The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Clive Levy of Piano, Texas, United States of America. 2. The Domain Name & Registrar
The disputed domain name is registered with GoD LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (the “Center") on January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2014, 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 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 12, 2014.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on February 21, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background.
The Complainant holds a series of registered trademarks, both in the United States of America and internationally, many of which are the word mark SWAROVSKI. The earliest word mark referred to was registered on May 30, 1972, in the United States of America.
These word marks are used by it in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.
The Complainant contends that it 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 its produces were sold in 1250 of its own boutiques and through 1100 partner-operated boutiques worldwide. The group's approximate worldwide revenue in 2012 was EUR 3,08 billion. It spends substantial time, effort and money in advertising and promoting the products under the SWAROVSKI mark, with the result that the SWAROVSKI mark has become famous and well-known in the United States of America and elsewhere, as appears from publications annexed to the Complaint.
The Complainant has also registered several domain names which include the word "Swarovski" and its website enables international users to access information regarding the Complainant and its merchandise, as well as the opportunity to purchase genuine products from it. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Respondent registered the disputed domain name on May 5, 2013, and is operating an on-line shop in the English language offering for sale various purported Swarovski products, such as bracelets, necklaces and earrings, copies of certain of the pages displaying the website associated to the disputed domain name having been attached to the Complaint.
It further complaints that the use of the disputed domain name is aimed at confusing Internet consumers into believing that the website is an official one of the Complainant and that the Respondent is either affiliated with or authorized to sell genuine products of the Complainant, whereas he is in fact not affiliated or authorized, nor able to guarantee authenticity or quality of the products.
The Complainant further contends that this is a blatant infringement of its marks by the Respondent, he having no right to do so in the absence of any link to, or license from, the Complainant. His conduct in deliberately choosing the name is clearly aimed at misleading Internet customers and those who are potential customers, and seeking to induce them to deal with the Respondent, when he is aware that he may not do so, thus clearly acting in bad faith, both in regard to the registration and the use of the Complainant's domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii). B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v John Michael, WIPO Case No. D2009-0942).
In the light of its past experience, the Complainant did not send a "cease and desist" letter to the Respondent. The Complainant contended that this was to avoid cyber-flight and delay in resolving the dispute. However, the Center when dealing with procedural matters, advised the Respondent of time limits and his default as he had failed to respond to any correspondence.
From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation, supra; VR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, supra; RX America LLC v Matthew Smith WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holdings A/S, supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213). C. Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trademarks which it owns in many countries, as well as the two particular domain names and of the 1192 other domain names owned by it.
The Complainant has cited several previous URDP decisions which it contends confirm that the SWAROVSKI trademark is world famous. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel. (LEGO Juris A/S v. Administracion Dominios,WIPO Case No. D2013-0265; LEGO Juris A/S v. Michael Fainshtein,WIPO Case No. D2013-0464).
On the basis of its evidence and contentions in this matter, however, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
The fact that the word mark has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
In particular, the Complaint refers to Swarovski Aktiengesellschaft v. S,WIPO Case No. D2013-1824 in this regard. Since this case, although involving the same Complainant, is not one where there is a pure factual finding, such as those to which the Panel has referred earlier, but constitutes a definition and application of a matter of principle, the Panel is satisfied that that reasoning applies in this instance as well.
In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the 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, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc., supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trade mark SWAROVSKI and associated domain names in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trade mark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trade mark rights enjoyed by the Complainant. (Guerlain S A v. Peikang,WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc., supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the disputed domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial again, Internet users to your 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 your website or location or of a produce or service on your website or location.”
While bad faith can exist where a domain name contains in its entirety a complainant's trade mark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a one-word combination of a complainant's registered trademarks (San Lameer, supra).
What is significant in the present case is paragraph (iv) quoted above. As already pointed out, the Respondent has made the misleading statements by offering for sale various purported Swarovski products on its website, implying that the Respondent either has a relationship with the Complainant or does so with the approval or endorsement of it. (San Lameer, supra).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer, supra).
Moreover, by use of the Complainant's trade mark in the disputed domain name, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainants' trade mark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant's reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Dated: March 7, 2014
Full & Egal Universal Law Academy