WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. PrivacyProtect.org Domain Admin / Trade Out Investments Ltd
Case No. D2011-1522
1. The Parties
Complainant is Swarovski Aktiengesellschaft, Triesen of Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is PrivacyProtect.org Domain Admin/Trade Out Investments Ltd, Nobby Beach, Australia and Caracas, Venezuela, respectively.
2. The Domain Name and Registrar
The disputed domain name <swarovskioutlet.com> (the “Disputed Domain Name”) is registered with Power Brand Center Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The Center sent several reminders to the Registrar and on September 29, 2011 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 Complainant on September 30, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 5, 2011.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 22, 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
Complainant Swarovski Aktiengesellschaft owns numerous international registered trademarks for SWAROVSKI, including registrations in the United States of America, Australia, and other locations.
Complainant’s registrations include Australian Registration No. 224727, dated June 12, 1968 for “Genuine and artificial jewellery, jewels, stones cut and uncut, badges, beads made of glass or plastic, jewel lockets, pierced or unpierced (all these articles set or loose) bands for wear on arms, ankles, head etc., if in the nature of jewellery whether ornamental or not” (the “Mark”). Complainant also provides a list of a number of other worldwide trademark registrations; evidence that it owns a Web site associated with the Mark, that is “www.swarovski.com”, which was registered on January 11, 1996; and finally a selection of news articles that show widespread public use by Complainant of the SWAROVSKI Mark.
Respondent, at the time the Complaint was filed, was listed in the WhoIs information as PrivacyProtect.org, Domain Admin. The WhoIs information also notes that the Disputed Domain Name was registered by Respondent on April 26, 2007. Respondent has not responded to communication attempts by Complainant and the Center. Respondent does not appear to use the Disputed Domain Name for any particular goods or services, but rather as a parked page with apparently sponsored links.
5. Parties’ Contentions
Complainant requests that the Disputed Domain Name be transferred to Complainant. First, Complainant argues that the Disputed Domain Name is confusingly similar to the Mark because the Disputed Domain Name, <swarovskioutlet.com>, is identical to the Mark, but merely includes the generic word “outlet” after the Mark. Complainant argues that this causes confusion in consumers seeking goods and services associated with the Mark.
Second, Complainant argues that Respondent has no legitimate interests or rights in the Disputed Domain Name, because Respondent has not shown that it was ever known by the Disputed Domain Name, and neither has Respondent shown that it is making a bona fide commercial or fair use of it.
Finally, Complainant argues that the Disputed Domain Name was registered and is being used in bad faith. Complainant argues that at the time of registration, there was widespread awareness of the Mark, and that there can be no other reasonable interpretation of Respondent’s registration except to capitalize on the Complainant’s Mark. Second, Complainant argues that Respondent is using the Disputed Domain Name in bad faith because Respondent does not actively use the Web site except to divert the interest of those searching for the Mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trade mark or service in which Complainant has rights;
ii that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and
iii that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has sufficiently demonstrated that the Disputed Domain Name is confusingly similar to the Mark.
Adding a generic term to a trademark within a domain name does not alleviate the confusion that arises from the use of the mark. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (adding various generic terms to the complainant's PEPSI mark did not alter the overall impression that the disputed domain names were connected to the complainant); The American Automobile Association, Inc. v. Rami Smair, WIPO Case No. D2009-0294 (confusion found where generic terms were added to AAA mark for insurance services).
Here, the addition of the word “outlet” to the SWAROVSKI Mark does not cure the Disputed Domain Name of its confusing nature. For this reason, the Panel concludes that Complainant has proven that the Disputed Domain Name is identical or confusingly similar to Complainant’s valid Mark.
B. Rights or Legitimate Interests
Complainant has sufficiently shown Respondent lacks any rights or legitimate interests in the Disputed Domain Name.
First, Respondent has not submitted any evidence that it is or has been known by the Disputed Domain Name. Second, there is no evidence that Respondent has used the Disputed Domain Name in connection with a bona fide offering of goods or services. Currently, the Disputed Domain Name resolves to a parked page that ostensibly diverts interest in SWAROVSKI and generates click revenue for Respondent. As explained further in the following section, this use is not a legitimate interest under the Policy, and in fact is more appropriately evidence of bad faith.
For these reasons, the Panel concludes that Respondent has shown no rights or legitimate interests in the Disputed Domain Name
C. Registered and Used in Bad Faith
Complainant has provided adequate evidence that Respondent registered and is using the Disputed Domain Name in bad faith.
First, in this Panel’s view, bad faith may be found where a domain name “is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” See, e.g., Oakley Inc. v. Li Susanto, WIPO Case No. D2010-0496 (citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). There is sufficient evidence before the Panel that the Disputed Domain Name was used in “opportunistic bad faith.” See id. The Disputed Domain Name appears obviously connected with the well known Mark, and Respondent appears to have no connection to the Mark or its products.
Second, registering a domain name “with knowledge of another company's rights in the name, and with intention to divert traffic is evidence of bad faith.” See, e.g., Digital Spy Limited. v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160. Considering all of the facts, it is difficult to believe that Respondent did not have notice of Complainant’s Mark. Complainant has provided evidence of numerous trademark registrations pre-dating Respondent’s registration in 2007 of the Disputed Domain Name, as well as evidence of widespread recognition of the Mark itself. Indeed, it appears the very purpose of Respondent’s registration was to attract consumers based on the existing recognition of the SWAROVSKI Mark. As noted above, the Disputed Domain Name resolves to a parked page with advertising links, which divert interest in SWAROVSKI in order to generate click revenue for Respondent. In this Panel’s view, this may be evidence of bad faith. See id.
Accordingly, for the foregoing reasons, the Panel finds that Complainant has met its burden and shown the Disputed Domain Name was registered and is being used in bad faith.
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 Name, <swarovskioutlet.com>, be transferred to Complainant.
Maxim H. Waldbaum
Dated: December 6, 2011