WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Bruce Bush
Case No. D2012-0628
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase, Sri Lanka.
The Respondent is Bruce Bush of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewelryonline.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 26, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 26, 2012, 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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on April 24, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a global producer of jewelry, cut crystal, genuine gemstones and it has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2010, the Complainant’s approximate worldwide revenue was EUR 2.66 billion.
The Complainant owns trademark registrations for SWAROVSKI worldwide including in China since 1987. The Complainant’s trademark is used in connection with crystal jewellery, home accessories, collectibles and lighting industry. Due to its substantial advertising the SWAROVSKI trademark has become well-known worldwide, including in China.
The Complainant operates its official websites at “www.swarovski.com” and “www.swarovski.net”.
The disputed domain name was registered on February 8, 2012.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain name <swarovskijewelryonline.com> is confusingly similar to its trademark SWAROVSKI:
The disputed domain name incorporates the Complainant’s trademark SWAROVSKI in its entirety. The addition of the terms “jewelry” and “online” to the SWAROVSKI mark does not lessen the confusing similarity but rather strengthens the association between the disputed domain name and the Complainant as this is well-known by the Internet users for selling Swarovski jewelry online on its official website.
The Respondent has intentionally used the Complainant’s mark in order to obtain commercial gain from the confusion created among the Internet users who may believe there is a connection between the Respondent and the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent has no affiliation or connection with the Complainant and did not receive any license or consent to use the SWAROVSKI trademark in a domain name or in any other manner.
The Respondent does not fall under the circumstances listed by paragraph 4(c) of the Policy. Rather, the Respondent has incorporated the SWAROVSKI well-known trademark in the disputed domain name in order to create an association with the Complainant and furthermore, on the website corresponding to the disputed domain name it is selling purported Swarovski products which supports the contention that the Respondent has chosen the disputed domain name specifically to create a false association with the Complainant.
Even if the Respondent would sell genuine Swarovski products on its website, this is not a legitimate use as it has registered the disputed domain name incorporating SWAROVSKI trademark without the consent of its holder, the Complainant.
The Respondent is seeking to trade on the Complainant’s goodwill and reputation and therefore it has no legitimate interest in the SWAROVSKI trademark.
(iii) The disputed domain name was registered and is being used in bad faith:
The Complainant’s trademark is fanciful and well-known all over the world and the Respondent must have been aware of SWAROVSKI mark and the corresponding goods when registering the disputed domain name especially that it added the descriptive terms “jewelry” and “online” closely related to the Complainant’s business. The Respondent’s intent was to create a false impression to the Internet users with regard to a potential connection between itself and the Complainant.
Further, the Respondent is using the disputed domain name containing the Complainant’s famous trademark for a web portal which further displays the Complainant’s word and device trademarks in order to sell products purported to be genuine Swarovski goods without having the Complainant’s permission to register and use the SWAROVSKI trademark in any manner.
By using the SWAROVSKI mark, the Respondent is attempting to attract Internet users to its website corresponding to the disputed domain name in order to obtain financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the SWAROVSKI trademark, holding registrations worldwide, including in China since 1987 where the Respondent appears to be located.
The dominant part of the disputed domain name <swarovskijewelryonline.com> incorporates the Complainant’s widely known and distinctive SWAROVSKI trademark in its entirety.
In addition to this, the disputed domain name contains the generic descriptive words “jewelry” and “online”, whereas the Complainant’s business is related to gemstones, jewelry goods marketed as well online via the Complainant’s official websites. The use of such words together with the trademark SWAROVSKI increases the confusion among the Internet users and induces the impression that the disputed domain name is indeed associated with or controlled somehow by the Complainant and contains genuine products from the Complainant. See also Coach, Inc. v. Zongxin Trade Co Ltd., WIPO Case No. D2010-1995.
At the same time, numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889).
It is well established in decisions under the UDRP that the presence or absence of characters (e.g., dots, hyphens) in a domain name and indicators for top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name for the purposes of the Policy.
For all the above, the Panel finds that the disputed domain name <swarovskijewelryonline.com> is confusingly similar to the Complainant’s trademark SWAROVSKI.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its SWAROVSKI trademark. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine Swarovski products, the core question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of panel decisions in relation to this issue is helpfully summarized in the Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.”
This summary is based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. At least one condition that it outlines has clearly not been satisfied by the Respondent in this case: on the website corresponding to the disputed domain name there are false indications regarding the relationship between the Complainant and the Respondent, namely a banner appears on the Respondent’s website mentioning that the latter is an “authorized partner” of the Complainant fact which is clearly denied in the Complaint.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s trademark has been used and registered worldwide and in China for at least a quarter of century. Due to its extensive advertising and use the Panel finds that the SWAROVSKI trademark has become well-known in the markets it penetrated and for the goods it is protected for. See also Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. David Osgood, David, WIPO Case No. D2011-0937; Swarovski Aktiengesellschaft v. love Swarovski, WIPO Case No. D2010-2141; and Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638.
The SWAROVSKI trademark has no meaning in the jewellery industry other than to designate the Complainant’s trademark and company name.
The disputed domain name <swarovskijewelryonline.com> was registered in 2012 and incorporates along with Complainant’s famous trademark two words descriptive for Complainant’s business, namely “jewelry” and “online”.
From the above, the Panel concludes that indeed the Respondent had knowledge of the Complainant’s trademark and business and incorporated the SWAROVSKI trademark in the disputed domain name in order to create confusion and divert Internet users on its web portal.
The Respondent appears to be using the Complainant’s trademark for a web portal selling jewelry products marketed as being genuine Swarovski goods. Furthermore, on the corresponding website there is a banner informing the Internet users that the Respondent is a “SWAROVSKI AUTHORIZED PARTNER” and when accessing the “about us” section a potential customer would read the following assertion “We can now provide our worldwide customers with expertise and quality Swarovski crystal items from many different countries. All of our Swarovski jewelry is authentic, and comes with original box package.” At the same time, the Complainant strongly denies any relationship with the Respondent and further asserts it does not guarantee the authenticity or quality of the products sold on the Respondent’s website.
The Respondent is using without permission the Complainant’s famous trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. This impression is increased by the use of the Complainant’s trademarks in the content on the website corresponding to the disputed domain name and the false statements made by the Respondent on this website regarding its relationship with the Complainant.
Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith registration and use of a domain name.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark along with descriptive words for its business, the SWAROVSKI trademark is widely known worldwide and that the website operated under the disputed domain name displays the Complainant’s trademarks indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name <swarovskijewelryonline.com> who may be confused and believe that it is a website held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Furthermore, the Respondent has failed to provide accurate contact details to the relevant registrar as the post address and telephone number provided in the WhoIs contact details were inaccurate. Along with other circumstances in a case, the supplying of an incorrect or incomplete address by the respondent to the registrar can be considered sign of bad faith. See also Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550; Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <swarovskijewelryonline.com> be transferred to the Complainant.
Dated: May 7, 2012