The Complainant is Swarovski Aktiengesellschaft of Liechtenstein, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Asociatia Touched Romania of Bucarest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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.
On April 11, 2013 the Complainant forwarded to the Center an informal communication email received from the Respondent. On April 11, 2013 the Center sent a possible settlement communication to the Parties. On April 16, 2013 the Complainant sent an email confirming its intention to not suspend the proceedings.
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 April 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any formal response within the Response due date. Accordingly, the Center notified the commencement of panel appointment process to Respondent on May 16, 2013.
The Center appointed Edoardo Fano as the sole panelist in this matter on May 23, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is Swarovski AG, one of the world’s leading producer of cut crystal, genuine gemstones and created stones with presence in more than 120 countries and owning many trademark registrations for SWAROVSKI all over the world. Among the trademark registrations valid in Romania where the Respondent is located there are:
- International Trademark Registration No. 303.389 for SWAROVSKI, registered in 1965;
- Community Trademark Registration No. 007462922 for SWAROVSKI, registered in 2009.
The Complainant provided evidence in support of the above.
The disputed domain name was registered on December 2, 2010. The disputed domain name points to a webpage with advertising for the sale of various purported original Swarovski products, not authorised or approved by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark SWAROVSKI, being a combination of the generic words “bijuterii” (meaning “jewelry” in Romanian) and “cristale” (meaning “crystal” in Romanian) with the Complainant’s trademark SWAROVSKI.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to reserve the disputed domain name or to register and/or use its trademark within the disputed domain name and it is not commonly known by the disputed domain name. The use of the disputed domain name to advertise purported Swarovski products and to misdirect Internet traffic to the corresponding website is contrary to a bona fide offering of goods or services.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further asserts that its trademark SWAROVSKI enjoys worldwide fame and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights, especially considering the offer to sell a variety of the Complainant’s purported original products in the relevant website.
Moreover, the Complainant asserts that the Respondent is using the disputed domain name for a website in which are sold purported Complainant's original products, without doing anything to identify itself as being independent from the Complainant and therefore attempting to attract consumers for commercial gain by creating “initial interest confusion”.
On November 30, 2011 the Complainant sent a “cease and desist” letter to the Respondent that remained unanswered. B. Respondent
On April 11, 2013 the Complainant forwarded to the Center an informal communication email received from one of the email addresses linked to the Respondent, which stated:
“Good afternoon. We are sorry for the situation, but I did not know. As a result, in the shortest possible time we change our domain name to avoid any problem for you and for us. Thank you for understanding. Kind regards. Cristea Marian”
The Respondent has made no further formal substantive reply to the Complainant’s contentions and has not filed a formal Response within the relevant due date.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; and Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark SWAROVSKI both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark SWAROVSKI.
Regarding the addition of the generic words “bijuterii” and “cristale”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the words “bijuterii” and “cristale” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a country code top-level domain suffix, in this case “.ro”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Should the products sold on the website at the disputed domain name be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the majority view in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the sites’ accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the present case, the Panel is of the opinion that while someone may be legally entitled to offer for sale/resale a trademark owner’s genuine trademarked products, that does not necessarily extend to the right to do so through a domain name that is virtually identical to that trademark owner’s trademark.
In this Panel’s view, when there is no authorisation, and where the respondent has no relevant trade mark rights, it is very difficult to demonstrate that Respondent has no legitimate interests. Furthermore, the Respondent is not accurately and prominently disclosing its relationship with the Complainant in this case (see paragraph 2.3 of the WIPO Overview 2.0).
The Panel therefore finds that paragraph 4(a)(ii) of the Policy, has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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:
(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 that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] website or location or of a product or service on [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark SWAROVSKI in the field of jewelry is clearly established and the Panel finds that the Respondent clearly knew that the disputed domain name was confusingly similar to the Complainant’s trademark. This is also confirmed by the fact that the content of the relevant website consists of advertising for the sale of various purported Complainant’s original products.
In fact, the disputed domain name was also used in bad faith since at the relevant website, the Respondent was offering various purported Complainant’s original products knowingly taking advantage from the initial interest confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all 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.
Edoardo Fano
Sole Panelist
Date: June 5, 2013
Full & Egal Universal Law Academy