WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Luigi Donatello Asero
Case No. D2012-0668
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Luigi Donatello Asero of Partille, Sweden.
2. The Domain Name and Registrar
The disputed domain name <swarovskiitalia.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On March 29, 2012, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. On March 30, 2012, CSL Computer Service Langenbach GmbH dba Joker.com 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 received email communications from the Complainant and Respondent between March 29, 2012 and April 2, 2012.
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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the proceeding update on May 4, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on May 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 owner of registered marks for SWAROVSKI. It uses that mark in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. The Complainant provided evidence of its registrations for that mark, attached to the Complaint.
The Complainant is a significant 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. The Complainant’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Respondent registered the disputed domain name on March 20, 2011 (indicated by the “creation date” in the WhoIs record).
The disputed domain name reverts to a website, with no links or tabs, and containing images of models and information which is in Chinese, Swedish, English and Italian. The Complainant provided a screenshot of this website as it was on March 29, 2012. To this Panel, the website is disordered and, to the extent it contains text in English, not coherent. The website also appears to feature photos of the Respondent’s identity documentation.
5. Parties’ Contentions
The Complainant says that it spends substantial time, effort and money advertising and promoting its marks throughout China, Sweden, Italy and worldwide. As a result, the Complainant’s marks have become famous and well-known in China, Sweden and Italy.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to Swarovski’s official website, located at “www.swarovski.com”. The Complainant’s website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine Swarovski products.
The Respondent’s website provides information about the Respondent and makes numerous references to the Complainant. The Complainant provides a screenshot of the Respondent’s website which states that “This website reminds of the cooperation among Swarovski, Scaiecat Spa Gigi and Swarovski itself is in different countries” and that “Watch Scaiecat Spa Gigi has also been trying to get in touch with Swarovski to agree on further details concerning delivery within a resale agreement which is a mutual beneficial cooperation solution in case customers want to place an order for a Swarovski’s at Scaiecat Spa Gigi”. The Complainant says this is clearly intended to give consumers the impression that the Complainant is cooperating with the Respondent and that the Respondent is affiliated with or authorized by the Complainant. In addition, the Complainant indicates, in the content of the website, that the Respondent has registered several other domain names to sell Swarovski watches.
The Respondent is using the disputed domain name to confuse consumers into believing that the Respondent’s website is affiliated with the Complainant. The Respondent is not associated with, affiliated with or licensed by the Complainant to use the Complainant’s marks in any way. The use of the Complainant’s marks in the disputed domain name therefore, is likely to confuse consumers into believing that the disputed domain name is affiliated with the Complainant.
The Complainant notes that its representative made efforts in February 29, 2012 to send a “cease and desist” letter to the Respondent at the email address provided in the WhoIs database. However, the letter could not be delivered due to an error in the email address provided in the WhoIs database and the Complainant’s representative received a failure notification. As the Complainant was unable to contact the Respondent, the Complainant says it commenced this administrative proceeding.
Variously arising from these facts, the Complainant says that the disputed domain name is confusingly similar to its marks. The addition of the term “italia” as a suffix does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark. The Complainant says that its mark is famous throughout the world, including Italy and that the Complainant operates a number of shops throughout Italy. Therefore the use of the word “italia” along with its marks is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity with its marks. Numerous UDRP panels have found that the addition of a geographical name or indicator to a trademark, and in particular to the Complainant’s trademark, does not serve to differentiate the domain name from the Complainant’s mark. The Complainant also refers to a series of prior UDRP decisions under the Policy in which panels have found that the entire incorporation of the Complainant’s mark is sufficient for a finding of confusing similarity.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been known by the disputed domain name and has no legitimate interest in the Complainant’s mark or the name “Swarovski”. The Complainant notes that prior UDRP WIPO administrative panels have stated that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless it was seeking to create an impression of association with the holder of a mark.
Thirdly, the Complainant states that the disputed domain name was registered and has been used in bad faith. It is inconceivable that the Respondent was unaware of the Complainant’s rights in its mark, when he registered and then used the disputed domain name.
The Complainant notes that the Respondent’s website provides certain advertisements, blogs and information regarding the Complainant as well as third parties. This clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant.
Before the commencement of these proceedings, on March 29, 2012 the Complainant forwarded to the Center an email it had received from the Respondent dated March 29, 2012, in Swedish (and untranslated). In response to that email, the Center sent an email noting that the Complainant may wish to request a suspension of proceedings to explore a possible settlement between the parties. On April 2, 2012, the Complainant declined to suspend the proceedings, on the basis that the Respondent’s email indicated that “he believes he has to be paid a few billion US dollars by Swarovski (direct quotation from the Respondent’s email…) we do not believe there would be a way to settle the dispute amicably.” Earlier in response to the Center’s email, the Respondent replied on March 30, 2012 that “I am not interested. I require 5 billions [sic] Crowns.”
The Respondent did not reply to the Complainant’s contentions.
In response to the Notification from the Center on May 4, 2012 that the due date for the submission of a Response had passed, the Respondent sent an email to the Center on May 5, 2012 in Chinese characters. As no translation was provided in the case file into the language of these proceedings (English), the Panel has disregarded that email, except to the extent that it further confirms the Respondent’s awareness of the proceedings and deliberate failure to submit a Response.
In addition, the Panel understands, from information provided by the Center to the Panel, that the Respondent’s email of May 5, 2012 claimed that the Respondent runs an entity in China and has some contact with the Chinese government or some celebrity. As the claims (to the extent they are comprehensible) were either unsupported by evidence, or not comprehensible to the Panel, the Panel considers there is no good basis to have regard to those claims.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed as follows.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its SWAROVSKI trademark. Those rights have been recognized in a series of prior decisions under the Policy. The most recent of those decisions is Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630. The panel in that case noted that the Complainant’s SWAROVSKI trademark is “well-known and distinctive”.
Having established such rights, the question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the dispute. It is self-evidently not identical. The Complainant argues that it is confusingly similar because the disputed domain name incorporates the entirely of its mark. The most recent UDRP WIPO case involving the Complainant’s mark (cited above), like this case, also involved the entire incorporation of the Complainant’s mark with the addition of generic words (in that case, “for sale”). The panel had no difficulty finding that such a domain name was confusingly similar to the Complainant’s mark. A series of cases under the Policy involving the entire incorporation of the Complainant’s mark reached a similar conclusion: see e.g., Swarovski Aktiengesellschaft v. Stewart Donald, WIPO Case No. D2012-0415; Swarovski Aktiengesellschaft v. Lvbing Fei, WIPO Case No. D2012-0187; Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy.com / Seek Knight, WIPO Case No. D2012-0177.
This Panel reaches a similar conclusion for the disputed domain name in this case. It entirely incorporates the Complainant’s mark as its first element and adds the suffix “italia”. This geographical addition does little to differentiate the disputed domain name from the Complainant’s mark. As the Complainant’ argues, the geographical addition may serve only to emphasise the mark by indicating a geographical connection with the Complainant’s businesses.
For these reasons, the Panel finds that the Complainant has established this first element.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden of production shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
In this case, the Complainant has presented a prima facie case against the Respondent. The Complainant provides evidence of its own rights, and evidence against the Respondent based on the content of the Respondent’s website. The Respondent has chosen not to respond to this evidence and the arguments made by the Complainant. There is little in the content of the Respondent’s website that suggests he has any legitimate connection with the term “swarovski”. Given the recognized fame of the Complainant’s mark, it is also difficult to conceive that the Respondent might have a legitimate interest. In the Panel’s view, there is no other evidence in the case file which contradicts the case made by the Complainant. The emails received from the Respondent prior to the formal commencement of these proceedings do nothing to alter this conclusion.
For these reasons, the Panel finds that the Complainant has established this second element.
C. Registered and Used in Bad Faith
The final matter which the Complainant must establish is that the disputed domain name was registered, and is being used in bad faith. The Complainant argues that the Respondent has demonstrated bad faith because, based on the fame of Complainant’s marks, the Respondent was aware or should have been aware of them. The Panel finds these arguments persuasive, and the Complainant provided various evidence to support them. The Complainant’s principal evidence comprised records of its trademark registrations, copies from its own website as to its business operations, and copies of various media articles relating to its brand.
As noted above, the Complainant’s mark is well-known in many jurisdictions. The Complainant has a number of marks registered in various jurisdictions, prior to the registration of the disputed domain name, and has a presence on the Internet at various domain names. The Complainant also explains that it offers its products in over 120 countries, including China, Sweden and Italy (relevantly to the languages which appear on the Respondent’s website, and the Respondent’s address). There have also been no less than 56 complaints filed by the Complainant under the Policy with the Center (excluding additional cases for country code domains, or filed with other providers), with the great majority decided in its favor. The Complainant is clearly an attractive target for cybersquatters.
The fame of the Complainant’s mark, and the references to the Complainant on the Respondent’s website, indicate that the Respondent was aware of the Complainant when he registered the disputed domain name. The Complainant substantially relies on this conclusion alone to argue bad faith. However mere knowledge of a complainant is not sufficient to establish bad faith. What is required for a finding under paragraph 4(a)(iii) of the Policy is that the Respondent registered the disputed domain name to take some unfair advantage of the Complainant’s mark. See e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
The evidence does not clearly indicate the Respondent’s motivation for registering the disputed domain name. As noted above, it is difficult to know what to make of the Respondent’s website. It includes large amount of text in various languages and, to the extent it is in English, does not suggest a clear purpose to the Panel. From information provided to the Panel from the Center (a summary translation of the website), the Panel understands that the Chinese text on the website describes the Respondent’s personal information and his entity’s registration information, and claims some connection with the Chinese government and other Chinese celebrities. Also mentioned on the website is that Respondent has contacted the Complainant about the disputed domain name before. Generally, however, the Chinese language used on the website is not native Chinese, and it is hard to understand.
Paragraph 4(b) of the Policy sets out various illustrative examples of bad faith however those examples do not neatly apply to the facts of this case. The Complainant refers to text on the Respondent’s website referring to “Watch Scaiecat Spa Gigi has also been trying to get in touch with Swarovski to agree on further details concerning delivery within a resale agreement”. While the Complainant relies on this to suggest that the Respondent is misleadingly claiming an affiliation with the Complainant, the Panel finds these references unclear on this point. It is not clear what or who “Scaiecat Spa Gigi” is (if anything). Taking the content of the Respondent’s website as a whole, it is difficult to draw the conclusion that it is designed to suggest a clear business relationship with the Complainant. The Complainant also argues that some of the text of the Respondent’s website indicates that the Respondent registered the disputed domain name to sell Swarovski watches. However, the text the Complainant cites in this respect refers to a “.tv” domain name in connection with watches, and does not clearly suggest that the sale of watches was the primary motivation of the Respondent in relation to the disputed domain name. In any event, it does not appear that the Respondent’s website is directed to the sale of watches.
Under paragraph 4(b)(i) of the Policy, one example of bad faith is circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs. In an email on March 30, 2012, the Respondent indicated that he “require[d] 5 billions [sic] Crowns” and, on the Complainant’s evidence, his earlier email sought “a few billion” US dollars. But these emails alone do not strongly suggest that selling the disputed domain name was the Respondent’s primary motivation. The manifestly unreasonable nature of these emails do not suggest that the Respondent was seriously entertaining the possibility of selling the disputed domain name. The Complainant appears to have accepted as much by filing the Complaint.
Notwithstanding these facts, the Panel finds that the disputed domain name was registered and used in bad faith. The fame of the Complainant’s mark, and references on the Respondent’s website, suggest that the Respondent was, at least, motivated to register and use the disputed domain name to attract traffic to his website by confusing Internet users looking for the Complainant. There is no evidence of a real connection between the Respondent and the term “Swarovski”. There is no evidence the Respondent is known by that term. There is no evidence that the Respondent’s website has any legitimate connection with that term. As noted above, the disputed domain name is confusingly similar to the Complainant’s trademark. The Respondent has chosen to submit no reply to the contentions against him.
In these circumstances, there is a reasonable inference of bad faith for the purpose of paragraph 4(a)(iii) 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 domain name, <swarovskiitalia.com>, be transferred to the Complainant.
James A. Barker
Dated: May 27, 2012