Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is of Brussels, Belgium. 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 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 25, 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.A. Complainant
4.A.1 Annex G 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 one of the world’s leading producers 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 EUR3.08 billion. Those products comprised crystal jewellery stones and crystalline semi-finished goods for the fashion, home accessories, collectibles and lighting industries.
4.A.2 The SWAROVSKI trade mark
Complainant says that it has registered the SWAROVSKI mark globally, and in Annex B to the Complaint lists a number of Community Trade Marks (CTMs) and International Registrations for the word marks SWAROVSKI, CRYATALLIZED SWAROVSKI ELEMENTS, and CRYSTALLIZED and the Swan device mark. The earliest of the International Registrations for the word mark SWAROVSKI dates from 1965 and designates, inter alia, Belgium, which is Respondent’s domicile. In addition, particulars of the following registrations, all of which apply in Belgium, are set out in the body of the Complaint and exhibited to it: Category Registration Number Mark Classes of goods and Services Dates of Application and Registration
CTM
007462922
SWAROVSKI
1,3-13,15-17,19-23 27-34,36-40 and 42-45
December 4, 2008
July 7, 2009
CTM
003895091
same
2-3,6,8-9,11,16,18-21 24-25,28,34-35 and 41
June 22, 2004 August 23, 2005
CTM
006865794
SWAROVSKI & Swan Device
9,11,14,18,21 and 25-26
April 16, 2008 February 5, 2009
4.A.3 The SWAROVSKI Domain Names
Complainant registered the domain names on January 1, 1996 and on April 16, 1998, both of which resolve to Complainant’s website at “www.”. Printouts from that website are exhibited to the Complaint.
4.A.4 The international reputation of the SWAROVSKI mark
Also exhibited to the Complaint are press clippings illustrating, Complainant says, both the extent of its advertising and promoting of products sold under the SWAROVSKI trade mark and also the international recognition of that mark and the goodwill attaching to it. The press clippings include Belgian publications both ante dating and post dating registration of the disputed domain name on February 25, 2014. 4.B Respondent
4.B.1 In the absence of a Response, all that is known about Respondent is contained in the Complaint, Annexes A and K to the Complaint and the information provided by the Registrar.
4.B.2 The disputed domain name was registered on February 25, 2014: Annex A.
4.B.3 The disputed domain name resolves to a website operating an online shop in the English language that offers for sale various purported Swarovski products, including “Necklaces”, “Earrings” and “ Bracelets”. Pages from the website are at Annex K to the Complaint. The “Company” section of the website states:
“We offer you outstanding value by bringing you the greatest selection of fine jewellery 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”.
The website uses the SWAROVSKI trade mark throughout. Although the Complaint says that the website also uses the SWAROVSKI Swan logo, the Panel has not been able to find that from the pages at Annex K or from itself visiting the website. The website also carries what it terms “Legal Disclaimers”. However, those disclaimers are in standard language limiting the seller’s liability to customers. They do not disassociate Respondent from Complainant. 5. Parties’ Contentions 5.A. Complainant
Identical or Confusingly Similar
5.A.1 By reference to the facts summarised in paragraphs 4.A.2 to 4.A.4 above, Complainant asserts that it has rights in the SWAROVSKI mark.
5.A.2 Complainant further asserts that the disputed domain name is confusingly similar to its SAWROVSKI mark on the following grounds. First, the disputed domain name incorporates the SWAROVSKI trade mark in its entirety, which has been held in numerous decisions under the Policy to amount to confusingly similarity. In that respect, Complainant cites Swarovski Aktiengesellschaft v. Gsgjxbkxj Oijvioxub,WIPO Case No. D2013-1708 , Swarovski Aktiengesellschaft v. Brian Martin Person,WIPO Case No. D2013-1767 and Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1766 , all decisions where the disputed domain names were all held to be confusingly similar to the SWAROVSKI trade mark.
5.A.3 Second, addition as suffixes of the descriptive words “store” and “sale” does not lessen the confusing similarity of the disputed domain name with the SAWROVSKI mark. Complainant cites Swarovski Aktiengesellschaft v. zhangwei,WIPO Case No. D2013-2184, Swarovski Aktiengesellschaft v. Li XiaoLi,WIPO Case No. D2012-1401, Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858 and Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1824in support of that assertion, earlier decisions under the Policy where the domain names , , and were held to be confusingly similar to its SWAROVSKI mark.
5.A.4 Third, nor does the addition of a hyphen between the words “store” and “sale” avoid a finding of confusing similarity. In that respect, in addition to the above cited decision in Swarovski Aktiengesellschaft v. , supra, Complainant also cites the decision in Swarovski Aktiengesellschaft v. , WIPO Case No. D2013-1043 where the presence of hyphens in the domain name was held by the panel to be “irrelevant for the purpose of differentiating Complainant’s mark from the disputed domain name”.
Rights or Legitimate Interests
5.A.5 Complainant puts it’s case under this requirement of the Policy paragraph 4(a) (ii) in the following way. First, Respondent has no connection or affiliation with Complainant and has not received any license or consent, expressed or implied, to use the SWAROVSKI marks in a domain name or in any other manner.
5.A.6 Second, Respondent has never been known by the disputed domain name: Policy paragraph 4(c) (ii). Cited in support of this and the previous paragraph as demonstrating a lack of rights or legitimate interests in a domain name is the decision in Swarovski Aktiengesellschaft v. Xue Yan Yang, WIPO Case No. D2012-1041 .
5.A.7 Third, choosing to incorporate a well-known trade mark, like the SWAROVSKI marks in this case, cannot be considered a bona fide offer under Policy paragraph 4(c)(i). See, the decision in Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709 .
5.A.8 Fourth, Respondent’s use of the disputed domain name to resolve to the website described in paragraph 4.B.3 above, which advertises purported Swarovski products, is intended to misdirect Internet traffic to that site in the mistaken belief that it is a legitimate website authorised by Complainant. Such use, Complainant says, is not a bona fide use of the disputed domain name: Policy paragraph 4(c)(i). Nor is it a legitimate noncommercial or fair use of the disputed domain name under Policy paragraph 4(c)(iii). It is a commercial use intended misleadingly to divert consumers and to tarnish the SWAROVSKI trade mark. In support of these assertions, Complainant cites decisions under the Policy where, on similar facts to those in this administrative proceeding, Respondent was held not to have rights to or legitimate interests in the following disputed domain names, Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyP, WIPO Case No. D2013-0643 and Swarovski Aktiengesellschaft v. N/A, delu xei, WIPO Case No. D2013-0708 .
Registered and Used in Bad Faith
5.A.9 As to registration in bad faith, Complainant’s case is that, given the well-known status of the SWAROVSKI mark in Belgium and worldwide, it is inconceivable that Respondent was unaware of Complainant’s rights in that mark when registering the disputed domain name. In the circumstances, the assumption must be that Respondent did so to cash in on the fame of that mark. See, Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779 and Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-2241 . Further, the fact that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark is also indicative of registration in bad faith: Swarovski Aktiengesellschaft v Yang Liu,WIPO Case No. D2013-0819 .
5.A.10 Furthermore, Complainant asserts that Respondent would hardly advertise products purporting to be those of Complainant if it was unaware of Complainant’s reputation in the SWAROVSKI mark: Swarovski Aktiengesellschaft v Transure Enterprise Ltd.,WIPO Case No. D2009-1638 . Indeed, citing the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Cases No. D2000-0003 , given the worldwide reputation of the SWAROVSKI mark, Complainant says that the only possible interpretation of Respondent’s registration of the disputed domain name is bad faith.
5.A.11 Additionally, coupling descriptive words with Complainant’s SWAROVSKI mark - as in this case with the descriptive words “store” and “sale” - has been held in earlier cases to constitute bad faith. Complainant cites in this respect, Swarovski Aktiengesellschaft v. Michael Edwards, supra and Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170 .
5.A.12 As to use in bad faith, Complainant points to Respondent’s use on its website of the well-known and established SWAROVSKI mark so as to mislead Internet users into believing that Respondent is, in some way or another, connected to, sponsored by or affiliated with Complainant and it’s business. Complainant cites in that respect decisions on similar facts where the disputed domain names, Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 , Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 and Swarovski Aktiengesellschaft v. Luca Vogler,WIPO Case No. D2013-0664 were held to be being used in bad faith under Policy paragraph 4(b)(iv). Complainant also cites Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170 and Swarovski Aktiengesellschaftv. Hopper Dirt, WIPO Case No. D2011-1525, where use of the domain names and on products such as “necklaces”, “earrings” and “bracelets” advertised as Swarovski products has been held to be bad faith use under paragraph 4(b)(iv) of the Policy.
Complainant’s attempt to resolve this Dispute informally
5.A.13 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 a third-party 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 in paragraph 3 above, Respondent has chosen not to file 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 the Respondent’s rights or legitimate interests in the disputed domain name in issue.
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 a 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.
Identical or Confusingly Similar
6.5 On the basis of paragraphs 4.A.2 to 4.A.4 above, clearly Complainant has rights in the SWAROVSKI marks.
6.6 Further, the disputed domain name is, equally clearly, confusingly similar to Complainant’s SWAROVSKI trade mark. Neither the addition of the descriptive suffixes “store” and “sale”, nor the use of a hyphen between those two words avoids that finding of confusing similarity.
6.7 Complainant’s case summarised in paragraphs 5.A.2 to 5.A.4 is well made out and, accordingly the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 It is plain on the facts summarised in paragraphs 4.B.3 and 5.A.5 to 5.A.8, that Respondent cannot demonstrate that any of the circumstances set out in Policy paragraph 4(c)(i) to (iii) apply in this case. Again, Complainant’s case is well made out and, consequently, the Complaint succeeds under paragraph 4(a)(ii) of the Policy.
Registered and Used in a Bad Faith.
6.9 Similarly, from the facts summarised in and the supporting decisions cited in paragraphs 5.A.9 to 5.A.12 above, the Panel has no hesitation in finding that the disputed domain name was registered and is being used in bad faith. Accordingly, the Complaint also satisfies the requirement of paragraph 4(a)(iii) of the Policy. 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
Full & Egal Universal Law Academy