The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is of Dublin, Ireland. 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 October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 27, 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 the owner of several trademark registrations for SWAROVSKI amongst which the Community Trademark Registration No. 007462922, in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44 and 45, was registered on July 21, 2009 (Annexes B and C to the Complaint). In addition to several trademark registrations around the world the Complainant also owns a significant domain name portfolio to which is part.
The disputed domain name was registered on March 11, 2013 and currently resolves to an active webpage in which Swarovski products are being offered for sale. 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 an 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 in the English language that offers for sale various purported Swarovski products (Annex I to the Complaint).
As to the addition of the expressions “earrings” and “sale” the Complainant contends that these suffixes do 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.
In what it relates to the absence of rights or legitimate interests, the Complainant argues that:
i. no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name, not ever having the Respondent been in a business relationship with the Complainant; and
ii. the website that resolves to the disputed domain name displays (a) the Complainant’s logo; (b) identical marketing material published by the Complainant; and (c) goods being offered for sale which 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. (Annex I to the Complaint); and
iii. 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 reproduction of the Swarovski famous logo and the similar products being offered for sale at the website that resolves to the disputed domain name thus it being only possible to conclude that the Respondent knew about the SWAROVSKI trademark and reputation, and intentionally used them to its advantage in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed domain name 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark SWAROVSKI according to the various registrations throughout the world as per Annex B to the Complaint and, specifically in the European Community which covers Ireland, where the Respondent is located. The Complainant owns the Community Trademark Registration No. 007462922 of July 21, 2009 in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44 and 45 (Annex C to the Complaint).
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the terms “earrings” and “sale”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain name from the trademark. Quite to the contrary: in view of the fact that “Swarovski” “earrings” are on “sale” at the webpage resolving to the disputed domain name, the likelihood of confusion between Internet users and the Complainant’s trademark – which is used in relation to earrings amongst other products – is evident.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed asserts that no authorization or license has been given by the Complainant to the Respondent to register the disputed domain name. There is also no evidence that the Respondent has been commonly known by the disputed domain name.
According to the evidence submitted by the Complainant (Annex I to the Complaint) the website that resolves to the disputed domain name displays the SWAROVSKI trademark in a commercial manner that in this Panel’s view could suggest that such was an authorized reseller for the Swarovski products.
Furthermore, the website does not disclose the Respondent’s lack of relationship with the trademark owner, what leads this Panel to the conclusion that the Respondent was seeking to create an impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the SWAROVSKI trademark and products, as well as the offer for sale of similar products, on the website that resolves to the disputed domain name.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the SWAROVSKI trademark but also an attempt to misleadingly diverting consumers for its own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 10, 2013
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