WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Bingshu Wu
Case No. D2010-1734
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase of Sri Lanka.
The Respondent is Bingshu Wu of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskiparis.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 13, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On October 18, 2010, Melbourne IT 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 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 October 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2010.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 23, 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.
4. Factual Background
The Complainant is a corporation organized under the laws of the Principality of Liechtenstein. Swarovski uses the SWAROVSKI marks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. Swarovski is the world’s leading producer of cut crystal, genuine gemstones and created stones, with production facilities in 19 countries, distribution to 43 countries, and a presence in more than 120 countries. In 2009, Swarovski’s products were sold in 1014 of its own boutiques and through 819 partner-operated boutiques worldwide. Swarovski’s approximate worldwide revenue in 2009 was €2.25 billion.
Swarovski has registered the SWAROVSKI marks globally. The SWAROVSKI Marks have also been registered in China and France. Some of the trademarks which are valid in France and in China are:
1. Swarovski International Reg. No. 303389A registered on 09-10-1965
2. Swarovski CTM Reg. No. 120576 registered on 15-10-1998
3. China Reg. No. 3520173 registered on 07-11-2004
Copies of extracts of registration for the Community, International, French and Chinese trademark registrations are attached to the Complaint.
The Complainant has also registered a great number of domain names, including <swarovski.com> and <swarovski.net>, which point to Swarovski’s official website, located at <www.swarovski.com>.
The disputed domain name was registered on September 6, 2010.
5. Parties’ Contentions
The Complainant claims that:
1) Swarovski has developed an enormous amount of goodwill in the SWAROVSKI marks internationally, and the public has come to associate the SWAROVSKI marks exclusively with high quality items marketed by Swarovski.
2) The SWAROVSKI marks have become famous and well-known in France and China.
3) The disputed domain name is confusingly similar to the SWAROVSKI marks.
4) The Respondent has used the SWAROVSKI marks in the disputed domain name to cause confusion among Internet users between the Respondent’s Website and the Swarovski website and other Swarovski approved websites.
5) The addition of “paris” to the SWAROVSKI marks does not differentiate the disputed domain name enough to avoid confusion among consumers. It is clearly established that the addition of generic words like “paris” to a trademark is not enough of a differentiation from that trademark to avoid a finding of confusing similarity.
6) Panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
7) The Respondent has no rights or legitimate interest in the disputed domain name.
8) The Respondent has no connection or affiliation with Swarovski and has not received any license or consent, expressed or implied, to use the SWAROVSKI marks in a domain name or in any other manner.
9) The Respondent has never been known by the disputed Domain Name and has no legitimate interest in the SWAROVSKI marks or the name “Swarovski”.
10) The disputed domain name is being used to advertise purported Swarovski products, and the disputed domain name misdirects Internet traffic to the infringing website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
11) The SWAROVSKI marks have been used in a domain name to create the impression that the Respondent’s website is associated with Swarovski. Furthermore, the SWAROVSKI marks are used in the Respondent’s website, and purported Swarovski products are offered for sale on this website which supports the contention that the disputed domain name was chosen only for the purpose of creating an association with the Complainant. The misappropriation of the disputed domain name was no accident.
12) The disputed domain name was registered in bad faith because it is inconceivable that Registrant and/or the Respondent were unaware of Swarovski’s rights in the SWAROVSKI marks at the time of registration.
13) The selection of the disputed domain name, which wholly incorporates the SWAROVSKI marks, cannot be a coincidence. “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark. Furthermore, the coupling of the SWAROVSKI mark with a descriptive word like “paris” only strengthens the association with Swarovski.
14) The Respondent’s website offers for sale a variety of products similar to those sold by the official Swarovski site such as crystal earrings, crystal diamond necklaces, crystal bracelets, etc. In addition, the Respondent’s website also contains a tab called “Swarovski Suite” in which all the jewelry displayed is tagged as “Swarovski Suite” products. Products purporting to be Swarovski products would not have been advertised on the infringing website if the Respondent was unaware of Swarovski’s reputation.
15) The Respondent’s very method of infringement, using the exact SWAROVSKI marks to lure consumers to his website, demonstrates bad faith use under the Policy.
16) The Respondent’s registration and use of the disputed domain name also creates “initial interest confusion”, which attracts Internet users to the Respondent’s website.
17) The disputed domain name is so “obviously indicative” of Swarovski’s products and services that the Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort” and cause disruption to Swarovski’s business in contravention of paragraph 4(b)(iii) of the Policy.
18) Registration of a famous mark, like the SWAROVSKI marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.
19) The purpose of the Respondent’s use of the SWAROVSKI marks in the disputed domain name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy.
20) The Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVSKI marks is compounded by the efforts to mislead consumers into believing the site was operated or authorised by the Complainant. The Respondent, without valid consent, utilises the SWAROVSKI marks and official Swarovski advertising material throughout his website and offers products identical or similar to Swarovski products for sale on the same website.
21) The Complainant sent a cease and desist letter to the registrant of <bijouxswarovskifrance.com>, which the Complainant (due to the fact that the disputed domain name redirects to the website “www. bijouxswarovskifrance.com”) deems is the same entity as the present Respondent, but received no response.
The Complainant requests to issue a decision that the disputed domain name <swarovskiparis.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has established that it has prior rights in the trademark SWAROVSKI and has stated that the disputed domain name is almost identical to it.
In order to substantiate this claim, the Complainant has argued that the addition of “paris” to the SWAROVSKI marks does not differentiate the disputed domain name enough to avoid confusion among consumers.
This Panel agrees with the Complainant’s contention that the addition of a geographic term like “paris” to a trademark is not sufficient to avoid confusing similarity here, especially when the trademark at stake is such a renowned one.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as “SWAROVSKI” or by a similar name, and he has not alleged any facts or elements to justify rights and/or legitimate interest in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for non-commercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any right in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose 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 holder 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 Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site 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 holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the history of the Complainant’s trademark around the world, its extensive use also on the Internet through a great number of domain name registrations containing and/or corresponding to the Complainant’s trademarks (e.g., <swarovski.com> and <swarovski.net>), the Respondent’s use of the disputed domain name to offer for sale a variety of products similar to those sold by the official Swarovski and the fact that Respondent’s website also contains a tab called “Swarovski Suite” in which all the jewelry displayed is tagged as “Swarovski Suite” products and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant’s trademark when it registered the disputed domain name.
In addition, the Panel agrees with the Complainant’s assertion that the above said use of the disputed domain name i.e., to divert Internet traffic to the Respondent’s website where there are products similar to those sold by the official Swarovski is further inference of bad faith use.
Finally, in the absence of any Respondent’s rebuttal of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true Complainant’s claims. See also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009: “Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint. The Rules expressly provide that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’ Rule 14(b). Moreover, when a respondent defaults, the Rules direct the Panel to ‘proceed to a decision on the complaint.’ Rule 14(a); see also Rule 5(e). Furthermore, the Panel is charged with rendering its decision ‘on the basis of the statements and documents submitted.’ Rule 15(a).”
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied 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, <swarovskiparis.com> be transferred to the Complainant.
Dated: December 2, 2010