WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Wentian, tian wen
Case No. D2012-0159
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Wentian, tian wen of Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskicrystalsales.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2012. On January 31, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On January 31, 2012, Name.com LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information.
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 February 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2012.
The Center appointed David J.A. Cairns as the sole panelist in this matter on March 9, 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 owner of various registered trademarks in Europe, China and internationally including: (i) Community Trademark Nº 007462922 for the word mark SWAROVSKI registered on July 21, 2009; (ii) Community Trademark Nº 003895091 for the word mark SWAROVSKI registered on August 23, 2005; and (iii) China trademark registration Nº 384001 for the trademark SWAROVSKI renewed in 2008 until July 29, 2017.
The Complainant also owns various trademarks for a swan device.
The Complainant has registered several domain names including the word “swarovski”, and operates its principal website at “www.swarovski.com”.
The disputed domain name was registered on December 16, 2011. The Panel entered the disputed domain name in his web browser on March 15, 2012. There appeared a webpage offering for sale Swarvoski jewellery. From the landing page there was a link to a page entitled “About us” where the following statement appeared: “Our company is official authorization pro shop, the main product includes: Swarovski Bracelets, Swarovski Necklace, Swarovski Rings, Swarovski Earrings, Swarovski Brooch, Swarovski Sets. Because our products come from the OEM factory directly and the properly tested and through the network selling we can save the charges from shop rent, logistic, advertising etc. That's why our products sell in such low price and good-quality. Our aim is to wish more people can own our items and enjoy the brand charming.”
The trademark SWAROVSKI appears prominently on the Respondent’s website, as does the Complainant’s swan device.
5. Parties’ Contentions
The Complainant states that it is the world’s leading producer of cut crystal, genuine gem stones, and created stones with production facilities in 18 countries, distribution to 42 countries and presence in more than 120 countries.
It states that it has developed an enormous goodwill in the SWAROVSKI trademarks internationally, including in China.
The Complainant states that the Respondent is using the disputed domain name to operate an online shop, in a manner which confuses consumers into believing that the website is an official Swarovski website and/or the Respondent is affiliated with or authorised to sell products by Swarovski. The Complainant notes that the Respondent’s website does not distinguish itself from the Complainant or disclaim association or authorisation from the Complainant. To the contrary, it clearly intends to give consumers the impression of affiliation or authorisation by the Complainant. The Complainant states that the Respondent is not an authorised seller of SWAROVSKI products, and the Complainant does not guarantee the authenticity or quality of the products sold on the Respondent’s website.
The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant’s SWAROVSKI trademark. It states that consumers expect to find a trademark owner on the Internet at a domain name comprising the company’s name or trademark. There is”initial interest confusion” or diversion of traffic, which is illegal because it wrongfully capitalises on the Complainant’s goodwill in the SWAROVSKI trademarks. It states that the doctrine of”initial interest confusion” has been applied in numerous UDRP cases.
The Complainant states that the suffixes “crystal” and “sales” do not lessen the confusing similarity between the disputed domain name and the Complainant’s SWAROVSKI trademark. It states that the addition of generic words like “crystal” and “sales” to a trademark are not sufficient differentiation from the trademark to avoid a finding of confusing similarity. It also notes that previous WIPO UDRP panels have held that a domain name is confusingly similar to a trademark where the domain name incorporates the trademark in its entirety.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the Respondent has no connection or affiliation with the Complainant, and has not received any license or consent, express or implied, to use this SWAROVSKI trademark in a domain name or in any other matter. It states that the Respondent has never been known by the disputed domain name. It also states that the disputed domain name is being used to advertise purported SWAROVSKI products and the disputed domain name misdirects traffic to the Respondent’s website, which is contrary to a bona fide offering of goods and services or a legitimate interest. The Complainant states that purporting to sell SWAROVSKI products does not give the Respondent the right to register and use the SWAROVSKI trademark as a domain name without the consent of the Complainant. The Complainant states that the Respondent is not an authorised Swarovski agent, and therefore does have any right to use SWAROVSKI trademark in the disputed domain name.
The Complainant notes that its trademark is famous and well-known, and was clearly chosen by the Respondent for the purpose of misleading customers into believing that the Respondent and its website are associated with or approved by the Complainant.
The Complainant states that the disputed domain name has been registered and is being used in bad faith. It states that the Respondent registered the disputed domain name in bad faith because it was registered with knowledge of the Complainant’s rights in the SWAROVSKI trademark, as it was inconceivable that the Respondent was unaware of the Complainant’s rights in the trademarks. The Complainant states that registration of a famous mark as a domain name by an entity that has no legitimate relationship with the trademark is itself sufficient to demonstrate bad faith (referring to UDRP decisions).
As regards the use of the disputed domain name, the Complainant states that the Respondent has done nothing to identify itself as independent from the Complainant. On the contrary, the Respondent has incorporated the SWAROVSKI trademarks in the infringing domain name, and on the infringing website, and purports to sell SWAROVSKI products. It also states that the “initial interest confusion” is further evidence of the Respondent’s bad faith registration and use of the disputed domain names. The Complainant states that the Respondent’s bad faith is further compounded by the Respondent’s efforts to mislead consumers into believing that the website was operated or authorised by the Complainant.
The Complainant requests that the administrative Panel issue a decision that the registration of the disputed domain name is transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the SWAROVSKI trademark by virtue of its trademark registrations referred to above.
The disputed domain name consists of the mark SWAROVSKI and the suffix “crystalsales”. The disputed domain name is not identical to the Complainant’s trademark and so the Panel turns to consider whether it is confusingly similar to the SWAROVSKI trademark.
In Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, the panel held that the fact that a domain name incorporates a trademark in its entirety is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin”.
In some circumstances a descriptive suffix may reduce or eliminate the confusion arising from the use of a trademark, such as where the trademark is not distinctive or strong in secondary meaning. For example, in Digital City, Inc. v. Smalldomain, WIPO Case No. D2000-1283, the panel stated that: “consumers are not likely to be confused where (1) a domain name comprises a mark and a suffix; (2) where that mark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection; and (3) where the suffix (or the domain name as a whole) does not relate specifically to the business of the Complainant”.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI trademark for the following reasons: (i) the SWAROVSKI trademark is distinctive with its distinctiveness reinforced by many years of use and its extensive international reputation and goodwill; (ii) the “crystalsales” suffix is a descriptive phrase composed of two words; (iii) the suffix refers to the availability for sale of a product sold by the Complainant under the SWAROVSKI trademark (i.e., crystal); (iv) the suffix therefore relies on and emphasises the trademark element of the disputed domain name, and relates specifically to the business and products of the Complainant; and (v) Internet users will associate the disputed domain name with the Complainant’s trademark, and believe that the disputed domain name relates to the sale of the Complainant’s crystal products.
Therefore, the suffix “crystalsales” does not avoid a confusing similarity between the Complainant’s SWAROVSKI trademark and the disputed domain name, and so the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the SWAROVSKI trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has been making a commercial use of the disputed domain name so the circumstances described in paragraph 4(c)(iii) do not exist in the present case.
This case raises the issue of whether the Respondent has been using the domain name in connection with a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy. The Panel notes that it is not clear from the evidence whether the goods sold on the Respondent’s website are authentic products of the Complainant or counterfeit products. If they are counterfeit products then clearly their sale is not bona fide and the Respondent has no rights or legitimate interests in the disputed domain name.
If the Respondent is offering for sale genuine SWARVOSKI products then the questions of rights or legitimate interests falls to be determined by the principles of the well known decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). Oki Data is described in ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936, as “the prevailing view” on whether an offering of goods or services by a reseller may be regarded as bona fide for the purposes of paragraph 4(c)(i) of the Policy, and is endorsed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3.
Oki Data laid down four requirements that must be met before it may be said that a reseller of goods or services is making a bona fide offering. Those four requirements are as follows:
“- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR) (bait and switch is not legitimate).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of the Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”
In the application of the Oki Data principles to the current case, on the assumption that the Respondent is selling genuine SWARVOSKI products, then the first two requirements are satisfied. As to the second requirement, there is no evidence in the record or on the website that the Respondent is offering for sale products of other manufacturers or of competitors of the Complainant.
However, the Respondent manifestly fails the third requirement. Indeed, rather than accurately disclosing the relationship of the Respondent’s website with the trademark owner, the website positively misrepresents this relationship. The Respondent’s website states that it has ‘official authorization’ which is false, and is calculated to deceive on-line purchasers. This deception is compounded by the Respondent’s prominent use of the Complainant’s SWARVOSKI and swan device trademarks. This representation of official authorisation as well as the prominent use of trademarks suggests that the trademark owner has approved the Respondent’s sales of its products, and is therefore probably exercising some form of quality control over the Respondent’s sales, and may accept responsibility for defective products of unsatisfactory service. The false representation of the authorisation or approval of the trademark owner is a very serious form of consumer deception in relation to an on-line business where Internet users always face problems separating legitimate from fraudulent sellers.
For these reasons the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. The Respondent’s use of the disputed domain name in the present case falls within paragraph 4(b)(iv): by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the website or location or of a product or service on the website or location.
The Respondent uses the website for commercial gain by offering for sales products purportedly of the Complainant. The likelihood of confusion is established by the confusing similarity between the Complainant’s SWARVOSKI trademark and the disputed domain name. Internet users are likely to assume that this website is affiliated to or endorsed by the Complainant because: (i) the website makes an explicit false representation of “official authorization”; and (ii) the website prominently displays the Complainant’s SWARVOSKI and swan device trademarks in a manner that, in the absence of any disclaimer, conveys the impression of affiliation to or endorsement by the trademark owner.
The Respondent knew of the Complainant’s famous trademark at the time of registration and in the Panel’s view intentionally set out to exploit the Complainant’s goodwill to generate revenue.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent.
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, <swarovskicrystalsales.com> be transferred to the Complainant.
David J.A. Cairns
Dated: March 22, 2012