The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is www.SWAROVSKI-SHOP.me of Perth, Western Australia, Australia. 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 March 11, 2013. On March 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2013, 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 satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.
The Center appointed Peter Burgstaller as the sole panelist in this matter on April 12, 2013. 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 renowned worldwide for its crystal ware, jewelry and other luxury items such as crystalline semi-finished goods for the fashion, home accessories and collectibles as well as for the lighting industry. The Complainant’s success and the reputation and attractive power of its SWAROVSKI trademark have made it a prime target for cybersquatters. It has been the subject of over 130 successful complaints under the Policy, some of which have been cited by the Complainant in the Complaint.
The Complainant has registered its SWAROVSKI trademarks globally also in Australia and Montenegro (see e.g. Annexes B and C) and is the owner of several domain names, containing the core trademark SWAROVSKI (Annexes H and I).
The Respondent has registered the disputed domain name on September 11, 2012 and connects a web shop in the English language that offers for sale various purported products of the Complainant with the disputed domain name (Annex A and J). 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the SWAROVSKI trademark of the Complainant. The addition of the term “shop” as a suffix to the trademark SWAROVSKI does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Respondent is using the disputed domain name to confuse and mislead consumers into believing that the website displayed at the disputed domain name is an official Complainant’s website and/or the Respondent is affiliated with or is authorized to sell products by the Complainant. In fact, the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name with the knowledge of the famous SWAROVSKI trademark and the disputed domain name is also being used in bad faith by the Respondent since the purpose of the use of the disputed domain name is to obtain commercial gain by misleading consumers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 with respect to 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 disputed domain name incorporates the entirety of the Complainant’s trademark SWAROVSKI (see Annex B) together with the generic word “shop”.
The use of a trademark with a generic word (such as e.g. “shop”) does not make a domain name distinctive from the trademark. In fact it is the Panel’s conviction that in using a word like “shop”(or “outlet”) together with a famous trademark rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least “free rides” on the fame/publicity of the Complainant’s trademarks (see e.g. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511, et al; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406, ; Ryder Cup Europe LLP v. R / Andrew Seaforth,WIPO Case No. D2010-0688, ; Sanofi-aventis, AVENTISUB II Inc. v. MuruganNadar / Rajesh Singh,WIPO Case No. D2010-1959, ; Société des Produits Nestlé S.A. v. MrT LLC, WIPO Case No. D2012-1356 et al; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459 et al, Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150 or Swarovski Aktiengesellschaft v. ‘’,WIPO Case No. D2013-0335 .
It has also long been held that suffixes such as country code Top-Level Domain (ccTLD) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. However, in the present case the Respondent failed to submit a Response.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint together with the Annexes presented by the Complainant and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark SWAROVSKI in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s web site or location.
As stated in many decisions adopted under the Policy (esp. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001, ) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
To this Panel it is incontestable that the Respondent has registered the disputed domain name in bad faith because the Respondent must have been aware of the fame and distinctiveness of the trademark SWAROVSKI. The selection of the disputed domain name, which wholly incorporates the Complainant’s trademark, cannot be a coincidence – “Swarovski” is not a descriptive or generic term. When registering the disputed domain name (distinctive trademark + generic word “shop”), it is pretty unlikely that the Respondent would have chosen the disputed domain name unless seeking to create an impression of association with the Complainant’s fame and reputation.
There have also no obvious steps been taken by the Respondent to prevent the risk of confusion and there is clearly a likelihood of Internet users concluding, wrongly, that some form of association between the Complainant and the Respondent exists. Therefore, the Respondent must have known this when registering (and also when using) the disputed domain name. Moreover, the trademark SWAROVSKI has been moreover registered in Australia (where the Respondent is located) and in Montenegro (which is the country of ccTLD extension “.me”) since years/decades.
The Respondent further operates a web shop at the disputed domain name that offers a variety of “Swarovski”- products such as earrings, necklaces, bracelets or rings. The Respondent would not have advertised products purporting to be products of the Complainant if it was unaware of the Complainant’s reputation and fame (see e.g. Swarovski Aktiengesellschaft v. Transure Enterprise Ltd,WIPO Case No. D2009-1638 ). The Panel therefore finds that the Respondent uses the disputed domain name in bad faith.
Given the fame, distinctiveness and excellent reputation of the Complainant’s trademark SWAROVSKI, there is no other conceivable interpretation of the registration and use of the disputed domain name than that of bad faith. The conduct of the Respondent demonstrates awareness of the Complainant’s mark and an intention to capitalize on its fame. The only logical explanation for the Respondent’s choice of the disputed domain name is that it was for the purpose of attracting and misleading Internet users to the Respondent’s websites for its commercial advantage.
It is the Panel’s conviction therefore that the disputed domain name was registered and is being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.
Peter Burgstaller
Sole Panelist
Date: April 20, 2013
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