The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is 雷武恩 of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 July 16, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 17, 2013, the Complainant confirmed its request that English be the language of the proceeding. On July 18, 2013, the Respondent requested in Chinese that Chinese be the language of the proceeding. On July 20, 2013, the Respondent sent two emails in English, apparently agreeing to transfer the disputed domain name to the Complainant. Upon the Complainant’s request, the proceeding was suspended from July 22, 2013 to August 21, 2013, and was reinstituted on August 21, 2013.
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 August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Respondent did not submit any formal response.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on September 20, 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 is producer of cut crystal, genuine gemstones and created stones with a presence in more than 120 countries and owns trademark registrations for SWARO and SWAROVSKI in association with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.
The Respondent registered the disputed domain name on March 2, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark SWARO, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name , as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English while the Respondent requested for Chinese. Both Parties have presented the reasons to support their pertinent requests.
According to paragraph 11(a) of the Rules, 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.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate the complaint, may both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Therefore a panel may objectively assess the parties’ language ability in the proceeding. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel’s conclusion is based primarily on the fact that the Respondent has communicated in English fluently with both the Center and the Complainant in the proceeding. In addition, the Panel notes that the Respondent did not object to the Complainant’s request that the language of the proceeding be English since the administrative proceeding was reinstituted on August 21, 2013. The Panel also notes that it may be genuinely difficult for the Complainant to translate all the submissions into and take part in the proceeding in the language of the registration agreement.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark right and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain name the trademark SWARO had been registered and used on the Complainant’s crystal products in China and many other countries.
The disputed domain name is . Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “swarocrystal”, which can easily be read as “swaro” and “crystal”. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is likely to lead the panel to find confusing similarity between the disputed domain name and the complainant’s trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. 93670). Given that the disputed domain name contains the Complainant’s trademark SWARO in its entirety, adding the generic term “crystal” on which the Complainant’s mark SWARO is primarily used makes the disputed domain name, as a whole, more confusingly similar to than distinctive from the Complainant’s trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark SWARO. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserts, and provides evidence to demonstrate, that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy applies here. To the contrary, the lack of a formal Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond to these contentions.
According to the statement and evidence provided by the Complainant, the disputed domain name initially displayed an online shop offering for sale various apparently unauthorized “Swarovski” crystal products. Despite the Complainant’s requests of removal of all Swarovski related content and references from the website, the disputed domain name kept displaying the content that infringed the Complainant’s mark at the website until the Complaint was filed to the Center.
The Panel notes that the disputed domain name was registered and would appear to be fully controlled by the Respondent. Since the Respondent had used the disputed domain name that is confusingly similar to the Complainant’s mark to attract consumers to a website selling apparently counterfeit Swaro crystal products, the Panel finds that the Respondent had the bad faith in causing the confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products offered on the Respondent’s website.
Although at the time the Panel viewed the disputed domain name , in the proceeding, it resolved only to an error page, the Respondent, as the registrant, is capable of restoring any content displayed through the disputed domain name. Considering the Respondent’s prior use of the disputed domain name in bad faith, the Panel finds that the Respondent’s current holding of the disputed domain name poses a substantive threat to the legitimate interest of the Complainant’s trademark right.
The Panel therefore finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy. 7. Decision
For all 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.
Dr. Hong Xue
Sole Panelist
Date: October 4, 2013
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