WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Christine Jil
Case No. D2011-2241
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Christine Jil of Monroe, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <swarovskicrystaloutlet.org> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2011. On December 20, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On the same day, GoDaddy.com, LLC 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 January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 24, 2012. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on January 25, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on January 30, 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 a 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. Its approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Complainant has registered several trade marks for SWAROVSKI globally and uses them in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories and other sectors. One such mark is the International Trademark, registration number 857107 for SWAROVSKI, registered on November 3, 2004.
The Complainant spends substantial time, effort and money advertising and promoting its mark and as a result, it has become famous. The Complainant has developed an enormous amount of goodwill in its mark.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to its official website, located at “www.swarovski.com”.
The Respondent registered the Domain Name on July 21, 2011. The Domain Name resolves to a website advertising for sale what is described as Swarovski products, e.g., “Swarovski Necklaces”, “Swarovski Earrings” and “Swarovski Bracelets”.
The Complainant and the Respondent have been in dispute before over the domain name <swarovskicrystaloutlet.com>, which was used for a similar purpose. That domain name was transferred to the Complainant pursuant to the decision in Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981.
5. Parties’ Contentions
The Domain Name is confusingly similar to the Complainant’s SWAROVSKI mark
The Respondent has used the SWAROVSKI mark in the Domain Name so as to cause confusion among Internet users between the Domain Name and the Complainant’s approved website. Internet users who intend to purchase Swarovski crystal products online may well type “swarovskicrystaloutlet.org” into the address bar on their web browser and be directed to the website of the Respondent, or type in “swarovski crystal outlet” into their search engine, which would bring up the Domain Name. Once at the Respondent’s website, Internet users will most likely be confused into thinking that it is the official site of the Complainant because of the use of the “Swarovski” name.
The addition of the terms “crystal” and “outlet” as suffixes to the SWAROVSKI mark in the Domain Name does not lessen the confusing similarity between the mark and Domain Name. The Complainant manufactures crystal jewellery and the use of the word “crystal” along with the SWAROVSKI mark is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity between mark and Domain Name. The use of the word “outlet” creates the impression that the website at the Domain Name contains information and products from the Complainant’s own outlets.
The Respondent has no rights or legitimate interests in the Domain Name
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 mark in a domain name or in any other manner. The Respondent has never been known by the Domain Name and has no legitimate interest in the SWAROVSKI mark or the name “Swarovski”.
In the earlier case involving the same parties referred to above (Swarovski Aktiengesellschaft v. Christine Jil, supra), the panel decided that, in relation to the domain name in dispute in that case, the Respondent had no legitimate interests or rights that justified the use of the SWAROVSKI mark.
The Respondent’s website is being used to advertise “purported” Swarovski products and the Domain Name misdirects internet traffic to that website. This is not a bona fide offering of goods or services and does not give the Respondent a legitimate interest in the Domain Name.
The Respondent has used the SWAROVSKI mark in the Domain Name to create the impression that she is associated with the Complainant. Furthermore, the Respondent has used the SWAROVSKI mark throughout her website further seeking to create the appearance of association with the Complainant.
The Respondent’s sale of “purported” Swarovski products demonstrates that she is not making a bona fide offering of goods or services, nor has a legitimate interest. Furthermore, purporting to sell Swarovski products does not give the Respondent the right to register and use the SWAROVSKI mark as a domain name without the consent of the Complainant. The Respondent is not an authorised agent of the Complainant and therefore does not have the right to use the SWAROVSKI mark in the Domain Name.
The Respondent’s use of the SWAROVSKI mark is clearly for the purpose of misleading consumers into believing that the Respondent and the website to which the Domain Name resolves are associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.
The domain name has been registered and is being used in bad faith
The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s mark at the time of registration of the Domain Name. The Complainant’s trademark is well known in the United States and worldwide. Moreover, the Respondent previously operated an online shop similar to the website to which the Domain Name resolves and a panel determined that such use constituted bad faith use for the purposes of the Policy (Swarovski Aktiengesellschaft v. Christine Jil, supra).
Furthermore, the Respondent’s registration and use of the Domain Name creates “initial interest confusion”, which attracts Internet users to the website to which it resolves.
The Respondent, without valid consent, utilises the SWAROVSKI mark on her website and offers products identical to or similar to the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant clearly has well established rights in the mark SWAROVSKI. The Domain Name incorporates the Complainant’s mark in its entirety as the first and most prominent word, which is then followed by the words “crystal” and “outlet” The suffix “.org” is to be disregarded for comparison purposes.
In Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903, it was said “[a]s numerous prior panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v. Off Road Equipment Parts, [NAF Case No.] FA0008000095497 (“parts” added to mark CAT in <catparts.com>); Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995 (“-parts” added to mark KOMATSU in <komatsu-parts.com>).”
However, it is possible that the addition of a particular word or words before or after a trademark could militate against a finding of confusing similarity and each domain name must be looked at individually. Here, as the SWAROVSKI mark is incorporated into the Domain Name in its entirety, it can certainly be said that they are similar. If the SWAROVSKI mark was the only element of the Domain Name, the two would be identical and obviously confusingly similar. The question that therefore arises is does the addition of the ordinary descriptive or generic words “crystal” and “outlet”, turn what would otherwise be an identical domain name into one that is similar but not confusingly similar? The answer must surely be in the negative, given that the additional words are, in the case of “crystal”, descriptive of the kinds of goods sold by the Complainant, and the word “outlet” is a common generic term used by retailers offering goods for sale. The Panel is therefore of the view that the additional words do nothing to reduce confusing similarity between mark and Domain Name. An Internet user may well form the view that the owner of the Domain Name is also the owner of the SWAROVSKI trademark to which it is similar, or at least that there is some form of association between the Respondent and the Complainant. The Complainant has therefore satisfied the requirement of confusing similarity.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant appears to have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. If that is the case, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that she does in fact have such rights or legitimate interests. The Respondent has not however done so. Nevertheless, before concluding that a prima facie case has indeed been made out, it is perhaps appropriate to test that prima facie case against the most likely countervailing factors in the circumstances of this proceeding.
The Respondent sells on the website to which the Domain Name resolves goods under the Complainant’s mark. It is not clear if the Complainant is alleging that such goods are not genuine Swarovski goods, or that the website contains goods of competitors or links to websites on which competing goods are offered for sale. For present purposes, however, and to provide the most challenging framework against which to test the Complainant’s case, the Panel will assume that the goods sold are genuine Swarovski goods and that no competing goods or links to other sites on which competing goods might be found are present on the website to which the Domain Name resolves.
One of the ways in which a respondent may demonstrate its rights to and legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy is to show “[..]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.” This is one of the sets of circumstances, in the non-exhaustive list in paragraph 4(c) of the Policy which, if established, could demonstrate rights to and legitimate interests in a domain name. Whilst the Respondent has not advanced this argument, or indeed any other, could it be said that there is a bona fide offering of goods? Certainly goods under the SWAROVSKI mark are offered and are assumed, for this analysis, to be genuine. The Complainant relies, amongst other matters, on the fact that the Respondent is not an authorized reseller. But this in itself does not necessarily mean that there is not a bona fide offering of goods. More must be shown if a complainant is to succeed. This area has been recognized by past UDRP panels as difficult, but there has emerged a line of authority which provides some guidance.
Thus, in the Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, also a case where the domain name owner was not authorized to sell products by the trade mark owner, the Panel said:
“The extent to which a seller of legitimate goods or services can reflect that fact by using the manufacturer’s name as part of a domain name is a difficult issue. Some uses may be legitimate, others not, depending on the extent to which they accurately reflect the user’s connection with the mark owner (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
In this case, there is no dispute that the websites under the disputed Domain Names offer Porsche goods and services since prior to the commencement of this case. Internet users are invited to view offers for the purchase of used Porsche cars or to place advertisements for the sale of used Porsche cars. The only issue before the Panel, then, is whether the Respondent’s offerings may be characterized as bona fide.
To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include, the following:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.”
Adopting this criteria, and applying it to the facts of this proceeding, the Panel is satisfied that the Respondent would likely find it difficult to rebut the prima facie case against her and perhaps that explains why she has not tried to do so. In particular, no or no sufficient steps appear to have been taken to avoid confusion1.
The Respondent, having failed to satisfy the burden of production falling upon her to come forward with appropriate arguments or evidence demonstrating that she does in fact have rights or legitimate interests in the Domain Name, the Panel is satisfied that none exist.
The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, which the Respondent has failed to rebut..
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
The Complainant appears to rely, inter alia, on the last of these circumstances, i.e. “[…] by using the domain name, you 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 web site or location or of a product or service on your web site or location.” (Paragraph 4(b)(iv) of the Policy.)
It is clear, given the fame of the Complainant’s mark, the previous WIPO Case No. D2011-0981 referred to earlier and the use to which the Domain Name has been put, that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered. Indeed, it is unlikely that the Respondent would choose the Domain Name she did, unless seeking to create an impression of association with the Complainant. However, no obvious steps have been taken by the Respondent to prevent the risk of confusion and there is clearly a likelihood of Internet users concluding, wrongly, that some form of association between Complainant and Respondent exists. The Respondent must have known this when registering and using the Domain Name. Accordingly, for the purposes of the Policy, the Panel is satisfied that there has been both registration and use of the Domain Name 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 Name <swarovskicrystaloutlet.org> be transferred to the Complainant.
Dated: February 20, 2012
1 In any event, it does appear that there are links on the Respondent’s website through which an Internet user can be transferred to sites selling competing goods.