WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard, WhoisGuard Protected Phily Helen
Case No. D2012-0889
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard, WhoisGuard Protected of California, United States of America / Phily Helen of Bolton, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <swarovskioutletshop.com> is registered with eNom.
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 eNom a request for registrar verification in connection with the disputed domain name. On April 27, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 8, 2012.
The Center verified that the Complaint together with the amendment to 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Alfred Meijboom as the sole panelist in this matter on June 6, 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 has registered SWAROVSKI trademark with the United States Patent and Trademark Office for various classes through various registrations, including Registration No. 1739479 on December 15, 1992, Registration No. 1785590 on August 3, 1993, Registration No. 2402230 on November 7, 2000, and Registration No. 934915 on May 30, 1972, as well as an international trademark with Registration No. 857107 on November 3, 2004. These trademarks are hereafter referred to as the “Trademarks”.
The disputed domain name was created on February 12, 2012 and is operating a website associated with the disputed domain name as online shop for purported SWAROVSKI products.
5. Parties’ Contentions
The Complainant claims to be one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution in 42 countries and 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 2.66 billion Euros.
The Complainant contends that it has spent substantial time, effort and money advertising and promoting the Trademarks throughout the United States of America and worldwide. As a result, the Trademarks have become famous and well-known in the United States of America and worldwide.
The Complainant alleges that the disputed domain name is being used to confuse consumers into believing that the website associated with the disputed domain name is an official Complainant’s website and/or the Respondent is affiliated with or authorized to sell products by the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the Trademarks. The addition of the terms “outlet” and “shop” in the disputed domain name as a suffix to the Trademarks does not lessen the confusing similarity between the disputed domain name and the Trademarks.
According to the Complainant the Respondent has no legitimate interests or rights in the disputed domain name. The Respondent has never been known by the disputed domain name and has no legitimate interests in the Trademarks or the name “Swarovski”.
The Complainant further claims that the disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the Trademarks at the time of registration. Products purporting to be SWAROVSKI products would not have been advertised via the disputed domain name if the Respondent was unaware of the Complainant’s reputation. Furthermore, the Complainant contends that registration of a famous mark, like the Trademarks, as a domain name by an entity that has no legitimate relationship with the mark is by itself sufficient to demonstrate bad faith.
Finally, the Complainant contends that the disputed domain name is being used in bad faith for the following reasons. The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the Trademarks in the disputed domain name, throughout the website displayed at the disputed domain name, as well in the “title bar” of the website and attempted to attract consumers for commercial gain by purporting to sell SWAROVSKI products. The Respondent is attempting to attract consumers for commercial gain to the disputed domain name by utilizing the Trademarks. The Respondent, without valid consent, utilizes the Trademarks throughout the infringing website and offers identical or similar to SWAROVSKI products for sale.
For these reasons described above, the Complainant requests that the Panel issues a decision that the registration of the disputed domain name should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The identity of the Respondent
The Respondent’s original name in the Complaint was WhoisGuard, WhoisGuard Protected which was indicated to be the holder of the disputed domain name in the publicly available WhoIs database consulted by the Complainant. Upon receiving the usual request from the Center for verification of the registrant, the Registrar eNom advised that the registrant, or holder of the disputed domain name, was Phily Helen from the United Kingdom of Great Britain and Northern Ireland.
According to paragraph 1 of the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Therefore, WhoisGuard, WhoisGuard Protected was properly named as the Respondent in the original Complaint.
Although WhoisGuard, WhoisGuard Protected was properly named as the Respondent, it would appear to be used to conceal and protect the identity of the real beneficial owner Phily Helen.
For purposes of the application of the Policy, the Panel should consider who is the beneficial owner of the disputed domain name.
The Panel finds that both the beneficial owner Phily Helen and the original Respondent WhoisGuard, WhoisGuard Protected should be named as the Respondents. In the remainder of this decision, they will be described in the singular, as the Respondent (e.g. The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Private Services , WIPO Case No. D2007-1438; Spenco Medical Corporation v. “spencoarchsupports.net” / PrivateWhois Service, WIPO Case No. D2011-0595; and Alegent Health v. surper tree / Domains by Proxy, Inc., WIPO Case No. D2011-2288).
Assessment of the case
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the majority view of panelists share the view that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
i. that the disputed domain name is identical or confusingly similar to a trademark or a 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Trademarks. Previous UDRP panels have decided that the addition of a generic and descriptive term to an otherwise distinctive trademark would normally be insufficient in itself to avoid a finding of confusing similarity (Etro S.p.A. v. Tidata.net AG, Ricky Menzer, WIPO Case No. D2010-0743, finding that the addition of the words “outlet” and “store” do not remove a domain name from being confusingly similar; and Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170 and Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065, both finding that the addition of the word “outlet” does not remove the domain name from being confusingly similar to the same SWAROVSKI trademarks as in the present case). Furthermore, the addition of the generic top level domain suffix “.com” is non-distinctive because it is a technical requirement for the registration of a domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Trademarks, and the first element is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant claims that it did not authorize the use of the Trademarks to the Respondent. The Panel is satisfied that there is no indication that the Respondent was commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of the goods or services, particularly not since the Complainant undisputedly asserted that the Respondent used the disputed domain name to operate an online shop that sells purported SWAROVSKI products.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The evidence submitted by the Complainant sufficiently constitutes that the Trademarks are well-known worldwide (as also found in e.g., Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947; Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065; Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; and Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170).
The registration of a domain name incorporating a well-known mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, may constitute bad faith registration and this is the approach of the Panel in this case (Ints It Is Not The Same, Gmbh v. Carlos Gil Belmonte, WIPO Case No. D2010-0456). Moreover, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith at the moment of registration.
In respect to the use of the disputed domain name, the Complainant has proven to the satisfaction of the Panel, by means of the printouts of the website to which the disputed domain name resolves, that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement.
Therefore, the Panel finds the disputed domain name was registered and is being used in bad faith, so that the third element is met.
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 <swarovskioutletshop.com> be transferred to the Complainant.
Dated: June 12, 2012