WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. zhang jie
Case No. D2012-0887
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is zhang jie of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskiverkauf.com> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2012. On April 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 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 30, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 2, 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 May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on June 8, 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 invests substantial time, effort and financial resources in advertising and promoting the SWAROVSKI mark throughout China and worldwide. As a result, the Complainant has developed an enormous amount of goodwill in the SWAROVSKI mark and the public has come to associate the SWAROVSKI mark exclusively with high quality items marketed by the Complainant.
The Complainant has registered a number of SWAROVSKI mark worldwide, among others, Chinese Trademark Registration No. 384001 and No. 3520173 in class 14.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website to enable Internet users to access information regarding the Complainant and its merchandise and to purchase genuine Swarovski products.
The Domain Name <swarovskiverkauf.com> was registered on October 14, 2011 and the Respondent is using the Domain Name to direct Internet users to an online shop advertising for sale various purported Swarovski products.
5. Language of the Proceedings
Under paragraph 11(a) 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) conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having the Complaint translated into Chinese;
(c) the Respondent has proficiency and is able to communicate in English as the website hosted at the Domain Name is in English.
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 its contents mostly in English 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 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 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 term “verkauf” (“sale” in German language) as a 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 interests 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 the Complainant. 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, a 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 registration for the SWAROVSKI mark worldwide including Chinese Trademark Registration 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 and a German word “verkauf”. 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 incorporating the Complainant’s SWAROVSKI trademark in the Domain Name in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s 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 term “verkauf” as a suffix to the Complainant’s SWAROVSKI trademark does not dispel the confusing similarity but instead reinforces the likelihood of confusion as the Domain Name directly refers to the business of the Complainant. Adding a descriptive or generic term 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 in this case 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 an online shop 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 website, which precludes a bona fide offering of goods and services.
The Complainant claims that the Respondent is not an authorized seller of its products. After reviewing the case, the Panel finds there is no evidence that the Respondent has used or intends to use the Domain Name for purposes of bona fide offering of goods or services. To be bona fide, one of the minimum requirements is for the respondent to accurately disclose its relationship with the trademark holder, while in the current case, the Respondent uses the Complainant’s SWAROVSKI mark not only in the Domain Name but also on each page of the website as well as various products being offered for sale there, without identifying itself as being a separate entity from the Complainant by listing any disclaimer on its site. Absent evidence to the contrary, the Panel determines that the act of the Respondent does not constitute a bona fide offering of goods or service. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, “Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website)”. In this age of the Internet, the Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to the Domain Name that incorporates the Complainant’s mark and may most likely be confused into believing that the website associated with the Domain Name is an official site of the Complainant and/or the Respondent is affiliated with or authorized to sell products of the Complainant, which is contrary to the fact.
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 online 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.
Given the reputation of the Complainant and its SWAROVSKI mark, the Panel views that it is inconceivable that the Respondent was unaware of the SWAROVSKI mark when registering the Domain Name. Besides, the Respondent’s offer for sale of Swarovski branded products on the site associated with the Domain Name further indicates that it knew of both the Complainant and its SWAROVSKI mark. Incorporation of the SWAROVSKI mark in the Domain Name without any reasonable justification is sufficient evidence of bad faith by the Respondent. 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. The Panel notes that the Respondent is using the Domain Name to point to an online shop offering for sale Swarovski products. The Panel is therefore satisfied that bad faith is established by the Respondent’s use of the Domain Name to trade on the Complainant's reputation so as to internationally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products being offered for sale there as per paragraph 4(b)(iv) of the Policy.
As set out above, the Complainant asserts that the Respondent is not its authorized seller and it does not guarantee the authenticity of the products sold by the Respondent. The Respondent could have rebutted the contentions of the Complainant but has chosen not to do so. Failure of the Respondent to respond to the Complaint 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 <swarovskiverkauf.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: June 21, 2012