The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Gioieilli Swarovski of Rome, Italy. 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 October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013.
On October 23, 2013, the Center received an informal communication from Respondent, on which Complainant commented by email on October 24, 2013. On October 24, 2013, the Center sent a possible settlement communication to the parties. After several exchanges of emails between the Complainant, the Respondent and the Registrar, the Complainant requested the suspension of the proceedings on October 29, 2013. The proceedings were suspended as of October 29, 2013 until November 8, 2013. After several exchanges of emails between the Complainant, the Respondent and the Registrar, the Complainant requested the extension of the suspension period on November 8, 2013. The suspension period was extended as of November 8, 2013 until November 18, 2013. After several exchanges of emails between the Complainant, the Respondent and the Registrar, the Complainant requested the extension of the suspension period on November 18, 2013. The suspension period was extended as of November 18, 2013 until November 21, 2013. On November 21, 2013, the Complainant requested the re-institution of the proceedings. The Center re-instituted the proceedings on November 21, 2013 noting that before the suspension took place, there were 14 days remaining for the Response due date and accordingly the new due date for the Respondent to submit a Response was December 5, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on December 6, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on December 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. 4. Factual Background
The Complainant manufactures and sells products featuring cut crystal, gemstones and created stones. It is the owner of a large number of trademark registrations for SWAROVSKI, including European Community trademark registrations number 7462922 registered on July 21, 2009 and 3895091, registered on August 23, 2005. The Complainant markets its products through a number of domain names, notably , registered on January 11, 1996 and registered on April 16, 1998. The disputed domain name was registered on July 23, 2013. 5. Parties’ Contentions A. Complainant
The Complainant claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones, having production facilities in 18 countries and being present in more than 120 countries through 1,250 own boutiques and 1,100 partner-operated boutiques. The Complainant’s economic group had approximate worldwide revenue in 2012 of EUR 3.08 billion.
The Complainant argues that the disputed domain name, which reproduces its trademark entirely, is being used as an online shop that offers for sale various purported SWAROVSKI products, but also products from competitors, of which the quality cannot be assured, although the Respondent’s website gives the impression that the quality of the products sold on the website at the disputed domain name are of high quality.
The Complainant further contends that the addition of the expression “gioielli” as a prefix does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark, since the disputed domain name incorporates the Complainant’s trademark in its entirety.
As regards the absence of rights or legitimate interests, the Complainant argues in particular that the Respondent has no connection whatsoever with the Complainant. No license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name, and the goods being offered for sale on the website to which the disputed domain name leads are similar to those produced by the Complainant, thus creating a false impression that the Respondent is somewhat associated or an official or authorized seller of the Complainant. Besides, the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or name.
Furthermore, the Complainant asserts that the bad faith in the registration of the disputed domain name is evident given the fact that, when registering the disputed domain name, the Respondent knew of the Complainant’s rights in the SWAROVSKI Marks, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in those marks. According to the Complainant, 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 disputed domain name, and that its selection, which wholly incorporates the SWAROVSKI trademark, cannot be a coincidence. The Respondent would not have advertised products purporting to be SWAROVSKI products if he was unaware of the Complainant’s reputation.
Finally, the Complainant contends that the disputed domain name is being used in bad faith: The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the SWAROVSKI trademark in the disputed domain name and attempts to attract consumers for commercial gain by purporting to sell SWAROVSKI products and products unrelated to the Complainant’s brand. According to the Complainant, this creates “initial interest confusion”, which attracts Internet users to the website at the disputed domain name because of its purported affiliation with the Complainant, and is further evidence of the Respondent’s bad faith registration and use of the disputed domain name.
The Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of the disputed 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. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark, preceded by the Italian word “gioielli” (jewellery in Italian) and the generic Top-Level Domain (“gTLD”) “.com”. The word “gioielli”, which addresses the Italian market, describes the Complainant’s major product area. The mere addition of such a generic word appearing to describe the Complainant’s products and the necessary gTLD to the Complainant’s trademark, does not render the disputed domain name any less confusingly similar to the Complainant’s trademark. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent is not called “Swarovski” or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent uses the website to which leads the disputed domain name to sell the Complainant’s products or what purported to be them, as well as products allegedly from competitors (such as in particular “Tiffany”). The “Inizio” as well as the “blog” page creates the impression that the Respondent is somehow an authorized seller of the products concerned, although this is not the case.
In this Panel’s assessment, the Complainant has shown that the Respondent registered the disputed domain name knowing about the Complainant’s business and trademarks and sought to use these marks within the disputed domain name to attract consumers to the website to which it resolved and sell to customers the Complainant’s products or products purporting to be them, as well as competing products. All the while, the Respondent was giving the false impression to those consumers that it was a seller authorized by the Complainant.
The Panel concludes from this that the Respondent registered and is using the disputed domain name 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.
Daniel Kraus
Sole Panelist
Date: January 8, 2014
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