WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Stewart Donald
Case No. D2012-0169
Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Stewart Donald of New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <swarovski-uk.com> and <swarovskiukcrystal.com> are registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 1, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 7, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 5, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on March 21, 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
Complainant is a corporation organized under the laws of Liechtenstein. Complainant belongs to the world leading producers of cut crystal, genuine gemstones and created stones with production and distribution facilities as well as shop presences in many countries worldwide.
The SWAROVSKI trademark is registered in favor of Complainant in numerous countries around the world. Complainant has submitted evidence that it holds, inter alia:
International word mark SWAROVSKI, Trademark under Madrid Agreement and Madrid Protocol, International Registration Number: 857107; Registration Date: November 3, 2004; Status: Active.
U.S. word mark SWAROVSKI, United States Patent and Trademark Office (USPTO) Registration Number: 0934915; Registration Date: May 30, 1972; Status: Active.
U.S. word mark SWAROVSKI, United States Patent and Trademark Office (USPTO) Registration Number: 1739479; Registration Date: December 15, 1992; Status: Active.
U.S. word mark SWAROVSKI, United States Patent and Trademark Office (USPTO) Registration Number: 2402230; Registration Date: November 07, 2000; Status: Active.
U.S. word mark SWAROVSKI, United States Patent and Trademark Office (USPTO) Registration Number: 3864495; Registration Date: October 19, 2010; Status: Active.
The disputed domain name <swarovski-uk.com> was registered on December 11, 2011 and the disputed domain name <swarovskiukcrystal.com> was registered on January 13, 2012, respectively. Both domain names redirect to websites that operate online shops purporting to sell original Swarovski products.
Complainant requests the disputed domain names to be transferred to Complainant.
5. Parties’ Contentions
Complainant claims to be the world 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. Complainant contends that in 2010 alone, Swarovski products were sold in 1,084 of its own boutiques and through 889 partner-operated boutiques worldwide with an approximate worldwide revenue in 2010 of EUR 2.66 billion.
Complainant asserts to have spent substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout the United States of America with the result that the SWAROVSKI marks have become famous and well-known.
Complainant explains to be particularly concerned about the possibility of cyber flight in the case at hand and, therefore, has decided not to provide Respondent with a cease and desist letter but to commence this administrative proceeding directly.
Complainant’s further contentions may be summarized as that: (1) Complainant is the exclusive owner of trademark rights in the designation SWAROVSKI; (2) the disputed domain names are confusingly similar to the SWAROVSKI trademark; (3) Respondent has no rights or legitimate interests in the disputed domain names and (4) Respondent has registered and is using the disputed domain names in bad faith. In particular, Complainant points to the fact that Respondent is not an authorized reseller of Swarovski products and that Respondent is using the disputed domain names to confuse consumers into believing that the websites to which the disputed domain names redirect are Complainant’s official websites and/or that Respondent is affiliated with or authorized to sell products by Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if respondent does not submit a response, in the absence of special circumstances, the panel is to decide the dispute solely based upon the complaint.
The Panel, however, did not need to decide on Complainant’s request for English to be the language of the proceedings, since the registrar Bizcn.com, Inc.has confirmed English to be the language of the registration agreement for both disputed domain names.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <swarovski-uk.com> and <swarovskiukcrystal.com> are confusingly similar to the trademark SWAROVSKI in which Complainant has shown to have rights.
The disputed domain names incorporate the SWAROVSKI trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the terms “uk” as well as “crystal” are not capable to dispel the confusing similarity arising from the incorporation of Complainant’s SWAROVSKI trademark into the disputed domain names (see also: Swarovski Aktiengesellschaft v. MarzenaMarzena, WIPO Case No. D2011-0980).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel finds that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced sufficient evidence that the SWAROVSKI trademark acquired over the years fame and celebrity in the United States of America and throughout the world. Many UDRP panels, therefore, have considered SWAROVSKI as a famous and/or well-known trademark (see e.g. Swarovski Aktiengesellschaft v. MarzenaMarzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). Moreover, the disputed domain names redirect to websites designed for the online sale of purported original Swarovski products. The Panel, therefore, concludes that Respondent was aware of Complainant’s SWAROVSKI trademark at the time of the registration of the disputed domain names and that the latter obviously allude to Complainant’s SWAROVSKI trademark and products.
The use of the disputed domain names to redirect to an online sales platform of purported Swarovski products is certainly neither noncommercial nor fair use without intent for commercial gain.
Such use, however, is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has not been authorized to use Complainant’s SWAROVSKI trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent is using the disputed domain names for a website that does not accurately and prominently disclose the registrant’s relationship with the trademark holder (see WIPO Overview 2.0, paragraph 2.3).
Therefore, in the absence of any other reasonable explanation, the use of the disputed domain names may neither be deemed legitimate nor noncommercial nor fair.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on February 13, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
The Panel takes the view that the direction of the disputed domain names, which are confusingly similar to Complainant’s trademark SWAROVSKI, to a website for the online sale of purported Swarovski products without the trademark owner’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s own website, by creating a likelihood of confusion with Complainant’s SWAROVSKI trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Swarovski Aktiengesellschaft v. MarzenaMarzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080).
In connection with this finding, it also carries weight in the eyes of the Panel (1) that Respondent not only kept silent on the Complaint but also (2) that Respondent apparently provided improper contact information when registering the disputed domain names since, according to the delivery report of the Written Notice, multiple errors existed in the Respondent’s address shown in the WhoIs record. Such behavior cannot be characterized other than a further indication of Respondent’s bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <swarovski-uk.com> and <swarovskiukcrystal.com> be transferred to Complainant.
Stephanie G. Hartung
Dated: March 23, 2012