The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is jiogabnkya jvnhyjnxb of New York, New York, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2013. On October 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 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 October 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2013.
The Center appointed Haig Oghigian 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.
The language of the registration agreement is English. Therefore English is the language of these administrative proceedings in accordance with paragraph 11 of the Rules. 4. Factual Background
The Complainant uses its SWAROVSKI marks (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 has registered the SWAROVSKI Marks internationally. The Complainant has also obtained the selected trademark registrations for the SWAROVSKI Marks in the USA and Japan and international trademark registrations applicable in the USA and Japan. The SWAROVSKI Marks have become famous and well known in the USA and Japan.
The Domain Name was registered by the Respondent on April 16, 2013. 5. Parties’ Contentions A. Complainant
The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Name is confusingly similar to the SWAROVSKI Marks. (paragraph 4(a)(i) of the Policy). The addition of the term “Japan” as a suffix to the SWAROVSKI Marks does not lessen the confusing similarity between the Domain Name and the Complainant’s mark. Furthermore, the addition of the term “Japan” to the Domain Name could lead consumers located in Japan into thinking that the Domain Name provides information about the sale of Swarovski products in Japan.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name (paragraph 4(a)(ii) of the Policy). The Respondent has never been known by the Domain Name and has no legitimate interest in the SWAROVSKI Marks or the name “Swarovski”.
The Complainant insists that the Respondent has registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Marks, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks (paragraph 4(a)(iii) of the Policy). The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the Domain Name. The Complainant’s trademarks are well known in the USA, Japan and worldwide; and as already discussed, the Domain Name is confusingly similar to the registered trademarks of the Complainant. The selection of the Domain Name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence. “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark. Furthermore, the infringing website offers for sale a variety of Swarovski products such as “Swarovski ネックレス” (meaning “Swarovski necklace”), “Swarovskiピアス” (meaning “Swarovski earrings”), “Swarovski 指輪” (meaning “Swarovski ring”) and more. 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.
Furthermore, with respect to paragraph 4(a)(iii) of the Policy, the Complainant states that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent had incorporated SWAROVSKI Marks in the Domain Name, throughout the Respondent’s website and attempts to attract consumers for commercial gain by purporting to sell Swarovski products.
In addition, the Respondent’s registration and use of the Domain Name creates “initial interest confusion”, which attracts Internet users to the Respondent’s website because of its purported affiliation with the Complainant. This is further evidence of the Respondent’s bad faith registration and use of the Domain Name. Furthermore, it is unlikely that the Respondent can prove good faith use of the Domain Name because it is difficult to conceive of a use that would not infringe the SWAROVSKI Marks. The Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. The Domain Name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of the Domain Name would “inevitably lead to confusion of some sort” and cause disruption to the Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy. 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 purpose of the Respondent’s use of the SWAROVSKI Marks in the Domain Name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy. The Respondent’s attempt to attract consumers for commercial gain to the Domain Name by creating confusion among consumers by utilising the SWAROVSKI Marks is compounded by the efforts to mislead consumers into believing the site was operated or authorised by the Complainant. The Respondent, without valid consent, utilises the SWAROVSKI Marks in the Domain Name, throughout the Respondent’s website, in the ‘title bar’ of the Respondent’s website and offers products identical or similar to Swarovski products for sale at the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
Past UDRP panels have found that the addition of a geographical name or indicator to a trademark, and in particular to the SWAROVSKI trademark, does not serve to differentiate the domain name from the trademark (see, Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi,WIPO Case No. D2010-2057; Swarovski Aktiengesellschaft v. Bingshu Wu,WIPO Case No. D2010-1734; and Swarovski Aktiengesellschaft v. linyuan zhang,WIPO Case No. D2012-0259).
It is clear on the given evidence that the Complainant has registered the SWAROVSKI Marks internationally. The Complainant has also obtained the selected trademark registrations for the SWAROVSKI Marks in the USA where the Respondent seems to be located and Japan and international trademark registrations applicable in the USA and Japan.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case. It is clear on the given evidence that the Domain Name was registered long after SWAROVSKI Marks had become famous and distinctive in the USA and Japan. Thus, the burden of production is on the Respondent to establish its right or legitimate interest in the Domain Name. See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174. However, there is no evidence produced by the Respondent in this case.
There is no evidence that suggests that the Respondent has rights or legitimate interests in the Domain Name, or that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any mark confusingly similar thereto, as a domain name or for any other purpose.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include:
- registration of the domain name primarily for the purpose of disrupting the business of a competitor (Paragraph 4(b)(iii)); or
- intentional attempt to attract, for commercial gain, Internet users to web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, product or service on web site or location (Paragraph 4(b)(iv)).
Given the notoriety of the Complainant’s trademark and the use of the Domain Name, the Panel finds that the Respondent was aware of the Complainant’s trademark at the time it registered the Domain Name.
The use of a domain name by a registrant for the sale of products, that are similar or identical to the Complainant’s products, is consistent with the finding of bad faith use under the Policy. See, Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170.
The evidence establishes that the Respondent, without valid consent, utilises the SWAROVSKI Marks in the Domain Name, throughout its website, in the “title bar” of the website and offers products identical or similar to Swarovski products for sale at the website, without any indication to identify the Respondent as being independent from the Complainant. The Panel finds that this constitutes bad faith registration and use under paragraph 4(b)(iv) and (iii) of the Policy.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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.
Haig Oghigian
Sole Panelist
Date: December 4, 2013
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