WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. love Swarovski
Case No. D2010-2141
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein.
The Respondent is love Swarovski of Liberia.
2. The Domain Name and Registrar
The disputed domain name <lvswarovski.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain name. On December 10, 2010, GoDaddy.com, Inc. 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 complied with 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 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2011.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on January 31, 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 on May 17, 1988, with a registered address in Liechtenstein. The Complainant’s principal place of business is Dröschistrasse 15, FL 9495, Liechtenstein.
The Complainant is the owner of several trademarks for the word “swarowski”, registered throughout the world, including in Africa and China. Amongst others, the Complainant owns the following marks:
- International word mark SWAROVSKI No. 663 366, registered in international classes 8, 9, 11, 14, 18, 21, 25, and 26 in numerous countries worldwide, including in particular, China and Liberia. This mark has been registered on October 17, 1996 and renewed on October 17, 2006.
- International word mark SWAROVSKI No. 857 107, registered in international classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35, and 41 in numerous countries worldwide, including in particular China and Liberia. This mark has been registered on November 3, 2004.
The Complainant uses the SWAROVSKI marks in connection with crystal jewelry stones and crystalline semi-finished goods, in particular for the fashion and jewelry 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.
The Complainant has also registered several domain names consisting of or containing its trademark, including, in particular, <swarovski.com> and <swarovski.net>.
The disputed domain name was registered on August 26, 2010. The Registrant has provided the following contact details: Droeschistrasse 15, Triesen, Liechtenstein 9495, Liberia. At the time of the filing of the Complaint, the disputed domain name resolved to a webpage with the title “Cheap Swarovski Bracelets on Sale, Swarovski Crystal Bracelets Outlet”, where crystal products were offered for sale.
5. Parties’ Contentions
Concerning the first test under the paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to the SWAROVSKI marks, in which it has rights. It contends that the addition of the term “lv” as a prefix to the SWAROVSKI marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademarks. In this respect, the Complainant further points out that it has been previously established by WIPO UDRP panels that for a trademark such as SWAROVSKI , adding a generic or common prefix or suffix is not enough of a differentiation from that trademark to avoid a finding of confusing similarity. Finally, the Complainant cites WIPO UDRP cases in which panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
Concerning the second test under the paragraph 4 (a)(ii) of the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. It stresses that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Swarovski name, Swarovski’s contact details and the SWAROVSKI trademarks in a domain name or in any other manner. In addition, according to the Complainant, the Respondent’s use of Swarovski’s contact information in the WhoIs database implies that the Respondent is aware that it has no legitimate interest in the name Swarovski and the disputed domain name, because it shows that that the Respondent has made deliberate efforts to create the appearance that the disputed domain name is registered to the Complainant. The Complainant further contends that the Respondent has never been known by the disputed domain name, which is used to advertise purported Swarovski products. In this respect, the Complainant cites previous WIPO UDRP decisions, in which panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”.
Concerning the third test under the paragraph 4 (a)(iii) of the Policy, the Complainant argues that the Respondent registered and used the disputed domain name in bad faith.
In connection with registration, the Complainant submits that the disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI marks at the time of registration; according to the Complainant, the use of the infringing domain name, which wholly incorporates the SWAROVSKI trademark, cannot be a coincidence, as “Swarovski” is not a descriptive or generic term, but on the contrary is a famous and well-known trademark. Moreover, the Complainant points to the sale of purported Swarovski products on the website to which the disputed domain name resolves and contends that such products would not have been advertised on the Respondent’s website if the Respondent were unaware of Swarovski’s reputation. According to the Complainant, given the fame of the SWAROVSKI marks, there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith. Finally, the Complainant stresses that the Respondent’s use of false contact details in the WhoIs database is a further indication of its bad faith registration of the disputed domain name.
In connection with use, the Complainant submits that bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. According to the Complainant, 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 in itself sufficient to demonstrate bad faith. In addition, the Respondent’s registration and use of the infringing domain name creates “initial interest confusion”, attracting Internet users to the Respondent’s website because of its purported affiliation with the Complainant. Finally, the Complainant contends that the Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilizing the SWAROVSKI marks is compounded by the efforts to mislead consumers into believing the site was operated or authorized by the Complainant. The Respondent, without valid consent, used the SWAROVSKI marks throughout its website and offered products identical to or similar to Swarovski products for sale on such website.
On this basis, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
(iii) The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several trademarks consisting of the word “Swarovski”.
Concerning the second issue, the Panel finds that the domain name is confusingly similar to the Complainant’s SWAROVSKI trademarks. The domain name wholly incorporates the Complainant’s trademark. In the Panel’s view, the addition of the letters “lv” is not enough to avoid the risk of confusion, as these two letters are insufficient to carry distinguishing power. It is widely admitted that the addition of a generic or descriptive term to a mark, as the Panel finds is the case in this matter, will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see, e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733; Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei, WIPO Case No. D2008-0101).
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, UDRP panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable 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
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, the Respondent has not filed a response to the Complaint. However, based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons.
First, there is no indication that the Respondent has used or prepared to use the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolved to a website where the Respondent offered to sell Swarovski or purported Swarovski products. There is no evidence on record that can establish whether the products offered on that website were genuine or counterfeit. However, in the Panel’s view, the mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of that website the right to register a domain name incorporating another’s trademark (see, e.g., Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540), especially where there are indications that the respondent is seeking to create confusion as to its affiliation with the complainant, as is the case in the present matter (see below).
Second, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant’s trademark.
Third, the Respondent does not appear to be commonly known as “Swarovski” or by a similar name, and there is no indication on record that could justify rights and/or legitimate interest in the disputed domain name.
Fourth, the Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. On the contrary, the website to which the disputed domain name resolved was used to offer purported Swarovski products for sale.
Finally, there are no other elements on record, nor explanations by the Respondent (which did not file a Response in the course of these proceedings), indicating that the Respondent would have rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy provides as an instance of registration and use in bad faith, circumstances indicating that :
“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
Based on the evidence produced by the Complainant, the Panel considers that the SWAROVSKI trademark is a widely-known mark and has a worldwide reputation in connection with the products sold by the Complainant. It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the SWAROVSKI trademarks at the time it registered the disputed domain name. This finding is reinforced by the fact that the Respondent used the Complainant’s contact details when registering the disputed domain name, and set up a website offering for sale products corresponding to the Complaint’s line of products. Moreover, the Respondent used the Complainant’s trademarks on its website, thus demonstrating that it knew of the Complainant’s marks and had the intention to benefit from the Complainants’ reputation.
The Panel considers that the fact that the disputed domain name has been used to sell (original or counterfeit) products marked with the SWAROVSKI registered trademark without authorization is evidence of the Respondent’s purpose to capitalize on the goodwill of the trademark and to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating consumer confusion on the source, sponsorship, affiliation or endorsement of its website. The use of the Complainant’s contact details at the time of registration of the disputed domain name confirms the Respondent’s intention to create such confusion. This constitutes bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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, <lvswarovski.com> be transferred to the Complainant.
Fabrizio La Spada
Dated: February 14, 2011