WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas
Case No. D2010-2067
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Domain Privacy Group Inc. of Markham, Ontario, Canada / George Tzikas of Montreal, Quebec City, Canada.
2. The Domain Name and Registrar
The disputed domain name <swarovski-jewelry.com> is registered with Netfirms, Inc. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2010. On December 1, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2010, the Registrar transmitted by email to the Center its verification response disclosing 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 December 8, 2010 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 10, 2010.
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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 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 registrations for trademarks consisting of the word “Swarovski”. These registrations include the following registration for the word mark SWAROVSKI in Canada:-
(a) Registration No. TMA280868 registered on June 30, 1983 in respect of certain goods including (i) natural and synthetic gemstones; glass stones, beads and pendants for jewellery, embroidery and other decorative uses (user claimed since 1930), (ii) glass wear, crystalline parts (user claimed since 1969) and (iii) watches (user claimed since 1999);
(b) Registration No. TMA766968 registered on May 17, 2010 in respect of certain goods including (i) sunglasses; binoculars (user claimed since 2004) and (ii) retail services for gemstones, jewellery, decorative articles bymerary made of glass (user claimed since 2004) [see Annex C to the Complaint].
The uncontradicted evidence produced by the Complainant shows that the use and registration of its aforesaid SWAROVSKI mark occurred well over 20 years before the registration of the disputed domain name <swarovski-jewelry.com> on March 21, 2009.
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 December 6, 2010, the website to which the disputed domain name resolves as provided in Annex J to the Complaint, the WhoIs database search results and website visit record updated to December 14, 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 Canada 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 in connection with crystal jewellery stones and crystalline semi-finished goods for fashion goods, jewellery, home accessories, collectibles and lighting. The SWAROVSKI mark has become well-known in Canada due to its devotion of substantial time, effort and money to advertise and promote the Mark (Annexes D and H to the Complaint).
The disputed domain name has incorporated the SWAROVSKI mark in its entirety. The addition of the hyphen followed by the generic word “jewelry” does not avoid confusion but aggravates the likelihood of confusion especially when Swarovski is well known to manufacture crystal and jewellery. The disputed domain name is identical or confusingly similar to the Complainant’s SWAROVSKI mark.
The Respondent has no legitimate interests or rights in the disputed domain name. It has never been known as such. The Complainant has not licensed the Respondent to use the SWAROVSKI mark in a domain name or in any other manner.
A printout of the Respondent’s website of December 6, 2010 shows that the disputed domain name aimed to direct Internet users to the website to which it resolved, where the operator of that site stated that they are working hard to offer quality jewellery by using authentic Swarovski crystals purchased in their jewellery creations. The disclaimer read “Note: this site is not part of Swarovski, its subsidiaries, affiliates, or its in any way associated or represent to be associated with Swarovski, its trademarks or brands except through the purchase and use of authentic Swarovski crystals in our jewellery creations.” Such disclaimer does not create any legitimate interest in respect of the disputed domain name. At most, such disclaimer, indicates that the Respondent or the operator of that website intends to sell jewelry purported to be made using Swarovski crystals but not selling Swarovski jewelry as the disputed domain name itself suggests and which is misleading. On the other hand, the disclaimer indicates that the Respondent must have been aware of the SWAROVSKI mark at the time of registration of the disputed domain name. The Respondent was trying to create an impression that the website to which the disputed domain name resolved is associated with the Complainant and thereby attracted consumers to that website to purchase jewelry made by the Respondent or the operator of that website in competition with the Complainant. Even if goods sold on the website were genuine, it does not give the Respondent the right to use the SWAROVSKI mark or constitute a bona fide offering of goods under the Policy.
As the Complainant’s SWAROVSKI mark is well known, 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 goods of the same types as those being sold by the Complainant supports the contention that the Respondent was aware of Complainant’s mark and products at the time of registration 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 the Respondent’s jewelry is offered for sale. Such 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 December 6, 2010, the Complainant has properly joined George Tzikas as Respondent by amendment of the Complaint on December 10, 2010. Accordingly, all relevant parties are properly joined in these proceedings.
B. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex A to the Complaint, the information provided by the Registrar in its verification response on December 6, 2010 and the WhoIs search results updated to December 14, 2010 as provided by the Center.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the exact 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 will be 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. 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 additional hyphen followed by the word “jewelry” and the generic top-level domain “.com”.
The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “jewelry” is indistinctive. The fact that jewelry is an important type of goods being manufactured and sold by the Complainant and marketed under their mark SWAROVSKI as shown in Annexes G and H to 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 accessing whether a domain name is identical or confusingly similar to the mark in isue. 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 said indistinctive elements 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 decades prior to the Respondent’s registration of the disputed domain name <swarovski-jewelry.com> on March 21, 2009. The Complainant has confirmed that the Respondent is not a licensee or authorized seller of the Complaniant. The Respondent was not authorized to register and therefore use 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 <swarovski-jewelry.com>. 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. Annex J to the Complaint shows that the website at the disputed domain name indicates that the website is yet to be launched and no actual business is being carried out by the website at the disputed domain name. There is no evidence to show legitimate noncommercial or fair use of the disputed domain name by the Respondent. The Panel notes that the website at the disputed domain name is currently inactive.
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 wording of the disclaimer shown on the website at the disputed domain name (Annex J to the Complaint) itself supports the contention that the Respondent was aware of the Complainant and the SWAROVSKI trademark at least at the time when the disclaimer was made. The fact that the Complainant has used and registered SWAROVSKI mark in Canada for decades before the Respondent (who is also domiciled in Canada) registered the disputed domain name lends further support to this.
The choice of the word “Swarovski” with the use of the descriptive word “jewelry” which is exactly the product which the Complainant is famous for also demonstrates that the Respondent had knowledge of the Complainant and its trademark at the time of registration of the disputed domain name.
It seems clear from Annex J that the Respondent intends to use the website to which the disputed domain name resolves to market jewelry made by itself even though it may be using Swarovski crystal for that purpose. However, as asserted by the Complainant, these are still not genuine Swarovski jewellery made by the Complainant. Such activities directly compete with the Complainant’s business. Even though it was said on the website at the disputed domain name that “swarovski-jewelry.com…we are not open yet!”, it is already inviting expressions of interest by prospective customers and suggests that offers will be made to them once goods are marketed on that website. Coupons of 20% discount have also been offered to prospective customers.
The Panel finds that the Respondent has registered the disputed domain name and intended to use the site 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.
In this Panel’s view, it is not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the evidence available.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator of 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 <swarovski-jewelry.com> be transferred to the Complainant.
C. K. Kwong
Dated: January 26, 2011