World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Domain Administrator / Pepito DZZD

Case No. D2011-1213

1. The Parties

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

The Respondent is Domain Administrator / Pepito DZZD of Pleven, Bulgaria.

2. The Domain Names And Registrar

The disputed domain names <svarovskibg.com> and <swarovskibg.com> are registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 15, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On July 15, 2011, eNom, 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 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 August 1, 2011.

The Respondent communicated via email a suggestion to “down this domain” on August 3, 2011. In light of this the Center invited the Complainant to request suspension of the proceedings should the Complainant wish to negotiate a settlement with the Respondent. The Complainant sought further clarification on August 4, 2011 from the Respondent as to the offer that was being made to the Complainant. The Respondent replied (to the understanding of the Panel) that the domain names would be cancelled in return for money being paid by the Complainant for this. The Complainant requested the Center to grant an extension to the deadline for the request to suspend the proceedings to August 8, 2011, which was granted by the Center on August 5, 2011. On August 8, 2011 the Complainant requested the Center to proceed with the proceedings since the last request from the Respondent included a request for money to be paid by the Complainant for the cancellation of the registration of the disputed domain names, while the Complainant requested a transfer of the disputed domain names.

In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2011.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on August 30, 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 uses the swarovski trademark in connection with crystal jewelry stones and crystalline semi-finished goods for fashion, jewelry, home accessories, collectibles and lightning industries.

The complainant 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. In 2009 the complainant’s products were sold in 1,014 of its own boutiques and through 819 partner-operated boutiques worldwide.

The complainant has registered both the swarovski global trademark and the swarovski trademark in bulgaria (dating from 2009). The complainant has spent time, effort and money advertising and promoting the swarovski trademark in bulgaria and worldwide, thus accumulating goodwill in relating to the swarovski trademark.

The complainant also has registered several domain names, including <swarovski.com> and <swarovski.net> which point to the complainant’s official website, which enables internet users to access information regarding the complainant’s products and to purchase genuine products of the complainant.

The disputed domain names <swarovskibg.com> and <svarovskibg.com> were registered on may 9, 2011 and may 16, 2011 respectively.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain names are confusingly similar to the SWAROVSKI trademark of the Complainant. Previous WIPO UDRP decisions have 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.

- The Respondent has used the Complainant’s SWAROVSKI trademark on websites associated with the disputed domain names in a way as to cause confusion amongst Internet users between the disputed domain names (as well as websites associated with them) and websites that are approved by the Complainant. Internet users that intend to purchase the Complainant’s products online may type in the disputed domain names (if searching to purchase the Complainant’s products in Bulgaria) and be directed to the Respondent’s domain names and websites associated with them. In relation to <svarovskibg.com> domain name, it is not uncommon for users to mistype a domain name or use alternative spelling for a company name.

- By misdirecting users to the disputed domain names, the Respondent is taking advantage of those domain names for its own commercial gain. Once arriving at the websites associated with the disputed domain names, Internet users will be either frustrated or confused at not having reached the Complainant’s official websites. This is not permissible due to the fact that the Respondent has capitalized wrongfully on the SWAROVSKI trademark of the Complainant to divert Internet traffic to the disputed domain names and websites associated with them.

- The addition of a suffix in the disputed domain names does not lessen the confusing similarity to the SWAROVSKI trademark of the Complainant. The addition of “bg” (a commonly used abbreviation of Bulgaria) does not differentiate the disputed domain names enough so as to not cause confusion amongst Internet users. Previous WIPO UDRP decisions have found that the addition of a geographical indicator as a suffix does not serve to differentiate the disputed domain names from the SWAROVSKI trademark of the Complainant.

- Furthermore the disputed domain names incorporate the SWAROVSKI trademark of the Complainant in its entirety.

- In case of the disputed domain name <svarovskibg.com> the second letter of the disputed domain name is “v” rather than “w” when compared to the SWAROVSKI trademark of the Complainant. A slightly misspelt version of a trademark may still in fact be confusingly similar to the trademark itself. Furthermore in this case the misspelling is phonetically similar to the SWAROVSKI trademark of the Complainant, so the disputed domain name has to be considered to be confusingly similar to the SWAROVSKI trademark. Therefore the addition of a misspelt version of the SWAROVSKI trademark of the Complainant does nothing to lessen confusing similarity and previously WIPO UDRP decisions have found confusing similarity in cases where geographical and descriptive suffixes were added to misspelled versions of trademarks.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The disputed domain names were registered in May 2011, which means that the Complainant’s SWAROVSKI trademark predates the registration of the disputed domain names.

- The Respondent has no connection of affiliation with the Complainant and further the Complainant has not granted any license, consents, express or implied to use the SWAROVSKI trademark of the Complainant as part of the disputed domain names or in any other fashion.

- The Respondent has not been known by the disputed domain names and has no legitimate interests in the SWAROVSKI trademark of the Complainant or the name “swarovski”.

- The disputed domain names misdirect Internet traffic to the websites associated with them, which is contrary to a bona fide offering of goods or services or representing a legitimate interest.

- The SWAROVSKI trademark of the Complainant has been used in the disputed domain names to create an impression that the disputed domain names and the websites associated with them are in fact related to the Complainant. This has occurred due to the fact that the SWAROVSKI trademark of the Complainant is famous and well-known and the Respondent is trying to create an impression of association with the Complainant.

- Even if the goods sold via and information provided on the websites associated with the disputed domain names is genuine, this does not provide the Respondent with a right to use the SWAROVSKI trademark of the Complainant in the disputed domain names.

- The websites associated with the disputed domain names claim to sell genuine products of the Complainant. However this cannot constitute a bona fide offering of goods or services and does not create any legitimate interest. This is due to the fact that the Respondent chose to incorporate the SWAROVSKI trademark of the Complainant in the disputed domain names as well as websites associated with them without authorization from the Complainant and therefore this cannot constitute a bona fide offering.

(c) The disputed domain names were registered and are being used in bad faith:

- The disputed domain names were registered in bad faith, as it is inconceivable that the Respondent was not aware of the SWAROVSKI trademark of the Complainant at the time of the registrations. Furthermore the fame and reputation of the SWAROVSKI trademark of the Complainant leaves no other possible interpretation of the Respondent’s registration of the disputed domain names other than that of bad faith.

- Registration of the disputed domain names incorporating the SWAROVSKI trademark of the Complainant by the Respondent, who has no legitimate relationship with the SWAROVSKI trademark, is in itself sufficient to demonstrate bad faith.

- There can be no reasonable doubt that the Respondent was aware of the SWAROVSKI trademark of the Complainant at the time of the registration of the disputed domain names. Numerous references to the SWAROVSKI trademark of the Complainant are made on the websites associated with the disputed domain names, which indicates that the Respondent was aware of the Complainant’s business and products at the time of registration of the disputed domain names.

- Bad faith is further evidenced by the fact that the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the websites associated with the disputed domain names by creating a likelihood of confusion with the SWAROVSKI trademark of the Complainant as to the source, sponsorship, affiliation or endorsements of the websites or of a product or service on the related websites.

In relation to the disputed domain name <swarovskibg.com>, which incorporates the SWAROVSKI trademark of the Complainant in its entirety, such registration cannot be a mere coincidence since “swarovski” is not a descriptive or generic term but a famous and well-known trademark of the Complainant. Inclusion of a geographical indicator only works to strengthen the association with the Complainant. Viewers from the <swarovskibg.com> website (which does not offer goods for sale) are redirected to the <svarovskibg.com> website where purported goods of the Complainant are being sold, clearly evidencing bad faith.

The disputed domain name <svarovskibg.com> directs to an online shop, which offers for sale a variety of goods similar to those sold on the genuine website of the Complainant. The deliberate misspelling of the SWAROVSKI trademark of the Complainant (“v” instead of “w”) is enough evidence to support bad faith registration by the Respondent.

The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent was aware of the SWAROVSKI trademark of the Complainant at the time of registration of the disputed domain names. The SWAROVSKI trademark of the Complainant is well-known both in Bulgaria and globally while the disputed domain names are confusingly similar to the SWAROVSKI trademark of the Complainant.

The Respondent’s use of the disputed domain names and the websites associated with them risk Internet users confusing those domain names and websites with those that are genuine and operated by the Complainant. This misleads the users into thinking that those domain names and websites are associated with the Complainant, which further contributes to evidencing bad faith use of the disputed domain names. Further evidence of bad faith use is from the fact that the Respondent is attempting to attract Internet users for commercial gain by creating confusion amongst consumers by using the SWAROVSKI trademark of the Complainant and by making users believe that the websites associated with the disputed domain names are in some way related to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, as stated previously, the Respondent submitted an informal email communication on August 3, 2011.

6. Discussion And Findings

A. Identical or Confusingly Similar

The Complainant has registered the SWAROVSKI trademark in a number of jurisdictions, with registration in Bulgaria dating back from 2009. The Complainant submits that the disputed domain names are confusingly similar to its trademark as the disputed domain names incorporate the SWAROVSKI trademark in its entirety. As the word “swarovski” has no meaning in the English language, the Panel finds the Complainant’s SWAROVSKI trademark to be highly distinctive.

In relation to the incorporation in the disputed domain names of the generic or descriptive geographical indicator “bg” the Panel finds that the inclusion of a generic or descriptive geographical indicator together with a trademark cannot contribute to distinguishing the disputed domain names from a registered trademark where such domain names incorporate a distinctive trademark. The Panel finds that due to the high distinctiveness of the SWAROVSKI trademark of the Complainant, the addition of the merely generic or descriptive geographical indicator “bg” in the disputed domain names does not avoid a finding of confusing similarity in this case. The Panel here notes that “bg” is a widely used abbreviation for Bulgaria (a country to which the websites associated with the disputed domain names are targeted at).

Indeed, the inclusion of a generic or descriptive geographical indicator together with a trademark in the disputed domain names may increase the risk of confusion for Internet users taking into account that the Respondent is using the disputed domain names to link to a website that is offering the ability to purchase goods that are purportedly those of the Complainant, sold under the SWAROVSKI trademark of the Complainant and furthermore are sold in Bulgaria. This may lead Internet users to believe that the websites associated with the disputed domain names are in fact a genuine operation of the Complainant in that country.

The disputed domain name <svarovskibg.com> includes a misspelt version of the SWAROVSKI trademark of the Complainant. Given that phonetically they are identical or highly similar, the Panel finds that this does not prevent the “svarovski” part of the disputed domain name being identical or confusingly similar to the SWAROVSKI trademark of the Complainant. The Panel also notes that it is quite common for Internet users to mistype a letter where the phonetically the correct and incorrect spelling would be identical or similar (in this case “v” and “w”). The addition of a generic or descriptive geographical indicator, as discussed above, to a misspelt version of a highly distinctive trademark cannot avoid the finding of confusing similarity.

It is clear in the Panel’s view that in the mind of an Internet user the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it. (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Accordingly, the Panel finds the incorporation of the merely generic or descriptive geographical indicator “bg” in the disputed domain names <swarovskibg.com> and <svarovskibg.com> does not prevent a finding of confusingly similarity to the Complainant’s trademark SWAROVSKI.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel needs to consider whether the Respondent has rights or legitimate interests in the disputed domain names.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing evidence under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain names for a bona fide offering of goods or services.

According to the documents submitted by the Complainant the disputed domain names link to a website that is in the business of offering for sale goods that are sold under the SWAROVSKI trademark of the Complainant, which are purported to be genuine according to the website associated with the disputed domain names. The Complainant further contends that it has not granted any permission to the Respondent to use the SWAROVSKI trademark of the Complainant in any way, such as incorporating it in the disputed domain names or using it on websites associated with them.

This use of the disputed domain names, in this Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.

The disputed domain names were registered in May 2011, while the Complainant has been trading and acquiring goodwill in its SWAROVSKI trademark both internationally and in Bulgaria in particular much earlier than the registration of the disputed domain names so it is highly unlikely that the Respondent has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain names with full awareness of the Complainant’s SWAROVSKI trademark as well as the goodwill associated with it. This is evidenced by the Respondent’s use of the SWAROVKSI trademark of the Complainant both in the disputed domain names and throughout the websites associated with them.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain names (by linking to a website that offers goods for sale). The Respondent is using the disputed domain names to further misleadingly divert customers to websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain names are used in connection with the offering for sale of goods under the SWAROVSKI trademark of the Complainant that are purportedly genuine. The Complainant further contends that the disputed domain names were registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain names as well as associated websites with the SWAROVSKI trademark of the Complainant.

The Panel finds that the Respondent's use of the disputed domain names has created a risk of confusion with the Complainant’s products and the SWAROVSKI trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain names and the websites associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain names.

The Panel holds that the Respondent has registered the disputed domain names in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the SWAROVSKI trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain names, lead the Panel to conclude that the disputed domain names were registered and used by the Respondent in bad faith.

Moreover, the Panel draws inferences of bad faith from the fact that the websites associated with the disputed domain names are selling goods under the SWAROVSKI trademark that are purportedly genuine. The Complainant contends that it has never authorized the Respondent to be a representative or to sell products of the Complainant.

The Panel also draws inferences of bad faith from the lack of a formal response from the Respondent to the Complaint. The Panel draws further bad faith evidence by the fact that the Respondent replied directly to the Complainant upon notice of these proceedings offering to cancel the disputed domain names for an undisclosed fee but without giving much detail or any undertakings. This clearly indicates that the Respondent registered the disputed domain names opportunistically in order to attract commercial gain though one method or another and presents clear evidence of bad faith.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <swarovskibg.com> and <svarovskibg.com>, be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Dated: September 14, 2011

 

Explore WIPO