The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Eva Brown of Guangdong, 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 February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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 [together with the amendment to 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 March 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2014.
The Center appointed Jane Lambert as the sole panelist in this matter on April 2, 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 the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution outlets in 42 countries and a presence in more than 120. In 2012, it distributed its products in 1,250 of its own boutiques and a further 1,100 operated by its partners. Its worldwide revenue in 2012 was approximately Euro 3.08 billion.
It distributes its products under the SWAROVSKI sign which it has registered as a trade mark for a range of goods in a number of countries including China. One of those registrations is number 394001 by which SWAROVSKI is registered for imitation jewelry in class 14 with effect from July 30, 1997.
The Complainant spends considerable sums of money as well as time and effort on marketing its products under the SWAROVSKI mark in China and round the world. By reason of such sales and marketing the public and the trade in China and around the world associate the SWAROVSKI mark in relation to jewelry, gemstones, crystal and the like with the Complainant and none other.
According to the Complainant, the Respondent used the disputed domain name as the URL for an on-line shop which purported to be an authorized Swarkovski retailer. The Complainant visited that site on February 26, 2014 and printed several pages which it has attached to the Complaint as Annex J. The Panel visited the URL on April 11, 2014 but found only a holding page and no sign of an on-line shop or the annexed pages.
All that is known of the Respondent is the name and address that he or she gave to the Registrar. Although the address is in China the name is typically Anglo-Saxon (or at least it would be if the forename and surname were capitalized). 5. Parties’ Contentions A. Complainant
The Complainant claims the transfer of the disputed domain name on the following grounds:
(1) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights,
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(3) The disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant says that the disputed domain name is confusingly similar to the mark SWAROVSKI which it has registered in China and elsewhere. The Respondent has incorporated that mark into the disputed domain name so as to cause confusion among internet users between the disputed domain name and its approved websites. It submits that the addition of the words “sale”, “online” and “store” does not lessen the confusing similarity between the disputed domain name and its trade mark.
As to the second, the Complainant confirms that it has no connection or affiliation with the Respondent and has not licensed or consented to the use of its marks in a domain name or in any other manner. The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI mark or the name “Swarovski”.
As to the third, the Complainant submits that the mere registration of a domain name that incorporates a mark and corporate name of such a well-known company as itself constitutes registration in bad faith.
Further, it says that that the use of the disputed domain name to lead the public to believe that it was an authorized distributor of the Complainant’s products when it was not amounts to use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s agreement with the Registrar incorporates the Policy paragraph 4 (a) of which provides:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
If, but only, if the Panel finds each and every one of the above-mentioned elements to be present, the Panel may order the cancellation of the registration or transfer of the disputed domain name to the Complainant. A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The Complainant has registered the word SWAROVSKI for imitation jewelry in class 14 as a trade mark in China with effect from July 30, 1997 under registration number 394001. The Respondent has incorporated that mark into the disputed domain name with the addition of the characters “sale-onlinestore”. Those letters are derived from the words “sale”, “online” and “store” and suggest to the Panel (and no doubt the rest of the public) that the disputed domain name is the URL for an e-commerce site operated, franchised or otherwise authorized by the Complainant when it is nothing of the kind. B. Rights or Legitimate Interests
The Panel finds the second element to be present.
The Complainant has produced compelling evidence that the Respondent has not rights or legitimate interest in the disputed domain name. It is thus up to the Respondent to challenge that evidence or to produce evidence of its own of a right or legitimate interest and paragraph 4(b) of the Policy provides guidance as to how it may do that. The Respondent has failed to take advantage of that opportunity. C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is set out in sub-paragraph (iv):
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel has already found that the disputed domain name misrepresents the disputed domain name as the URL for an e-commerce site operated, franchised or otherwise authorized by the Complainant. By such misrepresentation the Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of her web site. The pages in Annex J show that she offered jewelry for sale from her website from which she would have derived (or expected to derive) commercial gain.
Having regard to that evidence, the Panel concludes that the disputed domain name was registered and 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.
Jane Lambert
Sole Panelist
Date: April 16, 2014
Full & Egal Universal Law Academy