WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Whois ID Theft Protection
Case No. D2007-0225
1. The Parties
The Complainant is Swarovski Aktiengesellschaft, Triesen, Liechtenstein, represented by Arnold & Porter, United States of America.
The Respondent is Whois ID Theft Protection, West Bay, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <swarovsky.com>is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2007. On February 19, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On February 20, 2007, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2007.
The Center appointed Peter G. Nitter as the sole panelist in this matter on April 10, 2007. 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 is a corporation organized under the laws of Liechtenstein who manufactures and sells cut crystal.
Complainant has registered the SWAROVSKI trademark with the United States Patent and Trademark Office for various classes through various registrations (Registration No. 1739479 on December 15 1992, Registration No. 1785590 August 3, 1993, Registration No. 2402230 on November 7, 2000, and Registration No. 934915 on May 30, 1972), SWAROVSKI and Swan Design (Registration No. 1669532). Complainant has also registered two marks incorporating the word “Swarovski” including SWAROVSKI IMPERIAL DIAMOND (Registration No. 2752863 on August 19, 2003) and DANIEL SWAROVSKI (Registration No. 2229398 on March 2, 19992).
Further Complainant has registered the domain names <swarovski.com> and <swarovski.net>.
Respondent has registered the disputed domain name <swarovsky.com>.
5. Parties’ Contentions
Complainant asserts that the contested domain name is confusingly similar to the SWAROVSKI trademark.
According to Complainant <swarovsky.com> is an obvious misspelling of the SWAROVSKI marks, the only difference being that the “i” is changed to a “y”, and is an example of typosquatting.
Further the phonetic similarity between the SWAROVSKI mark and the disputed domain name further heightens the confusing similarity between the disputed domain name and Complainant’s trademark.
Complainant also holds that Respondent has no rights or legitimate interests in the contested domain name.
According to Complainant’s assertions Respondent has no connection or affiliation with Complainant and has not received any license to use the SWAROVSKI mark.
Further Complainant holds that Respondent has never been known by the disputed domain name.
Complainant asserts that Respondent uses the disputed domain name to misdirect Internet traffic to Respondent’s own advertising website and such a use does not demonstrate a bona fide offering of goods and services or a legitimate interest.
Complainant further asserts that the disputed domain name is registered and being used in bad faith.
According to Complainant it is inconceivable that Respondent was unaware of Complainant’s rights to the SWAROVSKI trademark. This especially since Respondent’s website provides links to websites purporting to sell Swarovski crystal.
Complainant asserts that Respondent’s frequent practice of registering domain names that include other well-known trademarks or obvious misspellings of such marks also demonstrate bad faith registration.
Further according to Complainant Respondent is using the disputed domain name in bad faith by using typosquatting to misdirect Internet traffic.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue is not identical to Complainant’s trademark, and the question is therefore whether there is a confusing similarity between the disputed domain name and the Complainant’s trademark.
Previous Panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Thus, the first issue only concerns the part of the disputed domain name which consists of “swarovsky”.
The only difference between the contested domain name and the SWAROVSKI mark is that the letter “i” in SWAROVSKI is replaced by a “y”. The Panel considers this difference as minor.
The Panel finds that the domain name and the trademark both visually and phonetically will appear as similar and that this leads the domain name at issue to be confusingly similar to Complainant’s trade mark.
B. Rights or Legitimate Interests
From the evidence presented to it the Panel finds that Respondent has not been granted any license or right to use the mark in any manner by the Complainant and that Respondent is not commonly known by the trademark, see paragraph 4(c)(ii) of the Policy.
The Respondent has not filed any Response arguing that it has rights to or legitimate interests in the disputed domain name. None of the Complainant’s assertions have thus been contested by the Respondent.
In the event that any such connection or affiliation existed, it would have been easy for the Respondent to substantiate this, while it is generally difficult for a Complainant to prove the negative; that Respondent has no such rights. For this reason, previous decisions under the UDRP have, in the event of a Respondent’s default, found it sufficient for Complainant to make a prima facie showing of its assertion.
In accordance with the above, there is no evidence allowing the Panel to conclude that the circumstances listed in paragraph 4(c) of the Policy apply to the Respondent’s situation.
Complainant has provided evidence that the Respondent has directed the domain name at issue to an Internet website offering links to other commercial websites. The Panel finds it unlikely that Respondent would have any rights or legitimate interests in the use of a domain name that is confusingly similar to the SWAROVSKI trademark in connection with offering such a service.
The Complainant has thus made a prima facie showing of its assertion, and has, in the absence of a rebuttal, established that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Based on previous UDRP decisions regarding domain name registrations made by Respondent the Panel finds that Respondent has appears to have engaged in a pattern of registering domain names that infringe trademarks of third parties.
According to UDRP practice such a pattern of registration is evidence of bad faith registration. See e.g. Doctor. Ing.h.c. F. Porsche AG v. Stonybrook Investment Limited, WIPO Case No. D2001-1095.
On the basis of the evidence presented to it, the Panel further finds that the website affiliated with the disputed domain name provides links to websites that purport to sell SWAROVSKI crystal, as well as a link to Complainant’s own website.
Based on the above the Panel finds it highly unlikely that Respondent was not familiar with the trademark SWAROVSKI at the time of registration.
The Panel therefore finds that the disputed domain name is registered in bad faith.
Complainant has asserted that Respondent is using the confusing similarity between the SWAROVSKI trademark and the disputed domain name to attract Internet users to Respondent’s website for commercial gain.
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.
Based on the evidence presented by Complainant the Panel finds that Respondent has registered and used the disputed domain name for the purpose of intentionally attempting to attract users to its website for financial gain by creating a likelihood of confusion with the Complainant’s mark.
Thus, the Panel finds that Respondent has used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <swarovsky.com> be transferred to the Complainant.
Peter G. Nitter
Dated: April 24, 2007