World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. lin

Case No. D2010-2052

1. The Parties

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

The Respondent is lin of the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <swarovskizone.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2010. On November 26, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On November 29, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on November 30, 2010 providing the registrant disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint to the Center on December 3, 2010.

On November 30, 2010, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 2, 2010, the Complainant requested English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chose at her discretion to render the decision in English.

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 the Respondent of the Complaint, and the proceedings commenced on December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on January 7, 2011. 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 company incorporated in Liechtenstein. It has been trading under the SWAROVSKI marks since 1987 and it produces 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, including China. The Complainant owns a number of trademark registrations for the trademark SWAROVSKI in several classes of goods in numerous jurisdictions. Swarovski has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to Swarovski’s official website, located at “www.swarovski.com”.

The Respondent registered disputed domain name <swarovskizone.com > on June 16, 2010. The disputed domain name is used in connection with a website selling Swarovski branded products online.

5. Parties’ Contentions

A. Complainant

(1) The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademark

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.

The Complainant asserts that UDRP panels had recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark, citing Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872. The Complainant then further alleges that the Respondent intentionally registered the disputed domain name which is confusing similar to the Complainant’s trademark in order to capitalize on the Complainant’s goodwill in the SWAROVSKI marks to divert Internet traffic to the website hosted at the disputed domain name thus constituting initial interest confusion, citing Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166; W. & G. Foyle Limited v. Robert G. Foyle, WIPO Case No. D2000-1543.

The Complainant asserts that the disputed domain name <swarovskizone.com> incorporates the Complainant’s trademark SWAROVSKI in full, deviates from the mark only with the addition of a common or generic word with no distinguishing power in the context of domain names, “zone”, citing precedents including 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; Vibram S.p.A. v. Oscar Lee, WIPO Case No. D2010-1051; F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No.D2010-0307; Swarovski Aktiengesellschaft v.Kimi DeLuca, WIPO Case No. D2007-0252; Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947; and Swarovski Aktiengesellschaft v. wuitianhao, WIPO Case No. D2010-0503.

The Complainant contends that the incorporation of a trademark in its entirety has been deemed sufficient to establish that a disputed domain name is identical or confusingly similar to the complainant’s registered trademark, citing precedents including Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215; F. Hoffmann-La Roche AG v. MFS Holdings, supra; America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055.

(2) The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:

Firstly, the Complainant states that the Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI marks in a domain name or in any other manner. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.

Secondly, the Complainant asserts that the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI marks or the name “Swarovski”, citing Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610.

Thirdly, the Complainant alleges that the website hosted at the disputed domain name is being used to advertise purported Swarovski products and misleads consumers for commercial gain, and suggest to them that the website of the Respondent is associated with, or endorsed by, the Complainant. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest, citing the precedent Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477; Drexel University v. David Brouda, WIPO Case No. D2001-0067 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

To defeat a possible argument that the Respondent could be selling original Swarovski products, the Complainant cites the precedents Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540 and argues that even if the goods sold on the website at the disputed domain name are genuine this does not provide the Registrant with the right to use the SWAROVSKI marks in the disputed domain name.

(3) The Respondent Registered and Is Using the Disputed Domain Name in Bad Faith

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the basis of the following reasons:

Firstly, the Complainant asserts that its trademark SWAROVSKI which has been used by the Complainant since 1987 is distinctive and well-known internationally. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark prior to registering the disputed domain name in September 2010. This prior knowledge constitutes bad faith in registration.

Secondly, the Complainant alleges that 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, citing AT&T Corp v. Woppies, WIPO Case No. D2000-1724 and Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861.

Thirdly, the Complainant argues that the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the website hosted at the disputed domain name because of its purported affiliation with Swarovski, citing Osuuspankkikeskus Osk v. RegisterFly.com, WIPO Case No. D2006-0461 and Jafra Cosmetics,S.A. de C.V. v. Jafraproducts Admin, WIPO Case No. D2006-0416.

Fourthly, the Complainant asserts that the Respondent’s behaviour clearly shows the Respondent’s intent to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products and leading them away from the Complainant’s genuine websites or to prevent the Complainant from registering the domain name, which is further evidence of the Respondent’s bad faith registration and use of the disputed domain name. The Complainant cited the precedent AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276.

Fifthly, the Complainant argues that the purpose of the Respondent’s registration and use of the trademark SWAROVSKI in the disputed domain name seems to be to attempt to attract present and potential Internet users to its website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and its official website, and attempting to create an impression of association with or endorsement by the Complainant of the Respondent’s website, citing PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

B. Respondent

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

6. Discussion and Findings

There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trademark SWAROVSKI in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.

Compared to the Complainant’s trademark, the disputed domain name completely reproduces the trademark with the only difference being the addition of “zone”, which has no distinguishing power in this context.

The Panel holds that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable 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, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.

The Complainant contends that the goods being offered for sale on the website connected to the disputed domain name may be counterfeits of the Complainant’s products. Given that there is no Response, citing Vibram S.p.A .v. Dai Xiu Mei, WIPO Case No. D2010-0846, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case.

The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a reputation for the trademark SWAROVSKI in the crystal jewellery stones and crystalline semi-finished goods industry since 1987 and the Complainant’s trademarked products are sold worldwide. Moreover, the Respondent’s sale of Swarovski branded products very strongly suggests that the Respondent knew of the trademark SWAROVSKI prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.

In addition, the Respondent’s lack of rights or legitimate interests in the name SWAROVSKI as well as the fact that the disputed domain name has been used to sell (original or counterfeit) products marked with the SWAROVSKI registered trademark without authorization, the Panel is convinced that the purpose of the Respondent’s registration of the disputed domain name is to capitalize on the goodwill of the trademark by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its website. This behavior constitutes bad faith in registration and in use of the domain name.

The Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith and has met the requirements of 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 disputed domain name <swarovskizone.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: January 21, 2011

 

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