the content available on the website to which the Disputed Domain Name resolves (as shown on the screen shot provided by the Complainant in Annex L to the Complaint), clearly shows that the website tries to create the impression that it is the Complainant’s official website with use of the Complainant’s SWAROVSKI word mark and Swarovski swan logo throughout the website without accurate disclosure of the relationship between the Respondent and the owners of the said trademarks. Such conduct is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to provide allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.
Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s SWAROVSKI trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the website at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its SWAROVSKI trademark has been registered internationally, widely used, and had acquired an international reputation prior to the date the Disputed Domain Name was registered. The Respondent’s choice to incorporate the identical “swarovski” element as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith. In addition, the fact that the Respondent tries to give the impression that the website to which the Disputed Domain Name resolves is the Complainant’s official website by the use of the Complainant’s SWAROVSKI word mark and swan logo throughout the website and offers sales of purported Swaroviski crystal products with discounts strongly suggests that the Respondent registered the Disputed Domain Name not only with the knowledge of existence and reputation of the Complainant’s trademark but also with the intention of misappropriation of the Complainant’s well-known trademark to gain commercial advantage. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the evidence of the content available on the website to which the Disputed Domain Name resolves clearly shows that the website offers for sale of various purported SWAROVSKI crystal products. The Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. Thus, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: June 25, 2013
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