WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. zhang san
Case No. D2011-2076
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is zhang san of pu tian shi, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <crystalsswarovski.org>, <swarovski-outlet.com> (‘the Domain Names’) are registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2011. On November 25, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Domain Names. On November 28, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 28, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On November 30, 2011, the Complainant confirmed its request that English be the language of the proceedings in a Supplemental Complaint. The Respondent did not comment on the language of the proceedings by the specified due date.
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 December 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on January 11, 2012. 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 world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2010, The Complainant’s products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. It’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Complainant uses the SWAROVSKI trade marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. It has registered the SWAROVSKI trade marks globally including China. The registered trade marks in China include the SWAROVSKI trade mark in English and Chinese as well as in combination with the Complainant’s ‘Swan’ logo. The earliest Chinese trade mark registration for SWAROVSKI dates back to 1987.
The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI trade marks throughout China and worldwide. As a result, the SWAROVSKI trade marks have become famous and well-known in China.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com”.
The Respondent registered the Domain Name <swarovski-outlet.com> on March 3, 2011 and the Domain Name <crystalsswarovski.org> on April 5, 2011. The Domain Names are not currently connected to any active web pages. They were both previously (at least on July 12, 2011) connected to a website called “www.swarovski-outlet.com” which also bears the Complainant’s Swan logo. The website was in English and purports to sell discounted SWAROVSKI crystal jewellery.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the SWAROVSKI trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in paragraph 7 of Section VII of the Complaint as well as in the Supplemental Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the websites connected to the Domain Names were in English which demonstrates that the Respondent has proficiency and is able to communicate in English. The Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language. It is an international business which primarily operates in English. Conducting the proceedings in Chinese would disadvantage Swarovski as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark SWAROVSKI.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark SWAROVSKI is the dominant portion of the Domain Names. The addition of the descriptive/generic terms – ‘crystal’ and ‘outlet’ does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its SWAROVSKI trade mark in the Domain Names or any other manner. The Respondent is not commonly known by the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s SWAROVSKI mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. There appears to be a confusion in the Complaint and the Language of Proceeding request from the Complainant in relation to this. The Complainant contends in the Complaint that no websites were connected to Domain Names and ran arguments along the Telstra line of cases (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and paragraph 3.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However in the Language of Proceeding request, evidence was submitted of the websites that were connected to the Domain Names on July 12, 2011 which offered discounted SWAROVSKI products for sale. It is not clear when the websites were taken down. It would appear they were taken down before the filing of the Complaint. The fact remains that certainly at some point after the registration of the Domain Names, the active websites connected to the Domain Names showed a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant.
Even if this was a case where the Domain Names were not connected to any active websites, this passive holding of the Domain Names does not in these circumstances prevent a finding of bad faith use. The cumulative factors that have to be considered to make such a finding as stated in WIPO Overview 2.0 are present e.g. the Complainant has a well-known trade mark, no response to the Complaint was filed.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are 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 Domain Names <swarovski-outlet.com> and <crystalsswarovski.org> be transferred to the Complainant.
Dated: January 26, 2012