World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Bingbing Chen

Case No. D2010-1736

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Treisen, Liechtenstein, represented by LegalBase (Pvt) Limited, of Sri Lanka.

The Respondent is Bingbing Chen of Guangzhou, Guangdong, The People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <swarovskischmucksale.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 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2010.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 29, 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. The Complainant has registered and uses several trademarks comprised of the Swarovski name, (hereinafter the “SWAROVSKI Marks” or “SWAROVSKI Mark”) in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. The Complainant is one of the world’s leading producers 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, The Complainant’s products were sold in 1014 of its own boutiques and through 819 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2009 was EUR 2.25 billion.

The Complainant has registered the SWAROVSKI Marks globally. The SWAROVSKI Marks have also been registered in Germany and China. Some of the trademarks which are valid in Germany and in China are:

1. Swarovski International Reg. No. 303389A registered on October 9, 1965

2. Swarovski Community Trade Mark Reg. No. 120576 registered on October 15, 1998

3. 施华洛世奇 China 385013 14 registered on August 30, 1989

4. 施华洛世奇 China 361346 14 registered on September 20, 1989

Copies of extracts of registration for the Community, International and Chinese trademark registrations were provided with 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”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

1) The SWAROVSKI Marks have become famous and well-known in Germany, China and world-wide.

2) The disputed domain name is confusingly similar to the SWAROVSKI Marks.

3) 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 Complainant’s website.

4) The addition of the terms “schmuck” and “sale” as a suffix to the SWAROVSKI Mark

does not lessen the confusing similarity between the disputed domain name and

the Complainant’s Marks.

5) The Respondent has no rights or legitimate interests in the disputed domain name.

6) The Respondent has no connection or affiliation with the Complainant 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.

7) The use of the word “schmuck”, which in German means jewellery, along with the SWAROVSKI Mark is obviously intended to create an association with the Complainant and its business.

8) The Respondent has never been known by the disputed domain name and has no legitimate

interest in the SWAROVSKI Marks or the name Swarovski.

9) The disputed domain name is being used to advertise purported Swarovski products and misdirects Internet traffic to Respondent’s website.

10) Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

11) The disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks at the time of registration.

12) 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 trademark. Furthermore, the coupling of the SWAROVSKI Mark with a descriptive word like “schmuck” and “sale” only strengthens the association with the Complainant.

13) The SWAROVSKI Marks have been used in the disputed domain name to create the impression that the Respondent’s website is associated with the Complainant. 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.

14) The Respondent’s website offers for sale a variety of products similar to those sold by the Complainant’s official site such as crystal earrings, crystal diamond necklaces, crystal bracelets, etc. Products purporting to be Swarovski products would not have been advertised on the infringing website if the Respondent was unaware of the Complainant’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 the Complainant’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 the Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy.

18) Registration of a famous mark, like the SWAROVSKI Mark, 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 the affiliated 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 <swarovskischmuckde.com>, which the Complainant (due to the fact that the disputed domain name redirects to the website, “www. swarovskischmuckde.com”) deems is the same entity as the present Respondent, but received no response.

The Complainant requests that the Panel issue a decision that the disputed domain name <swarovskischmucksale.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has established that it has rights in the trademark SWAROVSKI and has stated that the disputed domain name is confusingly similar to it.

In order to substantiate this claim, the Complainant has argued that, “the addition of the terms ‘“schmuck’” and “sale” as a suffix to the SWAROVSKI mark does not lessen the confusing similarity between the disputed domain name and Complainant’s marks”.

This Panel agrees with the Complainant’s contention and previous UDRP decisions that the addition of descriptive terms like “schmuck” (i.e. jewellery) and “sale” to a trademark is not sufficient to avoid confusing similarity here, especially when the trademark at stake is such a renowned one and the generic terms refer to the Complainant’s business and products.

Supporting this, is for example, Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988, where the Panel wrote that:

“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark. (e.g., Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).

The prefixes and suffixes incorporated in the Disputed Domain Names are descriptive words which are not distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521).”

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:

i) that before any notice to the respondent of the dispute, he or she used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

ii) that the respondent is commonly known by the disputed domain name, even if he or she has not acquired any trademark rights; or

iii) that the respondent intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Here, 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 to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial 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.

(Policy, paragraph 4(b)).

Accordingly, for a complainant to succeed, the Panel must be satisfied that the disputed 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 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 Complainant; and the fact that the Respondent’s website also contains a section called “Swarovski Baureihe” in which all the jewellery displayed is tagged as “Swarovski Baureihe” products, where “Swarovski Baureihe” means “Swarovski Series”, which are jewellery sets containing Swarovski crystals; that in the FAQ section of the Respondent’s website it is affirmed that they are resellers authorised by the Complainant, a fact that is denied by the Complainant; and in the absence of contrary evidence, the Panel finds:

1) that the Respondent had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;

2) that the above described 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 Complainant is further inference of bad faith use;

3) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true Complainant’s claims. See 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.

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 domain name <swarovskischmucksale.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: December 10, 2010

 

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