WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. faguo
Case No. D2012-0746
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is faguo of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <buyswarovskicrystal.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2012. On April 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 12, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On April 13, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on May 25, 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. The Complainant uses the SWAROVSKI mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.
The Complainant has registered various SWAROVSKI marks worldwide, inter alia, China Trademark No. 384001 and No. 3520173 in class 14.
The Domain Name <buyswarovskicrystal.com> was registered on December 20, 2011 and the Respondent has used the Domain Name to direct Internet users to a website selling purported SWAROVSKI products.
5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the Registration Agreement, unless both parties agree otherwise, or the Registration Agreement specifies otherwise, or the panel determines otherwise.
The Complainant initially filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language;
(b) the Respondent has sufficient capacity to present the case in English as English is a language in which the Respondent communicates fluently in. In particular, the Respondent has prepared and chosen to display the contents of the Domain Name in English rather than in Chinese;
(c) conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having to translate the Complaint and annexes into Chinese.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the website to which the Domain Name resolves displays all its contents in English (also goods for sale are listed in US dollars) and there is no version of the Domain Name with contents in Chinese. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel has also taken into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as the annexes is requested to be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the annexes into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its SWAROVSKI mark. The addition of the terms “buy” as the prefix and “crystal” as the suffix to the SWAROVSKI mark in the Domain Name does not lessen the confusing similarity between the Domain Name and the SWAROVSKI mark but rather strengthens the association between them.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never been known by the Domain Name and has no legitimate interest in the SWAROVSKI mark or the name “Swarovski”. Moreover, the use of the Domain Name by the Respondent is contrary to a bona fide offering of goods or services or a legitimate interest.
The Complainant finally contends that the Respondent has registered and is using the Domain Name in bad faith. The SWAROVSKI mark is well-known in China and worldwide and it is inconceivable that the Respondent was unaware of the SWAROVSKI mark at the time of registering the Domain Name. Moreover, products purporting to be Swarovski products would not have been advertised on the website associated with the Domain Name if the Respondent was unaware of the reputation of the Complainant and its SWAROVSKI mark. In addition, the registration and use of the Domain Name by the Respondent creates “initial interest confusion”, which attracts Internet users to the website associated with the Domain Name because of its purported affiliation with Swarovski. The Respondent is attempting to attract consumers for commercial gain by utilizing the SWAROVSKI mark. Furthermore, it is unlikely that the Respondent can prove good faith use of the Domain Name because it is difficult to conceive of a use that would not infringe the SWAROVSKI mark.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the SWAROVSKI mark. The Complainant’s mark SWAROVSKI is protected as a trademark and the Complainant holds registrations for the SWAROVSKI mark worldwide, including China Trademark No. 384001 registered as early as in 1987, and China Trademark No. 3520173 registered in 2004, covering goods in class 14. The registration of the SWAROVSKI trademark predates that of the Domain Name.
The Domain Name consists of the SWAROVSKI trademark in its entirety, together with two English words “buy” and “crystal” and the top-level domain suffix “.com”. The Panel finds that it is an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor.
The Panel holds that the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’ mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
The Panel further agrees that addition of the terms “buy” as the prefix and “crystal” as the suffix to the Complainant’s SWAROVSKI trademark does not lessen the confusing similarity but instead reinforces the likelihood of confusion as the Domain Name directly refer to the business of the Complainant. Adding descriptive terms to the Domain Name is insufficient to distinguish the Domain Name from the Complainant’s SWAROVSKI trademark. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s SWAROVSKI trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not been commonly known by the Domain Name and has no rights or legitimate interests in the SWAROVSKI mark or the name “Swarovski”.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel however notes that the Respondent did not respond to the contentions made by the Complainant and failed to present any evidence to prove its rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
Besides, the Panel holds that the Respondent is not making a legitimate, noncommercial or fair use of the Domain Name. In fact, the Respondent’s use of the Domain Name to direct Internet users to a website selling purported SWAROVSKI products creates a likelihood of confusion with the Complainant’s SWAROVSKI mark as to the source, sponsorship, affiliation, or endorsement of the web site, which precludes a bona fide offering of goods and services.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) 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 (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The Complainant is well-known in China and worldwide. Additionally, the word “Swarovski” has no meaning in English. The Panel views that it is inconceivable that the Respondent was unaware of the SWAROVSKI mark when registering the Domain Name. Bad faith can be found when the Respondent was aware of the Complainant’ trademark at the time of registering the Domain Name. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464.
As evidenced by the documents presented by the Complainant, the Respondent is using the Domain Name to divert Internet users to a website selling purported SWAROVSKI products. The Respondent uses the Complainant’s SWAROVSKI mark not only in the URL but also on each page of the website as well as various products being offered for sale, so as to falsely suggest an affiliation with the Complainant and its SWAROVSKI mark. Given the widespread reputation of the SWAROVSKI trademark, the Panel finds that Internet users are very likely to be confused and misled into the belief that the Domain Name is connected with the Complainant, which is contrary to the fact. Thus, the Panel determines that bad faith is established by the Respondent’s use of the Domain Name to intentionally confuse Internet users and to trade on the Complainant's rights and reputation.
Moreover, the Respondent has chosen not to respond to contentions of the Complainant and such failure may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to 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 <buyswarovskicrystal.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: June 11, 2012