WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft, AG v. Paul Giles d/b/a Banjos bead house
Case No. DAU2008-0001
1. The Parties
The Complainant is Swarovski Aktiengesellschaft, AG of Triesen, Liechtenstein, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Paul Giles d/b/a Banjos bead house of Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <swarovski.com.au> is registered with Smartyhost Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2008. On January 8, 2008, the Center transmitted by email to Smartyhost Pty Ltd a request for registrar verification in connection with the domain name at issue. On January 9, 2008, Smartyhost Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on January 14, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7 2008.
The Center appointed Simon Minahan as the sole panelist in this matter on February 21, 2008. 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 incorporated in Lichtenstein and has been established since 1968, working in the worldwide distribution of precision-cut crystal glass and gem stone products manufactured by D. Swarovski & Co. in Austria since 1895 for ornamental, fashion and other applications. It holds numerous trademark registrations of the SWAROVSKI mark throughout the world including 4 separate registrations in varying classes in Australia dating back to 1968. In addition it holds and utilizes 15 domain name registrations in various jurisdictions consisting of the SWAROVSKI mark.
The Respondent has not filed any response to the complaint. On the basis of information provided by the registrar and material filed by the Complainant the Respondent is in business as “Banjos Bead House” in Australia selling, among other things, ornamental cut glass and crystal components. It has no formal relationship with the Complainant, has no authority or license to make use of the Complainant’s SWAROVSKI trademark or the “Swarovski” name and has no apparent direct interest in the same, other than by way of re-selling the Complainant’s products.
The Respondent initially used the disputed domain name to resolve to a web page associated with the “Banjo Bead House” business but, after receiving notice of the Complainant’s objection to such use in December 2007, discontinued active use of the domain name and is now simply “warehousing” it. The Respondent did not reply directly to the Complainant’s “cease and desist” demands.
5. Parties’ Contentions
The Complainant contends that by reason of long and extensive use and long-standing, numerous trademark registrations of the “Swarovski” name in connection with its business, it has a well established reputation in that connection around the world and, accordingly, it has rights in the SWAROVSKI mark in Australia and internationally.
It then contends that the disputed domain name is identical to its SWAROVSKI mark. In furtherance of this contention it recites the well-established principle that the suffix “.com.au” should be disregarded in the determination of similarity and cites National Office of Information Economy v Verisign Australia limited, LEADER Case No 02/2003 and BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001 (June 1, 2004) in support.
It further relies on the principle that a domain name which subsumes the whole of a trade mark may be regarded as being identical to the mark. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Complainant next contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has not ever otherwise used or been known by the name “Swarovski” or any name incorporating that name. It also states that it has not authorized, licensed or otherwise permitted or approved the use of the name and, indeed, provides evidence of its demand that the Respondent cease and desist from such use. It further states that the use of the domain name in connection with a website promoting the Respondent’s business “Banjo Bead House” is not a legitimate non-commercial or fair use under the .au Dispute Resolution Policy (auDRP).
Finally, in this regard, it contends that the Respondent’s intention in selecting, registering and using the domain name as it has is to exploit the Complainant’s reputation and lure internet traffic and commerce to the Respondent’s website by use of the Complainant’s mark, which is not a legitimate use within the meaning of the auDRP. In support of these propositions it cites SanDisk Corporation v. ITBOX PTY. LTD., WIPO Case No. DAU2006-0009 and Archipelago Holdings LLC.v Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729.
Lastly, the Complainant contends that the selection of the domain name incorporating the Complainant’s well recognized mark is evidence of its being registered in bad faith as is its subsequent use, firstly to attract customers to the Respondent’s website and secondly in warehousing the domain name. It cites the following cases as sustaining these respective contentions: SanDisk Corporation, supra; Justerini & Brooks Limited v. “Colmenar”, WIPO Case No. D2000-1308; ESPN, Inc. v. IMCO Corporation Pty Ltd, WIPO Case No. DAU2005-0005; 12 PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Google Inc. v. Dmitri Rytsk, WIPO Case No. DAU2007-0004; Bayerische Motoren Werke AG v. (This domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; HSBC Finance Corporation v Clear Blue Sky Inc. and Domain Manager WIPO Case No. D2007-0062.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in the SWAROVSKI mark in connection with its cut crystal, glass and gem-stone business. Based on the evidence of record, the Panel further finds that the disputed domain name is identical to the Complainant’s trademark and affirms the principles cited in support thereof.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no legitimate rights or interests in the domain names or the subject mark. The material provided by the Complainant establishes a prima facie showing of a want of any right or legitimate interest in SWAROVSKI mark in the Respondent. The Panel is of the view that under 4(a)(ii) once the Complainant has made out a prima facie case, as it has here, the burden to establish those rights shifts to the Respondent (see, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
Accordingly, the Respondent having omitted to file any material in response, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
As noted above, the Panel finds that the Respondent’s choice of the disputed domain name indicates an awareness of the Complainant’s mark. The Panel finds that the SWAROVSKI mark in this field is well known to traders and many consumers of crystal, glass and like objects in Australia and that the Respondent was aware of the mark and that reputation at the time of registering the disputed domain name. Further the Panel finds that the initial registration and use of the domain name were undertaken in bad faith with the intention of impermissibly garnering to the Respondent the commercial benefit of association with the Complainant’s goodwill and reputation. Accordingly, the Panel finds that the initial registration and subsequent use of the mark was neither bona fide nor legitimate and respectfully adopts the reasoning in this regard in Oki Data Americas, Inc., supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <swarovski.com.au> be transferred to the Complainant.
Date: February 24, 2008