The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is of Amsterdam, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 13, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant is a corporation organized under the laws of the Principality of Lichtenstein. The Complainant uses the SWAROVSKI trademarks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. The Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and 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 disputed domain name was registered on October 24, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has registered the trademarks SWAROVSKI globally and that it spends substantial time, effort and money advertising and promoting the SWAROVSKI trademarks in the Netherlands and worldwide and that as a result, the SWAROVSKI trademarks have become famous and well known in the Netherlands. The Complainant has developed an enormous amount of goodwill in the SWAROVSKI trademarks internationally, and the public has come to associate the SWAROVSKI trademarks exclusively with high quality items marketed by the Complainant.
Furthermore, the Complainant contends that the Respondent is using the disputed domain name to confuse consumers into believing that the website displayed at the disputed domain name is an official website of the Complainant and/or the Respondent is affiliated with or is authorized to sell products by the Complainant. The Respondent is not an authorized seller of the Complainant’s products and the Complainant does not guarantee the authenticity or quality of the products that are being sold at the website to which the disputed domain name resolves, despite the information displayed on such website. The Respondent has not only used the SWAROVSKI trademarks in the disputed domain name, but also operates an online shop which utilizes the SWAROVSKI trademarks throughout, displays the Complainant’s swan logo on the home page, in the “title bar”, uses identical marketing material published by the Complainant and offers for sale goods that are similar to those sold by the Complainant. The Respondent is creating the impression that the website displayed at the disputed domain name is an official website of the Complainant and that the Respondent is an authorized seller of the Complainant’s products.
Moreover, the Complainant argues that the disputed domain name is confusingly similar to the SWAROVSKI trademarks. The fact that the consumers are initially attracted to the disputed domain name by the use of the SWAROVSKI trademarks in the disputed domain name is enough to contravene paragraph 4(a)(i) of the Policy. The addition of the term “new” as a prefix and the term “crystal” as a suffix to the SWAROVSKI trademark does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant also argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI trademarks in a domain name or in any other manner. The Complainant furthermore states that the disputed domain name is being used to advertise the Swarovski products and the disputed domain name misdirects Internet traffic to the disputed domain name. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
In addition, the Complainant contends that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI trademarks and that the Respondent is using the disputed domain name in bad faith since the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the famous SWAROVSKI trademarks in the disputed domain name throughout the relevant website and attempts to attract consumers for commercial gain by purporting to sell products of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notification of Proceedings to Respondent
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint and the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
In view of the Respondent’s default in providing a response to the allegations of the Complainant, the Panel may decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)). Pursuant to paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).
In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
i) that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of SWAROVSKI registered trademarks, including inter alia:
- The trademark SWAROVSKI registered at community level on August 23, 2005 under number 003895091 for various classes of goods and services including inter alia 2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28;
- the trademark SWAROVSKI registered at community level on October 15, 1998 under number 000120576 for the classes 3, 11, 14, 16, 18, 21, 25, 26 of goods and services;
- the trademark SWAROVSKI registered at community level on July 21, 2009 under number 007462922 for various classes of goods and services including inter alia 1, 3-13, 15-17;
- the trademark SWAROVSKI with figurative element registered at community level on February 5, 2009 under number 006865794 for the classes 9, 11, 14, 18, 21, 25, 26 of goods and services.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name has three differences from the trademark SWAROVSKI of the Complainant: the addition of the terms “crystal” and “.com” as suffix and the addition of “new” as a prefix to the trademark.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is without legal significance from the standpoint of comparing the disputed domain name to SWAROVSKI. Since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Many UDRP panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985, “the fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks”. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. “The use of the generic terms “new” and “crystalshop” does not differentiate the disputed domain name from the Complainant’s SWAROVSKI trademarks”. See Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1043.
In this case, apart from the gTLD, the disputed domain name consists of the Complainant’s trademark SWAROVSKI and the suffix “crystal” and prefix “new”: Both terms are of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term “swarovski”. Moreover, in these circumstances, Internet users finding are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain name. Addition of the suffix “crystal” does not contribute distinctiveness to the disputed domain name. On the contrary, in this Panel’s view, it rather enhances confusion and the risk of association with the Complainant’s trademark, as the generic term “crystal” can be used to describe the Complainant’s products, since the Complainant uses the SWAROVSKI trademarks in connection with crystal jewellery stones. “Considering that the Complainant is conducting business on the crystal jewellery stones and crystalline semi-finished goods, and the website at the disputed domain name also relates to the sale of jewellery, the subject phrases add to the confusing similarity”. See Swarovski Aktiengesellschaft v. , supra.
The impression of the Internet user will be that the disputed domain name belongs to the Complainant or at least is connected to the Complainant and its services. Even in the latter case, it is the Panel’s view that such connection may be strengthened where the trademark is well known. In this regard, previous UDRP decisions held that SWAROVSKI is well known internationally. See e.g. Swarovski Aktiengesellschaft v. A.S., WIPO Case No. D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No. D2012-2267; Swarovski Aktiengesellschaft v. Derk Hond, WIPO Case No. D2013-0005.
When a disputed domain name incorporates, as here, the entirety of a complainant’s trademark – and a well-known trademark – the addition of common terms does not serve to distinguish adequately the domain name from the mark. See also F. Hoffmann-La Roche AG v. Ashima Kapoor,WIPO Case No. D2005-1351. The additional terms in this case, “new” and “crystal”, are common terms of no significant value in distinguishing the well-known mark SWAROVSKI from the disputed domain name. See also Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-0803.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (See WIPO Overview 2.0, paragraph 2.1).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to overturn such prima facie case.
Absent any response or defence by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark SWAROVSKI (see Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use).
Further, the Panel notes that the website at the disputed domain name presents itself as a Complainant-operated online store with the SWAROVSKI trademark and accompanying swan logo featuring prominently on the home page, while marketing purportedly genuine SWAROVSKI products like brooches, bracelets, rings, pendants, and necklaces.
This use of the disputed domain name cannot be characterized as bona fide within the meaning of paragraph 4(c)(i) of the Policy because the Respondent is passing itself off as the Complainant or one of its authorized dealers. The website at the disputed domain name does not contain any indications whatsoever clarifying the identity and the relationship of the Respondent with the Complainant. To the contrary, the website at the disputed domain name creates the false impression that the Internet user is on the trademarks owner’s website, thus causing confusion. This Panel agrees with the conclusion of other panels that held in similar situations that as a result, the Oki Data principles do not show any legitimate use made by the Respondent as a distributor of (possibly) genuine Swarovski goods (Swarovski Aktiengesellschaft v. , WIPO Case No. D2013-1529 and OkiData Americas, Inc. v. ASD, Inc., supra).
Likewise, the Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use within the view of paragraph 4(c)(iii) of the Policy because the Respondent is apparently making a profit, or at least sought to make it, by deceptively attracting Internet users to a supposedly official SWAROVSKI online shop. Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfil the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”
As noted above, the trademark SWAROVSKI is well known. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name decades after the Complainant registered its trademarks. As such, given the fact that the SWAROVSKI trademark is well known, registration in bad faith can be inferred in this case.
As regards the use of the disputed domain name, this Panel agrees that even in the event that the Complainant offers genuine SWAROVSKI goods (e.g. as a non-authorised reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant, indicates bad faith (see Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1529, and also Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524).
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of the Policy has been met. 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.
Mihaela Maravela
Sole Panelist
Date: February 27, 2014
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