The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Susan Adm of Qingdao, 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 November 26, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2013.
The Center appointed Christian Schalk as the sole panelist in this matter on January 7, 2014. 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 paragraph 7 of the Rules.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules.
The language of the proceedings is English. 4. Factual Background
The Complainant is a leading producer of cut crystal, genuine gemstones and created stones with a commercial presence in more than 120 countries. In 2012, the Complainant’s products were sold in 1250 own boutiques and through 1100 partner-operated boutiques worldwide. Its revenue was approximately EUR 3.08 billion in 2012.
The Complainant’s goods and marketing activities have received considerable attention in the media.
The Complainant owns various trademark rights in the term SWAROVSKI in many countries of the world. Especially, in China, the Complainant has trademark rights in the Latin version of SWAROVSKI as well as in its Chinese version. The Complainant owns among others the following Chinese trademarks:
- Chinese trademark registration No. 384001 for SWAROVSKI (Latin version), registration date July 30, 1987, covering goods and services in International Class 14;
- Chinese trademark registration No. 385013 for SWAROVSKI (Chinese version), registration date August 30, 1989, covering goods and services in International Class 14;
- Chinese trademark registration No. 361346 for SWAROVSKI (Chinese version), registration date September 20, 1989, covering goods and services in International Class 14;
- Chinese trademark registration No. 346372 for SWAROVSKI (Latin version) and a device, registration date April 20, 1989, covering goods and services in International Class 14.
Furthermore, the Complainant’s rights in the trademark SWAROVSKI has been recognized by several UDRP panelists (see, for instance, Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1043 and Swarovski Aktiengesellschaft v. Luly Stephanie,WIPO Case No. D2013-0846).
The Complainant also owns the domain names and , which both point to the Complainant’s official website. This website allows Internet users to view the Complainant’s products and purchase them online.
The Respondent registered the disputed domain name on May 21, 2013. The disputed domain name directs to a “Swarovski Outlet Online Sale” online shop that offered for sale “Swarovski Necklaces”, “Swarovski Bracelets” and “Swarovski Earrings”. This website prominently features also the Complainant’s company logo.
On the upper part of each webpage, which focuses on product categories, the following statement is written:
“Swarovski outlet sale online, one-stop shop for Swarovski Crystal jewellery outlet. We sell high quality Swarovski Necklaces Outlet Sale at affordable price with Free Shipping”.
Below this statement, several pieces of jewellery are displayed which all contain crystals in different sizes and quantities. For all of them, a 50 percent (or more discount is offered.
In the “About us” section of the website, the Respondent describes its website to which the disputed domain name resolves as follows:
“Our website is a professional online shopping website for Swarovski items. We offer quality fashional and
beautiful products at affordable price for global buyers. And our buyers are from the US, Canada, Europe,
Australia, Japan and other main courtries or regions. On our website, you can buy whatever you want that is
fashional and beautiful promptly”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI marks. The Complainant argues in this context, that the Respondent has chosen the disputed domain name to cause confusion among Internet users between the websites to which the disputed domain name resolves and the approved websites of the Complainant. The Complainant believes that Internet users who intend to purchase the Complainant’s products online may type the disputed domain name in to their browser as a reference to the sale of the Complainant’s jewellery online or into the Google search engine where the disputed domain name appears as the eighth search result. It is the Complainant’s opinion that such behaviour is illegal because it wrongfully capitalises on the Complainant’s goodwill in its SWAROVSKI marks to divert Internet traffic to an infringing website. The Complainant refers in this context to Ticketmaster Corp. v. Polanski,WIPO Case No. D2002-0166, to support its arguments.
The Complainant argues further that the addition of the terms “outlet”, “online” and “sale” as suffixes to the Complainant’s marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant cites among others Swarovski Aktiengesellschaft v. Ming Robot,WIPO Case No. D2012-1200; Swarovski Aktiengesellschaft v. flushy, flushy kitty,WIPO Case No. D2012-0898 and Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080 in order to supports its findings.
The Complainant asserts also that coupling a common word with the Complainant’s mark or even a word similar to the Complainant’s mark in a domain name does not negate a finding of confusing similarity. In this context, the Complainant refers to Swarovski Aktiengesellschaft v. Xue Yan Yang,WIPO Case No. D2012-1041 and Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139.
Furthermore, the Complainant argues that panels have held in cases where the Complainant was a party, that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety (see Swarovski Aktiengesellschaft v. Ming Robot,WIPO Case No. D2012-1200 and Swarovski Aktiengesellschaft v. flushy, flushy kitty,WIPO Case No. D2012-0898).
The Complainant alleges further that the Respondent has no legitimate interests or rights in the disputed domain name. The Complainant asserts that the Respondent has no connection or affiliation with the Complainant and has not received any express or implied license or consent to use the Complainant’s mark as a part of a domain name. In addition, the Respondent has never been known under the disputed domain name.
The Complainant argues also that the disputed domain name is being used to advertise purported products of the Complainant and that the disputed domain name misdirects Internet traffic to an infringing website, does not constitute a bona fide offering of goods and services or a legitimate interest. The Complainant believes therefore, that the Respondent’s misappropriation of the disputed domain name was no accident since it was the Respondent’s intention to mislead consumers into believing that the Respondent is associated with or approved by the Complainant, and by this, the Respondent is seeking to trade on the Complainant’s goodwill. The Complainant refers in this context to Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709 where the panel stated that when a respondent has chosen to incorporate a well-known trademark without the authorisation of the trademark owner, this cannot be considered as a bona fide offering of goods and services.
Moreover, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith.
The Complainant is convinced that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant explains that the SWAROVSKI mark is well known not only in China but worldwide as stated by the panel in Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819. Therefore, the selection of the disputed domain name, which wholly incorporates the Complainant’s trademark SWAROVSKI cannot be a coincidence. The Complainant believes also that the Respondent would not have advertised products purporting to be the Complainant’s products if he was unaware of the Complainant’s reputation.
The Complainant contends in addition that the disputed domain name is being used in bad faith. The Complainant argues in this context that the Respondent has done nothing to identify itself as being independent from the Complainant but has –on the contrary- incorporated the Complainant’s SWAROVSKI mark in the disputed domain name and throughout the corresponding website and attempts to attract consumers for commercial gain by purporting to sell the Complainant’s products. The Complainant refers in this context to Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170, where the panel stated that the use of a domain name by the 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.
The Complainant asserts also that other evidence for bad faith registration and use of the disputed domain name by the Respondent is that its registration and use creates an “initial interest confusion” which attracts Internet users to its website because of its purported affiliation with the Complainant (see Swarovski Aktiengesellschaft v. Hopper Dirt,WIPO Case No. D2011-1525).
The Complainant contends that the Respondent has created the impression that the Respondent is operating an online store from China. In this context, the Complainant explains that the telephone number provided by the Respondent in the WhoIs record does not match the country code for China. It is the Complainant’s opinion that providing inaccurate WhoIs information shows evidence of bad faith registration and use under paragraph 4(b) of the Policy on the part of the Respondent. In order to support its arguments, the Complainant cites MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231 and F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074.
Other indications for the Complainant are that the Respondent, without valid consent, utilises the Complainant’s SWAROVSKI trademark in the disputed domain name and has linked it with a website where products identical or similar to the Complainant’s products are offered for sale, which inevitably lead to confusion of some sort and cause disruption of the Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy. The Complainant refers to AT&T v. Rice,WIPO Case No. D2000-1276 and PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700, where panels have adopted the same position. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven each of the following three elements:
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights SWAROVSKI. The disputed domain name is not identical to the Complainant’s trademark. However, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.)
In this case, the terms “outlet” and “online sales” are generic terms without any distinctive character. They simply suggest a certain way of selling products. The term “outlet” stands for facilities where certain products of a company are offered under a special price regime, and the term “online” generally stands for sales operations via the Internet. Furthermore, the Complainant’s products can be purchased also online via Complainant’s official website. Therefore, these terms cannot avoid similarity nor do they add anything to avoid confusion with the Complainant’s trademark (see also Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). The only distinctive element of the disputed domain name consists of the term “swarovski”, identical to the Complainant’s trademark.
The inclusion of a hyphen in the disputed domain name between the words“swarovskioutlet” and “onlinesales” does not alter this assessment. As previous panels have stated in similar cases, the use of a hyphen is irrelevant for the purposes of differentiating the Complainant’s trademark from the disputed domain name (see Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1043).
In addition, the “.com” suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with SWAROVSKI in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, the Panel finds no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark.
Given the Complainant’s worldwide interests in its trademark and the Respondent’s reference to the Complainant’s products on the website, it is unlikely that the Respondent was unaware of the Complainant when registering the disputed domain name and began using it.
The Respondent has not rebutted the Complainant’s allegations and has not provided the Panel with any explanations of Respondent’s rights or legitimate interests. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g., E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554). The Respondent has directed the disputed domain name to its own website created to look similar to the Complainant’s official website or of an authorised re-seller, and the Respondent offers for sale purported products of the Complainant.
Given the reputation of the Complainant’s trademark, the Panel believes that the disputed domain name has been registered by the Respondent was to capitalize on the Complainant’s reputation and goodwill by redirecting Internet traffic intended for the Complainant away from it to the Respondent’s website to generate income. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.
Given the notoriety of the Complainant due to its immense presence in the media and its products sold in many countries of the world including China where the Respondent apparently is located and the fact that the Respondent refers to the Complainant and its products on the website to which the disputed domain name resolves, the Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent has directed the disputed domain name to a website where it purports to sell products of the Complainant. It is a well-known that Internet users often combine trademarks and descriptive words in their search engine to narrow down their search results. Such combination could consist of the terms such as “Swarovski” and “outlet” or “online sale”. If the Respondent’s website appears among the search results, then Internet users could believe that when visiting the Respondent’s website, that it is either the website of the Complainant or an authorized distributor. Internet users have good reasons to believe that this is the case because the design of the website to which the disputed domain name resolves is similar to the Complainant’s website. In addition the appearance and style of the products displayed on the Respondent’s website is very similar to the products offered on the Complainant’s own website.
The Panel believes that the only reason for this would be to profit from the Complainant’s trademark (see also Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). Therefore, the Panel is convinced that the only purpose was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, the Respondent has provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs information for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the Written Notice of the Complaint was returned because it could not be delivered and also the courier service provider could not reach the Respondent. Therefore, the Panel notes that the Respondent is in breach of the registration agreement (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name was registered and is being used 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.
Christian Schalk
Sole Panelist
Date: January 21, 2014
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