WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Chen Meifeng
Case No. D2011-0364
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Liechtenstein, represented by LegalBase (Pvt) Limited of Sri Lanka.
The Respondent is Chen Meifeng of Zhejiang, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <swarovskicn.com> is registered with Xin Net Technology Corporation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2011. On February 24, 2011, the Center transmitted by email to Xin Net Technology Corp. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On February 25, 2011, Xin Net Technology Corporation 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 March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on March 30, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 5, 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.
The Complaint was submitted in the English language. According to the response received from the Registrar, the language of the registration agreement for the disputed domain name is Chinese. On March 2,2011, the Center transmitted by e-mail to both parties a communication regarding the language of the proceeding requesting that Complainant provide reasoning by March 5, 2011 as to why the proceedings should be conducted in English. This communication also invited Respondent to submit comments in response to any communication transmitted by Complainant regarding the language of the proceedings by March 7, 2011. On March 3, 2011, Complainant responded to the Center’s communication requesting that English be recognized as the language of the administrative proceedings. No communication in objection to this request was submitted by Respondent. On March 9, 2011, the Center issued a communication confirming that the Complaint was accepted in the English language and offered the Respondent the opportunity to reply in the English or Chinese languages. Since no reply was submitted by Respondent, and the present circumstances do not indicate a prejudice to the Respondent, this decision is written in the English language.
4. Factual Background
Complainant is a producer of cut crystal, gemstones, and other decorative items based in Liechtenstein. Complainant owns registrations for its SWAROVSKI trademark in China for jewelry and precious stones in Class 14 including Registration No. 384001 for SWAROVSKI registered on July 30, 1987, Registration No. 385013 for SWAROVSKI (in Chinese) registered on August 30, 1989, Registration No. 361346 for SWAROVSKI (in Chinese) registered on September 20, 1989, and Registration No. 3520173 for SWAROVSKI Design (in English and Chinese) registered on November 7, 2004. Complainant also owns domain names incorporating its SWAROVSKI trademark including <swarovski.com> and <swarovski.net>, which were created on January 11, 1996 and April 16, 1998, respectively.
Respondent Chen Meifeng created the <swarovskicn.com> domain name on May 27, 2010.
5. Parties’ Contentions
Complainant claims to have production facilities in 19 countries, distribution to 43 countries, and a presence in over 120 countries and estimates that its 2009 worldwide revenue was EUR2.25 billion. Complainant claims to advertise its SWAROVSKI trademark worldwide and throughout China, and has provided copies of recent news articles from publications titled China Daily and Fashion Wear Today as evidence that its SWAROVSKI trademark is known in China. Further, Complainant has provided copies of an article from In Style magazine in the United Kingdom of Great Britain and Northern Ireland and a Newswire press release concerning the use of its goods in recent motion pictures as evidence of promotion of the goods sold under the SWAROVSKI mark and the public’s association of the SWAROVSKI mark with these goods.
Complainant has provided copies of the webpages featured on the disputed domain name <swarovskicn.com> which advertise various types of jewelry and crystal beads under Complainant’s SWAROVSKI trademark. Complainant claims that the use of its SWAROVSKI trademark in the disputed domain name and the advertisement of products using the SWAROVSKI trademark on webpages featured on the disputed domain name will cause Internet users to be deceived into believing that the disputed domain name <swarovskicn.com> is authorized by Complainant. While it is not clear whether the items featured on <swarovskicn.com> are legitimate, Complainant maintains that Respondent is not an authorized seller of its products, has no connection or affiliation with Complainant, and has not received a license or consent to use its SWAROVSKI trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel has reviewed the Complaint and annexes to the Complaint. The Panel’s findings are set forth below.
A. Identical or Confusingly Similar
The disputed domain name <swarovskicn.com> is confusingly similar to Complainant’s SWAROVSKI trademark in that Respondent adds only “cn” as a suffix. The Panel notes that the abbreviation “cn” corresponds to the International Organization for Standardization (“ISO”) country code and the country code top level domain (ccTLD) abbreviation corresponding to China. Because “cn” corresponds to the ISO and ccTLD codes for China, its use in the disputed domain name contributes to the likelihood that consumers will believe that the products offered originate from a China-based affiliate of Complainant. This likelihood of confusion is further accentuated given that the owner of the website is based in China and the contact phone number advertised on the website is based in China. Prior cases have held that the incorporation of an ISO or ccTLD code is a non-distinctive element which does not avoid confusing similarity. See, e.g., Samsung Electronics, Co., Ltd. v. Maksim, WIPO Case No. D2010-1274 and eBay Inc. v. David Sach, WIPO Case No. D2009-1083.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(1)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant registered its SWAROVSKI trademark in China in 1987 and registered the mark in other forms incorporating its Chinese language versions in 1989 and 2004. Complainant’s <swarovski.com> and <swarovski.net> domain names were created on January 11, 1996 and April 16, 1998, respectively.
The disputed domain name <swarovskicn.com> was created on May 27, 2010. Complainant’s trademark rights in SWAROVSKI precede this domain name registration. Additionally, Complainant’s domain names <swarovski.com> and <swarovski.net> were created prior to the disputed domain name.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s SWAROVSKI trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term ”swarovski” as such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The record shows that Complainant has trademark rights in SWAROVSKI and provides jewelry and gemstones under this mark. The website located at <swarovskicn.com> offers goods identical to those provided by Complainant under Complainant’s SWAROVSKI trademark. It is clear that Respondent was aware of Complainant’s trademark rights when registering the disputed domain name given that the domain name incorporates Complainant’s trademark in its entirety and the content of the associated website features goods identical to those offered by Complainant.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the <swarovskicn.com> based upon a bona fide intent to offer goods or services distinctive from those provided by Complainant under its SWAROVSKI trademarks. Moreover, the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names. There is no evidence in the record to refute this conclusion.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <swarovskicn.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: April 19, 2011