The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Hellen Admas of Qingzhou, Shandong, China. 2. The Domain Name and Registrar
The disputed 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 31, 2013. On October 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2013.
The Center appointed Angela Fox as the sole panelist in this matter on December 6, 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 a well-known producer of cut crystal, gemstones and created stones. Its goods are sold internationally under the trademark SWAROVSKI.
The Complainant distributes its Swarovski products to 42 countries and has a presence in more than 120 countries. In 2012, the Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2012 was 3.08 billion EURO.
The fame of the SWAROVSKI trademark is well-established and its international reputation for crystal and jewellery have been recognised in numerous previous WIPO decisions, including Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1043, Swarovski Aktiengesellschaft v. Luly Stephanie,WIPO Case No. D2013-0846, and cases involving the Respondent, Swarovski Aktiengesellschaft v. Hellen Admas,WIPO Case No. D2013-0303 () and Swarovski Aktiengesellschaft v. Hellen Admas,WIPO Case No. D2013-0225, ().
The Complainant’s owns trademark registrations for SWAROVSKI and marks incorporating SWAROVSKI in numerous jurisdictions, including the following registrations in China, where the Respondent is based, and the European Union:
No. Trademark Category Reg. No. Class Registration Date
1
SWAROVSKI
China
384001
14
1987-07-30
2
施华洛世奇
China
385013
14
1989-08-30
3
China
346372
14
1989-04-20
4
China
3520173
14
2004-11-07
5
SWAROVSKI
CTM
007462922
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, 45
2009-07-21
6
SWAROVSKI
CTM
003895091
2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28, 34, 35, 41
2005-08-23
7
CTM
006865794
9, 11, 14, 18, 21, 25, 26
2009-02-05
Details of these registrations were attached to the Complaint.
The disputed domain name was registered on December 14, 2012. It is in use for a German-language website offering SWAROVSKI-branded jewellry and accessories, and making prominent use of the SWAROVSKI trademark, as well as the swan device depicted in the various SWAROVSKI logo trademarks, above. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark SWAROVSKI and to its registered marks incorporating SWAROVSKI. The disputed domain name incorporates the SWAROVSKI mark in its entirety and differs only in the addition of the descriptive word “schmuck”, which means “jewellry” in German, a hyphen, and the non-distinctive word “outlet”, which denotes a place where goods can be bought.
In the Complainant’s submission, the Respondent has no rights or legitimate interests in the disputed domain name, which the Complainant states was registered and has been used in bad faith in order to draw in Internet users searching for the Complainant’s goods to a website that appears to be that of, or authorized by, the Complainant, but which in fact has no connection with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has shown that it owns registered trademark rights in SWAROVSKI and marks incorporating SWAROVSKI. The disputed domain name incorporates the Complainant’s distinctive SWAROVSKI trademark in its entirety and differs only in the addition of the non-distinctive German word “schmuck”, which means “jewellry”, a non-distinctive hyphen, and the generic word “outlet”, which denotes a location, such as a website, where goods can be bought.
Previous UDRP panels have ruled that the presence of relevant descriptors or non-distinctive matter does not avoid confusing similarity between a domain name and a complainant’s trademark (see, inter alia, Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709, where the panel held, “the mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” and Pfizer Inc. v. Juan Gonzales,WIPO Case No. D2004-0589, where the panel held, “it is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark.”).
The word “schmuck” is a relevant descriptor since it directly describes the Complainant’s goods, and the reference to “outlet” conveys the message that SWAROVSKI jewellry can be bought through the website. Taken together, all the elements in the disputed domain name combine to suggest a German website where the Complainant’s SWAROVSKI-branded jewellry can be bought.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI trademark. B. Rights or Legitimate Interests
The Complainant has never authorized, licensed or permitted the Respondent to use the trademark SWAROVSKI. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain name. The Respondent, moreover, has made no effort to refute the allegation that it has no rights or legitimate interests in the disputed domain name.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest.
Although the Respondent appears to have used the disputed domain name to offer SWAROVSKI-branded jewellry for sale, such use does not appear to be use in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy, since the Respondent’s website appears calculated to convey the false impression that the Respondent is the Complainant or an authorised dealer of the Complainant when in fact it has no connection with the Complainant at all.
Such activities, while commercial in nature, appear designed to capitalize on the confusing similarity of the disputed domain name with the Complainant’s SWAROVSKI trademark and thus to mislead Internet users into purchasing products from the Respondent in the mistaken belief that they are buying goods from the Complainant or from an authorised dealer of the Complainant. In the Panel’s view, such conduct lacks the bona fides needed to give rise to a right or legitimate interest under the Policy.
In Madonna Ciccone v. Dan Parisi and “M”, WIPO Case No. D2000-0847, the Panel stated “use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The SWAROVSKI mark is well-known internationally as denoting the Complainant’s jewellry and crystal products. Given the Respondent’s use of the Complainant’s SWAROVSKI trademark on the website linked to the disputed domain name it cannot plausibly be suggested that the Respondent was unaware of the Complainant and its SWAROVSKI trademark when it registered the disputed domain name. Indeed, it appears that the Respondent registered the disputed domain name with the intention, for commercial gain, of attracting Internet traffic seeking the website of the Complainant or one authorized by it as the source of genuine SWAROVSKI-branded goods.
These circumstances, in the Panel’s view, amount to evidence that the disputed domain name was registered in bad faith. The fact that the Respondent has been found to have registered other domain names incorporating SWAROVSKI in bad faith (,WIPO Case No. D2013-0303 (supra), and ,WIPO Case No. D2013-0225 (supra) further support this view.
There is, moreover, evidence that the disputed domain name has been used in bad faith. As indicated above, the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant, on a website which appears calculated to misrepresent to Internet users that it is that of the Complainant, or is in some way associated with or authorised by the Complainant. Such free-riding on the Complainant’s goodwill is disruptive to the Complainant’s business because it diverts and misleads consumers looking for genuine SWAROVSKI products sold by the Complainant or its authorised dealers.
In the Panel’s view, the evidence in this case points to bad faith registration and use under the Policy. The Panel finds accordingly. 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.
Angela Fox
Sole Panelist
Date: January 14, 2014
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