The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is putian coco kiss of Putian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2012. On January 17, 2012, the Center transmitted by email to Web Commerce Communications Limited dba WebN a request for registrar verification in connection with the disputed domain name. On January 17, 2012, Web Commerce Communications Limited dba WebN 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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2012.
The Center appointed Ian Blackshaw as the sole panelist in this matter on February 16, 2012. 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 to 42 countries; and a presence in more than 120 countries. In 2010, The Complainant’s products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. In 2010, the Complainant’s approximate worldwide revenue was EURO 2.66 billion.
The Complainant has registered the SWAROVSKI Marks globally in a variety of Classes and the Panel has been provided with copies of a selection of these registrations, including ones for China and Australia.
The Complainant uses the SWAROVSKI Marks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.
The Complainant spends substantial time, effort and money on advertising and promoting the SWAROVSKI Marks worldwide, including China and Australia. As a result, the Complainant claims that the SWAROVSKI Marks have become famous around the world, including China and Australia. The Panel has been provided with copies of some examples of these advertisements and promotions.
The Complainant has developed an enormous amount of goodwill in the SWAROVSKI Marks internationally, and the public has come to associate the SWAROVSKI Marks exclusively with high quality items marketed by the Complainant. Again, evidence in support of these claims has been provided to the Panel.
The Complainant has also registered several domain names, including and which point to the Complainant’s official website, located at “www.”. This website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine products of the Complainant. Corresponding evidence has been provided to the Panel.
The Respondent registered on March 3, 2011 the disputed domain name, which previously displayed an online shop that offered purported products of the Complainant for sale; a copy of the previous webpage has been provided to the Panel.
Steps were taken to inform the Internet Service Provider (ISP) hosting that website that the content on the site infringed the SWAROVSKI Marks and, following the Complainant’s report of this abuse, the website was removed; copies of the correspondence with the ISP have also been provided to the Panel. Following the removal of the website displaying the online shop, the disputed domain name now resolves to a page where there is no website; again, a copy of the current webpage has also been provided to the Panel. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions: i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The disputed domain name is confusingly similar to the SWAROVSKI Marks. UDRP administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark. See, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 (“Crichton”).
The Respondent has used the SWAROVSKI Marks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Complainant’s registered domain names.
Misdirecting Internet users to the disputed domain name takes advantage of the behavior pattern identified in Crichton for commercial gain.
This type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI Marks. See Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166; and W. & G. Foyle Limited v. Robert G. Foyle, WIPO Case No. D2000-1543. The doctrine of ‘initial interest confusion’ has been applied in numerous UDRP cases and it is also acknowledged in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Once consumers arrive at the disputed domain name they will obviously see that no content is available on the site. However, the fact that these consumers were initially attracted to the disputed domain name by the use of the SWAROVSKI Marks in the disputed domain name is enough to contravene paragraph 4(a)(i) of the Policy.
Although the disputed domain name currently leads to a page with no website it is important to note that the Respondent was previously using the disputed domain name to operate an online shop and could at any time in the future upload another infringing website at the disputed domain name.
It has been recognized by administrative panels that the content of a website at a domain name is irrelevant in the finding of confusing similarity and the real test for confusing similarity is whether a comparison between the trademark and the domain name reveals that there is a likelihood of confusion. See, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Ply, Ltd., WIPO Case No. D2001-0110 (“The incorporation of a Complainant's well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark”) and Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.
The addition of the term “crystal” as a suffix to the SWAROVSKI Marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s Marks. The Complainant manufactures crystal jewelry and the use of the word “crystal” along with the SWAROVSKI Marks is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity with the SWAROVSKI Marks. See, e.g., Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988 (“The prefixes and suffixes incorporated in the disputed domain names are descriptive words which are non distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion”); See also Vibram S.p.A. v. Oscar Lee,WIPO Case No. D2010-1051; and F. Hoffmann-La Roche AG v. MFS Holdings,WIPO Case No. D2010-0307.
It is clearly established that the addition of a generic word like “crystal” to a trademark (and in particular for a trademark such as SWAROVSKI) is not enough of a differentiation from that trademark to avoid a finding of confusing similarity. See Swarovski Aktiengesellschaft v. liu ji,WIPO Case No. D2011-0353 (“the use of “crystal” with Complainant’s SWAROVSKI trademark as featured in the disputed domain name has a descriptive function given that crystal is provided under Complainant’s SWAROVSKI trademark. Prior cases have held that the addition of a descriptive term to a distinctive trademark such as SWAROVSKI does not create a domain name which is distinguishable from the trademark; Swarovski Aktiengesellschaft v. wutianhao,WIPO Case No. D2010-0503 (“the disputed domain name consists of “swarovskicrystalshop”, which can easily be read as “swarovski”, “crystal” and “shop”. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is more likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant's trademark”); Swarovski Aktiengesellschaft v. Marzena Marzena,WIPO Case No. D2011-0980 (“The disputed domain name is formed by the Complainant’s SWAROVSKI trademark and the generic term “outlets” which is not sufficient to avoid confusion with Complainant’s trademark. The use of the word “outlets” along with the SWAROVSKI trademark creates the impression that the disputed domain name contains information and products from the Complainant”); Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou,WIPO Case No. D2010-2022 (“The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The English words “crystal” and “jewelry” are indistinctive. The fact that crystal and jewelry are two important types of goods being manufactured and sold by the Complainant and marketed under their mark SWAROVSKI … will make actual confusion among consumers even more likely”).
Furthermore, several UDRP Panelists have held that the use of a hyphen in the disputed domain name is insignificant and does little to avoid confusing similarity with the trademark. Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017 (“Inclusion of a hyphen in the Disputed Domain Name is irrelevant”). See also Di-El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk,WIPO Case No. D2007-0961 (“the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”).
UDRP administrative panels have determined that when a domain name is confusingly similar to a complainant’s mark with the exception of containing an additional country code designation (ccTLD) such addition does not reduce the confusing similarity to the complainant’s mark and therefore infringes on the claimant’s mark. See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004 (“The Complainant contends that the disputed domain name reproduces in the entirety the Complainant’s trademark AUCHAN and the mere addition of the ccTLD “.cc” is not a distinguishing feature”); Jagex Limited v. Mr. Danial Cox,WIPO Case No. 2007PL1; Mozilla Foundation and Mozilla Corporation v. Limpkin Walker,WIPO Case No. DME2008-0007 (“the addition of the ccTLD “.me” is without legal significance from the standpoint of comparing the Domain Name to the FIREFOX Mark because use of a ccTLD (or gTLD) is required of domain name registrants, “.me” is one of only a few such ccTLD’s, and “.me” does not serve to identify a specific enterprise as a source of goods or services”); The Coca-Cola Company v. Metro Media,WIPO Case No. DME2008-0005; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; M Inc. v. William Scully Power and MapQuest Australia,WIPO Case No. DAU2006-0016; Ferrero S.p.A. v. Jacques Stade,WIPO Case No. DBZ2003-0002. Therefore, the addition of the “.cc” ccTLD does not differentiate the Respondent’s website in any significant way from the SWAROVSKI Marks and, therefore, the disputed domain name is confusingly similar to the Claimant’s marks. ii. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
The Complainant’s rights in the SWAROVSKI Marks have been recognized by several UDRP administrative panels. In Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 the panel stated that the “Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices... Complainant's trademark rights in SWAROVSKI precede this domain name registration”.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI Marks in a domain name or in any other manner. Further, it was held in NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 that “re-directing Internet users, who as a result of inadvertently and slightly misspelling the domain name of the Complainant, here from either “” or “” to the contested domain name “”, away from the Complainant’s web site to a commercial web site of its direct competitor clearly does not constitute legitimate use”.
The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI Marks or the name “Swarovski”. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“no legitimate interest can be claimed by a respondent when there is no evidence that a respondent is commonly known by the domain name”).
The misappropriation of the disputed domain name was no accident. Where a mark is famous and well-known, as with the SWAROVSKI Marks, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The use of the SWAROVSKI Marks in the disputed domain name is clearly for the purpose of misleading consumers into believing that the Respondent and the disputed domain name are associated with or approved by the Complainant. The Respondent does not have a legitimate interest in the SWAROVSKI Marks. iii. The domain name was registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved. (1) The Disputed Domain Name has been Registered in Bad Faith
The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Marks. It is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks. In addition, it was clearly established in Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981 that “The fact that the disputed domain name consists of the Complainant’s trademark added with two related generic words, further indicates that the Respondent registered specifically with the Complainant's trademark in mind”.
The selection of the disputed domain name, which wholly incorporates the SWAROVSKI Mark, cannot be a coincidence, “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark.
Registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith registration. See, e.g., Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (“the registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark generally constitutes bad faith registration”).
Previous UDRP administrative panels have found that coupling a descriptive word with the complainant's mark or even a word similar to the complainant's mark in a domain name constitutes bad faith registration on the part of the respondent. See, e.g.,Chocoladefabriken Lindt & Sprüngli AG v. Lenawoo, WIPO Case No. D2009-0382 (“the respondent was well aware of the complainant’s trademarks, evidenced by the fact that: it combined the descriptive word “chocolate” with a word confusingly similar to the complainant’s mark GHIRARDELLT”).
Given the fame of the SWAROVSKI Marks, there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith. See Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 (“The Complainant has developed a reputation for the trademark SWAROVSKI in the crystal jewellery stones and crystalline semi-finished goods industry since 1987 and the Complainant’s trademarked products are sold worldwide. Moreover, the Respondent’s sale of Swarovski branded products very strongly suggests that the Respondent knew of the trademark SWAROVSKI prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.”). (2) The Disputed Domain Name is being Used in Bad Faith
The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well-known in the USA and worldwide; and as already discussed, the disputed domain name is confusingly similar to the registered trademarks of the Complainant.
Prior to the Complainant directing the disputed domain name to a page with no website the Respondent operated an online shop selling goods that claimed to be the Complainant’s goods at the infringing Website. The Respondent’s prior use of the disputed domain name clearly demonstrates the Respondent’s bad faith.
The Respondent is not currently using the website to operate an online shop. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was clearly recognized that “The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The Respondent does not have to be actively using the disputed domain name. This coupled with the fact that the Respondent has used the Mark SWAROVSKI in conjunction with the descriptive word “outlet” is a further indication of the Respondent’s bad faith use of the disputed domain name.
In Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877, the panel found bad faith use to exist where the respondent did not actively use a domain name because “Complainant has shown that it has a mark that is widely known and widely registered throughout the world, including in Peru where Respondent appears to be located. The combination of “power” and “alstom” seems to be uniquely connected with Complainant... The domain name has not been used for any legitimate reason even though many years have passed since it was first registered. Under these circumstances, it appears more likely than not that Respondent's passive holding of the domain name constitutes bad faith use of the domain name in violation of the Policy”.
The same set of factors exists in relation to the disputed domain name and, therefore, the Respondent’s use of the disputed domain name constitutes bad faith use.
Furthermore, it is unlikely that the Respondent can prove good faith use of the disputed domain name because it is difficult to conceive that the use of it would not infringe the SWAROVSKI Marks. See, Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878 (“it is not possible to imagine any active use of the disputed domain names by the registrant that would not be illegitimate, unless the registrant receives permission from a trademark holder”). B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(ii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the Respondents failed to file a Response, the Panels’ decisions were based upon the Complainants’ assertions and evidence, as well as inferences drawn from the Respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, a Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a Complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known and well-established registered trademark SWAROVSKI. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its services marketed under its well-known and well-established registered trademark SWAROVSKI.
The addition in the disputed domain name to the word SWAROVSKI of the word ‘crystal’, being descriptive, does not provide any distinguishing feature for trademark purposes. Indeed, it only adds to the confusion as the Complainant is in the retail business of selling, inter alia, cut crystal. See Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v.Vineet Singh,WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin … for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
Likewise, the addition of a hyphen in the disputed domain name between the words “swarovski” and “crystal” is immaterial and insignificant, and does not provide any distinguishing element for trademark purposes.
The addition of a country code top level domain name (ccTLD), “.cc”, to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
Its use is purely for Internet registration purposes.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademark SVAROVSKI, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior commercial use of the same. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademark SWAROVSKI. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademark SWAROVSKI inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services (see further on this point below). Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable registered trademark SWAROVSKI and also the valuable goodwill that the Complainant has established in this trademark through prior commercial use, advertising and promotion of the same, sufficient evidence of which has been provided to the Panel as mentioned above, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the record in the Case File, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainants’ valuable goodwill established in its well-known and well-established registered trademark SWAROVSKI.
By registering and using the disputed domain name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record in the Case File, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record of the Case File, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known and well-established registered trademark SWAROVSKI, by chance, but on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the retail jewelry industry. Indeed, this reasonable inference is strengthened by the fact that the disputed domain name also incorporates the descriptor “crystal”. This, in the view of the Panel, is a further indication of the Respondent’s intention to mislead consumers and users of the Internet and, as such, constitutes bad faith on the part of the Respondent.
Also, the Panel agrees with the Complainant’s contentions that the Respondent’s use of the disputed domain name by redirecting Internet users interested in the Complainant’s goods to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.Cartwright,WIPO Case No. D2007-0267.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as those advanced by the Complainant in its contentions, as set out above and supported by the previous UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 domain name be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: February 18, 2012
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