Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein (“Complainant” or “Swarovski”), represented by LegalBase (Pvt.) Limited, Sri Lanka.
Respondent is Transure Enterprise Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Respondent”).
The disputed domain name <tupies-swarovski.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2009. On December 4, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 7, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 10, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to Complaint. Complainant filed an amendment to the Complaint on December 15, 2009. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 11, 2010.
The Center appointed Dana Haviland as the sole panelist in this matter on January 28, 2010. 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.
Complainant Swarovski manufactures and sells various crystal products under the Swarovski name, including crystal stones, crystal beads, crystal figurines and jewelry, among other things. Swarovski also manufactures crystal stones and beads that are used in jewelry made and marketed by Swarovski.
Swarovski has registered its name as a trademark globally and has provided evidence of some of its global registrations, dating back to December 6, 1968 (collectively, the “SWAROVSKI Mark”).
Respondent registered the Domain Name on August 30, 2009.
As evidenced by an exhibit to the Complaint, the home page of the Domain Name website displays “sponsored links” to third party commercial sites, most of which are websites selling jewelry, crystals and beads, including some purporting to sell Swarovski products, as well as numerous other sites offering competing products for sale.
Complainant contends that the Domain Name is identical or confusingly similar to the SWAROVSKI Mark in which Complainant asserts rights, that Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. Complainant requests transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) that respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
Complainant has provided evidence of its registration rights in its SWAROVSKI Mark.
Respondent's Domain Name incorporates Complainant's SWAROVSKI Mark in its entirety, adding only the term “tupies-” as a prefix. Complainant alleges that “tupies” is a Spanish term commonly meaning, but without any corresponding dictionary definition as, “crystal stones”. Respondent has failed to refute this assertion or provide any alternative definition. Thus there is no evidence to conclude that the addition of this prefix negates the confusing similarity of the Domain Name to Complainant's distinctive SWAROVSKI Mark. See Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252 (“the mere addition of a common or generic word such as “beads” to a registered trademark has consistently been deemed insufficient to avoid confusing similarity between the domain name and the complainant's trademark”); Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947 (“The Panel finds that the designation “swarovski” is the distinctive part of the disputed domain name and the additional term “beads” does not diminish the similarity between the disputed domain name and the Trade Mark.”).
The Panel finds that the Domain Name in this case is confusingly similar to the SWAROVSKI Mark in which Complainant has rights, and that the Complainant has therefore established the first element of its claim, pursuant to paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
Complainant asserts that Respondent has not been licensed or otherwise authorized to use Complainant's SWAROVSKI Mark, Respondent has not been commonly known by the Domain Name, and Respondent has not made any use of the Domain Name for either a bona fide offering of goods and services or some other noncommercial or fair use under paragraph 4(c) of the Policy. Complainant contends that Respondent therefore has no rights to or legitimate interests in the Domain Name, as required by paragraph 4(a)(ii) of the Policy.
As evidenced by Complainant's exhibit of pages from Respondent's website, the Domain Name provides Internet users with click-through access to third party commercial websites, and it is presumable that the Respondent earns “click-through fees” for each consumer it redirects to the third party websites.
Respondent's use of Complainant's SWAROVSKI Mark for a website displaying click-through links to Complainant's competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741, quoting Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021: “Based on the evidence presented, the Panel can only conclude that the disputed domain name has been and is being used for diverting Internet users to sponsored links. The purpose of using the Complainant's broadly recognized UNILEVER trademark in the <unilevericecream.com> domain name has been and is to capture consumers who are seeking the Complainant's products, or other information about the Complainant, and to redirect them to other websites. The Panel does not consider such use of a domain name to be either legitimate or in good faith”.
Complainant has made out a prima facie case with respect to paragraph 4(a)(ii) and shifted the burden of production to Respondent to show that it has a particular right or legitimate interest in the Domain Name under paragraphs 4(a)(ii) and 4(c).
Respondent has not submitted any reply to the Complaint. As noted in CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201, it is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute, and so it is sufficient for the complainant to make a prima facie showing on this issue and shift the burden of going forward to the respondent. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is ‘uniquely within the knowledge and control of the respondent'”. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416. The Respondent in this case has failed to assert any right or legitimate interest in the Domain Name, however, and has presented no evidence in opposition to Complainant's assertions in this regard.
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Complainant has therefore satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.
Complainant contends that Respondent has registered and is using the Domain Name in bad faith, alleging facts relevant to a claim pursuant to paragraph 4(b)(iv) of the Policy.
The Domain Name provides Internet users with click-through access to third party commercial sites that offer to sell consumers jewelry and beads. Swarovski is an internationally recognized jewelry, crystal stone and bead manufacturer and seller. The evidence of Respondent's registration of the Domain Name incorporating Complainant's widely-known SWAROVSKI Mark and Respondent's use of the Domain Name for third party jewelry sales in direct competition with the Complainant's jewelry products, together with Respondent's failure to respond or produce any contrary evidence, supports an inference that by using the Domain Name, Respondent has intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant's SWAROVSKI Mark.
In Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, the panel found that such activity constitutes bad faith: “As regards Respondent's use of the domain names, it appears that under the websites that are connected with the Respondent's domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.' Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (use of trademark in domain name for pay-per-click landing page that included links to competitors of complainant was bad faith registration and use under paragraph 4(b)(iv) of the Policy).
The evidence in this case is thus sufficient to establish Respondent's bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. In view of this finding, the Panel deems it unnecessary to consider Complainant's assertions of bad faith pursuant to paragraph 4(b)(i) of the Policy.
The Panel finds that Complainant has shown bad faith registration and use of the Domain Name, satisfying the third element of its claim in accordance with 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 <tupies-swarovski.com> be transferred to Complainant.
Dated: February 12, 2010