Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is “ ” of Encarnação, Baixa, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2014. On July 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2014.
The Center appointed David Perkins as the sole panelist in this matter on August 27, 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 4.1 Complainant
4.1.1 Annex E to the Complaint - an Article published by PR Newswire on March 24, 2014 - provides background to Complainant’s business from its beginning in 1895 to the present day. The Complaint explains that 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, Complainant’s products were sold under the SWAROVSKI trade mark in 1250 of its own boutiques and through a further 1100 partner-operated boutiques worldwide. Worldwide revenue for Complainant's Group in 2012 was approximately EUR 3.08 billion. Those products comprised crystal jewellery stones and crystalline semi-finished goods for the fashion, home accessories, collectibles and lighting industries.
The SWAROVSKI trade mark
4.1.2 The Complaint states that Complainant has registered the SWAROVSKI marks globally and exhibits the following, all of which are applicable in Respondent’s domicile, Portugal. Country Registration No. Mark Classes of goods and services Date of Registration
Community Trade Mark (“CTM”)
003895091
SWAROVSKI
2-3,6,8-9,11,16,18-21, 24-25,28,34-35, and 41
Filed February 22, 2004 and registered August 23, 2005
CTM
007462922
SWAROVSKI
1, 3-13, 15-17, 19-20, 22-23, 27-34,36-40,and 42-45
Filed December 4, 2008 and registered July 21, 2009
International
303389A
SWAROVSKI
1,3,6-9,11,14,16-17 19-21, 24 and 26
Registered October 9, 1965
International
528189
SWAROVSKI
8-9,11,14,18,21,25 and 26
Registered September 6, 1988
The SWAROVSKI domain names
4.1.3 Complainant registered the domain names on 1 January 1, 1996 and on April 16, 1998, both of which resolve to Complainant’s website at . Printouts from that website are exhibited to the Complaint.
The reputation of the SWAROVSKI trade mark
4.1.4 Also exhibited to the Complaint are Press Clippings illustrating, Complainant says, both the extent of its advertising and promoting products sold under the SWAROVSKI Mark and the international recognition of that mark and the goodwill attaching to it. 4.2 Respondent
In the absence of a Response, all that is known about Respondent appears from the Complaint and the annexes exhibited to it. The disputed domain name was created by Respondent on November 20, 2013. The disputed domain name resolves to a website, which displays Complainant’s Swan logo and offers for sale goods that are similar to those sold by Complainant under the SWAROVSKI trade mark. For example, rings, bangles and bracelets. The “About Us” section of Respondent’s website states:
“We offer you outstanding value by bringing you the greatest selection of fine jewellery directly to your front door. Our industry partnerships guarantee that our customers receive the greatest selection of only the highest quality fine jewellery at below retail prices.” 5. Parties’ Contentions 5.A. Complainant
Identical or Confusingly Similar
5.A.1 From the foregoing Complainant says that it has rights in the SWAROVSKI marks.
5.A.2 Complainant’s case is that the disputed domain name is confusingly similar to its SWAROVSKI trade mark. This is because, inter alia, addition of the “boutique” suffix does not avoid confusing similarity since the dominant element of the disputed domain name is the very well known SWAROVSKI mark. Complainant illustrates this by citing earlier decisions under the Policy where addition to the SWAROVSKI mark of other generic words, for example “crystal” and “jewellery” have been found not to avoid a finding of confusing similarity.
5.A.3 Similarly, Complainant asserts that use of a hyphen also fails to avoid a finding of confusing similarity, citing further earlier decisions under the Policy. For example, and were both held to be confusingly similar to Complainant’s SWAROVSKI Mark.
Rights or Legitimate Interests
5.A.4 Complainant’s case is as follows. First, Complainant has neither licensed nor otherwise authorised Respondent to use the SWAROVSKI Mark.
5.A.5 Second, Respondent has never been known by the disputed domain name: Policy paragraph 4(c)(ii).
5..A.6 Third, Respondent’s use of the disputed domain name - which is summarised in section 4.2 above - is not a bona fide use, since it is clearly designed to misdirect Internet users to Respondent’s website where it is offering goods similar to and purporting to be those of Complainant. That website is, Complainant says, plainly designed to create the impression that Respondent is associated with Complainant, which it is not. In support, Complainant cites earlier decisions under the Policy, where respondents of the domain names and , both of which resolved to websites offering such goods, were held not to have rights to or legitimate interests in those domain names. This is, Complainant says, the more so where, as in this case, Respondent chooses to incorporate the well known SWAROVSKI mark into a domain name without authorisation from the trade mark owner. In that respect, Complainant cites yet two further decisions under the Policy where the domain names were and . Hence, Complainant’s case is that Respondent cannot demonstrate the circumstances set out in paragraphs 4(c)(i) or (iii) of the Policy.
Registered and Used in Bad Faith
5.A.7 Complainant’s case is that, because of the very well known reputation of its SWAROVSKI mark, it is improbable that Respondent was unaware of it prior to registering the disputed domain name. As noted in section 4.1.2 above, the SWAROVSKI trade mark has been registered in Respondent’s domicile, Portugal, since 1965. As it is such a well known trade mark, it cannot, Complainant says, be a coincidence that Respondent chose to incorporate that mark in its entirety in the disputed domain name and to offer at the website to which the disputed domain name resolves a variety of the same products - e.g. rings, bangles, bracelets etc. - that Complainant is famous for.
5.A.8 Further evidence of Respondent's bad faith is, Complainant says, the fact that the disputed domain name is confusingly similar to Complainant's SWAROVSKI mark and that Respondent has no rights to or legitimate interests in the disputed domain name. Respondent’s registration of the disputed domain name, given the wide reputation of the SWAROVSKI mark, leaves no other interpretation of Respondent’s conduct other than that of bad faith. In support of that submission, Complainant cites both Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Swarovski A.G. v lin,WIPO Case No. D2010-2052.
5.A.9 In the circumstances, Complainant’s case is that the facts here fall fair and square within Policy paragraphs 4(b)(iii) and (iv). Further decisions under the Policy cited by Complainant where registration and use in bad faith have been found on similar facts include Swarovski Aktiengesellschaft v. Luca Vogler, WIPO Case No. D2013-0664; (), Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170 (); Swarovski A.G. v lin, Supra () and Swarovski Aktiengesellschaftv. Hopper Dirt, WIPO Case No. D2011-1525 ().
Complainant’s attempt to resolve this Dispute informally
5.A.10 Complainant explains that, in its experience, if a “cease and desist” letter is sent before filing the Complaint, typically Respondent transfers the disputed domain name to another registrant in order to delay the process and thwart Complainant's efforts to resolve the dispute. This is, Complainant says, the practice of “cyber-flight”. For this reason, Complainant did not forewarn Respondent before filing this Complaint. 5.B. Respondent
As noted, Respondent has not filed a Response. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy, paragraph 4(c), sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. 6.A Identical or Confusingly Similar
6.A.5 On the basis of the registrations listed in section 4.1.2 above, clearly Complainant has rights in the SWAROVSKI trade mark. On the evidence presented in the Complaint, that is also a well known mark internationally.
6.A.6 Further, the disputed domain name cannot avoid a finding of confusing similarity with that mark by the addition of a hyphen followed by the description “boutique”. Complainant's case in that respect is well made out.
6.A.7 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. 6.B Rights or Legitimate Interests
6.B.8 The Panel is satisfied on the evidence presented in the Complaint, summarised in sections 5.A.4 to 5.A.6 above, that Respondent cannot demonstrate that it has rights to or legitimate interests in the disputed domain name whether under paragraph 4(c)(i) to (iii) of the Policy, or otherwise. Consequently, the Complaint satisfies paragraph 4(a)(ii) of the Policy. 6.C Registered and Used in Bad Faith
6.C.9 Again, it is not necessary to repeat Complainant’s case summarised above in sections 5.A.7 to 5.A.9. It is clear to the Panel from the evidence and the facts set out in the Complaint and its Annexes that the disputed domain name was registered and is being used in bad faith in this case.
6.C.10 Accordingly, the Complaint also meets the requirement of the Policy paragraph 4(a)(iii). 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 Complainant.
David Perkins
Sole Panelist
Date: September 5, 2014
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