WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Xin Clicknet Cailiwen
Case No. D2010-2054
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Xin Clicknet Cailiwen of Xiamen, Fujian, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewellery.net> is registered with Guangzhou Ming Yang Information Technology Co. Ltd. (the “Registrar”)
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 the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2010, the Registrar transmitted by email to the Center its verification response confirming that the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2010 providing the registrant and contact information confirmed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 30, 2010, the Center also issued a notice to the parties in both Chinese and English languages regarding the language of proceedings. On December 2, 2010, the Complainant filed an amendment to the Complaint and also confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
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. In the meantime, the Center received email communications from the Respondent on December 9, 2010, January 7, 2011 and January 10, 2011, proposing to transfer the disputed domain name to the Complainant. The Panel notes, however, that the parties were unable to come to a mutual understanding. The Respondent did not submit any formal Response to the Complaint. Accordingly, the Center notified the Respondent’s default on January 6, 2011.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 12, 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 the owner of numerous trademarks consisting of or comprising the word ”Swarovski”. These registrations include Chinese Trademark Registration No. 384001 for the word mark SWAROVSKI which was registered on July 30, 1987 and renewed up to date in respect of imitation jewellery under Class 14 and Chinese Trademark Registration No. 3520173 comprising the word SWAROVSKI, the swan logo device and the Chinese transliteration of the English mark which was registered on November 7, 2004 in respect of “clocks; watches; watch glasses; watch cases; natural gemstones; synthetic gemstones; genuine jewellery; imitation jewellery; decorative jewellery ornaments; pendants for watch chains” under Class 14.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid SWAROVSKI mark occurred well over 20 years before the registration of the disputed domain name <swarovskijewellery.net> on June 18, 2010.
The Complainant has also registered the domain name <swarovski.com> on January 11, 1996 and <swarovski.net> on April 16, 1998 (Annex I to the Complaint). It operates an official website at “www.swarovski.com” which enables Internet users to have access to information and buy genuine SWAROVSKI merchandise.
Other than the particulars shown on the printout of the data base searches conducted by the Complainant of the WhoIs database (as provided in Annex A to the Complaint), the verification response provided by the Registrar on November 29, 2010, the website to which the disputed domain name resolves as provided in Annex J to the Complaint, the WhoIs database search results and the website visit record updated to December 6, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant has rights in the trademark SWAROVSKI which is registered in China and globally. It claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and presence in over 120 countries. Products were sold in its own 1,014 boutiques and through 819 partner-operated boutiques worldwide with revenue of EUR 2.25 billion in 2009. The Complainant has used the mark SWAROVSKI in connection with crystal jewellery stones and crystalline semi-finished goods for fashion goods, jewellery, home accessories, collectibles and lighting. The mark SWAROVSKI has become well-known in China due to its devotion of substantial time, effort and money to advertise and promote the mark.
The disputed domain name has incorporated the SWAROVSKI mark in its entirety. The addition of the word “jewellery” does not avoid confusion but aggravates the likelihood of confusion especially when Swarovski is well known to manufacture and sell crystal and jewelry. The contents of the website to which the disputed domain name resolves create the impression that the Respondent is authorized by or affiliated with the Complainant but in fact it is not. The disputed domain name is identical or confusingly similar to the Complainant’s SWAROVSKI mark.
The Respondent has no rights or legitimate interests in the disputed domain name. It has never been known as such. Use of the website to which the disputed domain name resolves to advertise purported Swarovski products and misdirect Internet traffic to it does not constitute bona fide offering of goods even if they were genuine Swarovski goods. The Complainant has not licensed the Respondent to use the Swarovski mark in a domain name or in any other manner.
As the Complainant’s SWAROVSKI mark is well-known and not a generic term, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI mark at the time of registration. Further, the offering of purported Swarovski products, being goods of the same type as those being sold by the Complainant supports the contention that the Respondent was aware of the Complainant’s mark and products at the time of registration and use of the disputed domain name.
The purpose of the Respondent’s use of the disputed domain name is to obtain commercial gain by attracting Internet users to the site to which the disputed name resolves where purported Swarovski products are offered for sale. The Complainant’s trademarks were used throughout the website without the consent or license of the Complainant. The use of the disputed domain name must be expected to cause harm to the Complainant and disruption to its business.
6. Discussion and Findings
The Panel considers that following the verification response from the Registrar on November 29, 2010, the Complainant has properly named XIN CLICKNET as the Respondent by Amendment of the Complaint on December 2, 2010.
B. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the verification from the Registrar on November 29, 2010 and the WhoIs search results updated to December 6, 2011 as provided by the Center.
On December 6, 2010, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier, facsimile and email with copies to the Registrar.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications are discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
C. Language of Proceedings
In response to the Center’s notification in English and Chinese of November 30, 2010 to both parties on the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on December 2, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) The Complainant is not familiar with the Chinese language. It operates in multiple jurisdictions primarily in English. The Complainant will suffer disadvantages in costs and inconvenience if Chinese is used.
(b) The content of the website to which the disputed domain name resolves is in English and with no Chinese version. It demonstrates that the Respondent has sufficient capacity to communicate and present its case in English.
The Panel has taken into consideration the above submissions, the fact that the disputed domain name consists of English words and the Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
D. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark SWAROVSKI by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the addition of the generic word “jewellery” (the American spelling for “jewelry”) and the generic top-level domain “.net”.
The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “jewellery” is indistinctive. The fact that jewellery is an important type of goods being manufactured and marketed by the Complainant under their mark SWAROVSKI as shown in Annexes “G” and “H” of the Complaint will make actual confusion among consumers even more likely.
It is well established practice to disregard the top-level part of the domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said indistinctive element and the generic top-level domain, only the word “Swarovski” is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark SWAROVSKI prior to the Respondent’s registration of the disputed domain name <swarovskijewellery.net> on June 18, 2010. The Complainant has confirmed that the Respondent is not a licensee or authorized seller of the Complaniant. The Respondent was not authorized to register or use the Complainant’s mark in the disputed domain name.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “Swarovski” in its domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as <swarovskijewellery.net>. In fact, the Panel notes that the names of the Registrant and the Registrant Organization do not correspond in any way with the disputed domain name.
There is also no evidence available to demonstrate any bona fide offering of goods or services, legitimate non-commercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves are genuine Swarovski goods, it does not provide the owner of such website the right to use the Complainant’s trademark and materials in that website. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
The printout of the website at the disputed domain name as shown in Annex J to the Complaint contained the following information or materials:
(a) the descriptive line “Swarovski Bracelet: swarovski jewellery” at the top left corner and centre of the web page;
(b) a whole range of product names are preceded by the word swarovski;
(c) the words “SWAROVSKI SALE HOME: swarovski Bracelet/Necklace/suit”.
In view of the Complainant’s unequivocal assertion that the Respondent is not its licensee or an authorized agent, the claim for selling SWAROVSKI jewellery and a site for Swarovski sale as shown in the aforesaid descriptive lines in the disputed website would appear to be a false claim. Similarly, the implied claim of legitimately using the Complainant’s SWAROVSKI trademark on the website at the disputed domain name is also a false claim.
The incorporation of the word Swarovski in the disputed domain name with the use of the descriptive word “jewellery” which is exactly the product the Complainant is famous for as well as referring to Swarovski jewellery in the website to which the disputed domain name resolves, demonstrate the Respondent’s knowledge of the Complainant and its trademark at the time of registration and use of the disputed domain name.
The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the site to which the disputed domain name resolves, to use it primary for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affliction, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <swarovskijewellery.net> be transferred to the Complainant.
C. K. Kwong
Dated: January 26, 2011