The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Johnny Person D of Nanjing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 2013, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint that same day.
The Center verified that the Complaint, together with the amendment to 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 September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on November 14, 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 relevant to the findings and decision in this case are that:
1. the Complainant sells jewellery stones by reference to the registered trade mark, SWAROVSKI;
2. the trade mark is, inter alia, the subject of Panamanian Trade Mark Registration No. 16082601 dated April 20, 2007, for the word mark SWAROVSKI;
3. the disputed domain name was registered on June 14, 2013;
4. at the time the Complaint was filed, the disputed domain name resolved to a website showing goods of the same kind as those sold by the Complainant, offered for sale by reference to the trade mark; and
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in SWAROVSKI and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides a copy of its Panamanian certificate of registration of the trade mark SWAROVSKI. The certificate is not in English and no English language translation is provided. Nevertheless, the Panel can on this occasion make enough sense of the document to see that a word version of the trade mark was registered in 2007 and that the registration appears to remain in force. The Panel accepts that the Complainant has trade mark rights.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the trade mark with other integers of no distinctive value. For the purposes of testing confusing similarity, the generic top-level domain “.net” can be ignored2 as can the hyphenation. Likewise, the words “online” and “mall” are purely descriptive and have no significant effect on the overall impression of the disputed domain name which might avoid confusion with the trade mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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.”
The publicly available WhoIs database identifies the registrant as Johnny Person D which does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. The disputed domain name resolves to a website where fashion jewellery offered for sale by reference to the trade mark is shown.
The Complainant avoids any direct allegation that the goods shown at the resolving website are counterfeit copies of its goods. Instead, throughout the Complaint it uses loaded definitions such as the “the infringing domain name” and makes bald statements of use constituting trade mark infringement.
Whether or not the use of the trade mark is an infringement of the Complainant’s legal rights would hinge on whether or not the goods were genuine and on the jurisprudential model of trade mark law adopted but exploration of these questions is unnecessary since, for the purposes of paragraph 4(c) of the Policy, it is enough for the Panel to adopt the reasoning in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and observe that the conditions of use sufficient to establish rights or legitimate interests laid out in that case have not been met here.
There is no indication of the use of the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have 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 documented out-of-pocket costs directly related to the domain name; or
ii. you 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 have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is plain to the Panel that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to the source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. The resolving website exits for the purpose of commercial gain.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb 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.
Debrett G. Lyons
Sole Panelist
Date: November 28, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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