The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is of Vienna, Austria. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2013. On June 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2013.
The Center appointed Selma Ünlü as the sole panelist in this matter on July 12, 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 corporation organized under the laws of the Principality of Liechtenstein and it uses its SWAROVSKI trademarks (the “SWAROVSKI Marks”) in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.
The Complainant is producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries.
The Complainant has registered numerous SWAROVSKI Marks in many countries including Austria. The Complainant has its trademark in Austria since August 19, 1965.
The Complainant has websites under the domain names and which are registered since January 11, 1996 and April 16, 1998.
The Respondent registered the disputed domain name on March 22, 2013 and the website is in the English language. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. The disputed domain name was registered and is being used in bad faith. (i) Identity or Confusingly Similarity
The Complainant submits that the Respondent is using the disputed domain name to confuse consumers into believing that the Respondent’s website is an official Swarovski website and/or the Respondent is affiliated with or authorised to sell products by the Complainant. The Respondent does not identify itself as being independent from the Complainant.
The Complainant submits that the Respondent has used the SWAROVSKI Marks in the disputed domain name to cause confusion among Internet users between the disputed domain name and the Swarovski approved websites. Internet users who intend to purchase Swarovski products online may type “New Swarovski crystal shop” into the address bar on the search engine, as a reference to Swarovski jewellery the web site appears in the first 10 of the search results. The Complainant states that this type of initial interest confusion is illegal because it wrongfully capitalises on the Complainant’s goodwill in the SWAROVSKI Marks to divert Internet traffic to the disputed domain name. At this point the Complainant refers to the decision of Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166.
The Complainant also asserts that the use of “new” as a prefix and the “crystal” and “shop” phrases as suffixes do not decrease the level of similarity between the Complainant’s well-known SWAROVSKI trademarks. At this point the Complainant refers to Swarovski Aktiengesellschaft v. Wentian, tian wen,WIPO Case No. D2012-0159, where the panel stated that:
(i) the SWAROVSKI trademark is distinctive with its distinctiveness reinforced by many years of use and its extensive international reputation and goodwill; (ii) the “crystalsales” suffix is a descriptive phrase composed of two words; (iii) the suffix refers to the availability for sale of a product sold by the Complainant under the SWAROVSKI trademark (i.e., crystal); (iv) the suffix therefore relies on and emphasises the trademark element of the disputed domain name, and relates specifically to the business and products of the Complainant; and (v) Internet users will associate the disputed domain name with the Complainant’s trademark, and believe that the disputed domain name relates to the sale of the Complainant’s crystal products.”
The Complainant also stated that the use of a hyphen between the words do not constitute differences between the SWAROVSKI trademarks and the disputed domain name. Moreover the Complainant asserted a precedent UDRP case which also stated that the hyphen shall not be a part of the similarity examination.
Finally the Complainant submitted that previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. (ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no relationship with or authorization from the Complainant to use the SWAROVSKI Marks in any domain name; that the Respondent had no prior rights or legitimate interests in the disputed domain name; and that the Respondent has not been commonly known by the disputed domain name.
The Complainant also stated that the Respondent has used the Marks to create the impression that it is associated with SWAROVSKI.
Moreover, the Complainant alleges that, the Respondent seeks to gain trade from the Complainant’s goodwill and reputation by providing links to third party commercial websites. (iii) Registered and Used in Bad Faith
The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Marks. The Complainant stated that it was inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks as the Complainant’s trademarks are well known in Austria and worldwide.
The Complainant stated that the selection of the disputed domain name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term. The Complainant submitted that the registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.
The Respondent had offered to sell products identical to or similar to Swarovski products without valid consent. In addition to that the Complainant referred to Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170, where the panel found that
“the Respondent’s bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as “necklaces”, “bracelets” and “earrings” using an identical name to the Complainant’s trademark. That past practice confirms not only the Respondent’s awareness that the advertised products were “Swarovski” products, but also the Respondent’s actual use of the Complainant’s name in bad faith.”
Consequently, the Complainant asserted that the Respondent is using the disputed domain name to intentionally gain commercial benefit by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Substantive Elements of the Policy
According to paragraph 15(a) of the Rules, the Panel shall decide a 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 applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain name registered by the Respondent 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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled. 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 name is 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 Marks as evidenced by the trademark registrations submitted with the Complaint. Besides, previous UDRP decisions also held that SWAROVSKI is well known internationally. See e.g.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.
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has successfully proven its rights in the SWAROVSKI trademark. The Complainant has a trademark registration for the “Swarovski” term in Austria since 1965, well before the registration date of the disputed domain name.
The use of the generic terms “new” and “crystalshop” does not differentiate from the disputed domain name from the Complainant’s SWAROVSKI trademarks. Considering that the Complainant is conducting business on the crystal jewellery stones and crystalline semi-finished goods, and the website at the disputed domain name also relates to the sale of jewellery, the subject phrases add to the confusing similarity. See Swarovski Aktiengesellschaft v. Frank Jackie,WIPO Case No. D2013-0742.
Therefore, the Panel finds that due to the high distinctiveness of the SWAROVSKI trademark of the Complainant, the addition of the merely generic or descriptive “new” and “crystalshop” terms in the disputed domain name do not avoid a finding of confusing similarity in this case.
As that the Respondent registered the disputed domain name with a hypen between the “crystal” phrase and the “shop” phrase, the Panel is also on the same opinion with UDRP precedents which state that the use of a hypen is irrelevant for the purposes of differentiating the Complainant’s mark from the disputed domain name. At this point the Panel refers to a similar case Swarovski Aktiengesellschaft v. Frank Jackie,WIPO Case No. D2013-0742, where the Panel that case stated that
“...in comparing the mark SWAROVSKI to “Swarovski-onlineshop”, being the relevant portion of the disputed domain name for confusion analysis purposes, the Panel finds that the disputed domain name is confusingly similar to the SWAROVSKI mark as the latter is embodied in its entirety in the disputed domain name… It goes without saying that the hyphen found in the disputed domain name is irrelevant for the purpose of differentiating the Complainant’s mark from the disputed domain name.”
Also see Autogrill Retail UK Limited v. Hongjun Technology Ltd. / John Li,WIPO Case No. D2011-1204.
Hence, the Panel is of the opinion that the requirement of paragraph 4(a)(i) of the Policy is met by the Complainant. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] are making a legitimate non-commercial 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.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.
In the light of the evidence submitted, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier rights in the SWAROVSKI trademark. The Complainant has not granted the Respondent any right or license to use the SWAROVSKI trademark and the Respondent is not an authorized service provider for “Swarovski” products. Therefore, the Panel finds on the current record that the Complainant has proved its rights in the SWAROVSKI trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.
Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the SWAROVSKI mark in the disputed domain name.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name’s 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark SWAROVSKI, as well as its extensive and intensive usage, the Respondent, who appears to be located in Austria, must be aware of the Complainant and its SWAROVSKI trademark. See e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
Also, referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, the Panel believes that the Respondent’s awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.
As it is understood from the contents of the Respondent’s website, it is a website selling jewellery made of crystal under the “Swarovski” name and considering the evidence submitted, the Panel is of the opinion that the Respondent intentionally attempted to attract Internet users to its website for commercial gain by benefiting from the Complainant’s reputation.
Also, further to a visit to the website at the disputed domain name, the Panel noted that, it includes the swan logo of the Complainant and provides no disclaimer showing that the subject website is not related with the Complainant. Contrary, it gives an impression that, the Respondent is commercially related with the Complainant or it is approved by the Complainant in terms of the authenticity and quality of the products sold through the website.
Considering the content of the website at the disputed domain name, the Panel is of the opinion that the Respondent has intentionally attempted to attract, Internet users to its website 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 respondent’s website or location.
Furthermore, the Panel considers that:
(i) the Respondent did not offer any response and remained in default;
(ii) the Complainant’s trademark has a strong reputation and is well known all around the world, including in Austria;
(iii) the Respondent has not provided any evidence of good faith use.
Accordingly, the Panel finds that the disputed 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 disputed domain name be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: July 26, 2013
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