Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is TING ALLEN of Dong Guan, Guan Dong, China / WhoisGuard, Inc. of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 22, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 25, 2014
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 Respondent of the Complaint, and the proceedings commenced on September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2014.
The Center appointed Lynda Zadra-Symes as the sole panelist in this matter on October 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
Complainant claims to be one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution in 42 countries and presence in more than 120 countries. In 2012, Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. Complainant’s approximate worldwide revenue in 2012 was EUR 3.08 billion.
Complainant is the owner of several trademark registrations for the mark SWAROVSKI, including trademarks applicable in Panama, the United Kingdom of Great Britain and Northern Ireland (“UK”), and community trademark registrations applicable in the UK, for use in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. The marks include Panama trademark registration No. 16082601, registered on April 20, 2007, UK trademark registration No. 1344956, registered on January 29, 1990, UK trademark registration No. 1344958, registered on April 10, 1990, UK trademark registration No. 1344954, registered on February 19, 1990, UK trademark registration No. 1344955, registered on December 1, 1989, community trademark registration No. 007462922, registered on July 21, 2009, community trademark registration No. 003895091, registered on August 23, 2005, and community trademark registration No. 006865794, registered on February 5, 2009.
Respondent registered the disputed domain name on March 21, 2014.
Complainant alleges that the disputed domain name is being used to operate an online shop that offers for sale various purportedly genuine Swarovski products and confuses consumers into believing that the website associated with the disputed domain name is an official Swarovski website and/or that Respondent is affiliated with or authorized to sell products by Swarovski, particularly to consumers located in the UK. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complain to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademark SWAROVSKI (and related marks). The record shows Complainant has owned trademark rights in SWAROVSKI since at least 1990, more than 24 years before the disputed domain name was registered on March 21, 2014.
The disputed domain name incorporates the SWAROVSKI mark in its entirety with the addition of the word “uk”. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC,WIPO Case No. D2009-0227. The addition of “uk” does not add any distinguishing element to the disputed domain name. The alteration of the SWAROVSKI mark to include the use of a country identification or geographical indicator, such as UK, creates a false and misleading impression to consumers that the website is authorized to sell Swarovski products in the UK. See Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi,WIPO Case No. D2010-2057; see also Swarovski Aktiengesellschaft v. Bingshu Wu,WIPO Case No. D2010-1734. Furthermore, the addition of the top level domain “.biz” is also non-distinctive because it is required for the registration of the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the SWAROVSKI trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Respondent is using to operate an online shop that offers various purportedly genuine Swarovski products. Respondent has used the SWAROVSKI marks without authorization throughout the website and has not disclosed to users that is not authorized to sell Swarovski products, and that Swarovski does not guarantee the authenticity or quality of the products that are being sold on the website. It is clear that Respondent is attempting to create the impression that the website at is an authorized Swarovski website.
Complainant claims that it did not authorize the use of the SWAROVSKI mark to Respondent, and that Respondent used the disputed domain name to operate an online shop that sells purportedly genuine Swarovski products. The Panel is satisfied that there is no indication that Respondent was commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
Respondent has filed no response. There have been no other communications from Respondent in connection with this case. Without a response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the disputed domain name. The Panel also finds that there is no evidence that Respondent is engaged in a bona fide offering of goods or services, that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
Thus, the Panel finds that Complainant has successfully presented a prima facie case, which Respondent has not rebutted, that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The evidence submitted by Complainant sufficiently shows that the SWAROVSKI trademark is well-known in Panama, the UK, and worldwide (as also found by the panelists in e.g., Swarovski Aktiengesellschaft v. huang dougong,WIPO Case No. D2013-1605; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning,WIPO Case No. D2012-0976). The record also shows that Complainant owns trademark rights in SWAROVSKI that pre-date the registration of the disputed domain name, which contains Complainant’s trademark in its entirety. Given the international recognition of Complainant’s trademarks, the Panel finds that Respondent was likely aware of or should have known of Complainant’s rights in the trademark SWAROVSKI when registering the disputed domain name. The registration of the disputed domain name, which incorporates Complainant’s well-known mark, by Respondent, who has no legitimate connection or relationship with the mark or the owner of the mark and possesses awareness of Complainant’s trademark rights, in the circumstances constitutes bad faith at the moment of registration (e.g., Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte,WIPO Case No. D2010-0456; Swarovski Aktiengesellschaft v. huang dougong,WIPO Case No. D2013‑1605; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning,WIPO Case No. D2012-0976).
Complainant has also submitted evidence, by means of printouts of the website to which the disputed domain name resolves, that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. In particular, Respondent is using to offer for sale various purportedly genuine Swarovski products. The use of Complainant’s mark in the disputed domain name by Respondent for the sale of products, that are similar or identical to Complainant’s products, is consistent with the finding of bad faith use under the Policy. See Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170.
Therefore, the Panel finds the disputed domain name was both registered and used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Lynda Zadra-Symes
Sole Panelist
Dated: November 17, 2014
Full & Egal Universal Law Academy