WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Joseph J. Gatlin
Case No. D2012-0901
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Joseph J. Gatlin of Chicago, Illinois, United States of America.
2. The Domain Names and Registrar
The disputed domain names <jewelryswarovskiuk.com>, <swarovskibijouxsoldes.com>, <swarovskicrystalonlineuk.com>, <swarovskikristaller.com>, <swarovskischmuckschweiz.com> and <swarovskiuksaleonline.com> (the “Domain Names”) are 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 27, 2012. On April 27, and May 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 2, 2012, and May 9, 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 May 14, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 14, 2012, the Complainant confirmed their request that English be the language of proceedings. 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on June 19, 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 19 countries, distribution in 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 the United States (“US”) 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 marks worldwide, among others, US Trademark Registration No. 3864495 in class 16, and US Trademark Registration No. 3864494 in classes 3 and 16.
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 Names <jewelryswarovskiuk.com>, <swarovskibijouxsoldes.com>, <swarovskikristaller.com> and <swarovskischmuckschweiz.com> were registered on February 23, 2012, <swarovskicrystalonlineuk.com> was registered on March 10, 2012, and <swarovskiuksaleonline.com> was registered on March 31, 2012. The Respondent is using the Domain Names to resolve to online stores (the “Websites”) selling 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 filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) the content on the Websites is in English, French and German and the Respondent appears to operate internationally in multiple languages;
(b) it is presumable that the Respondent is able to communicate in English; and
(c) the international business of the Complainant primarily operates in English.
As confirmed by the Registrar, the language of the Registration Agreements 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 Websites display its contents mostly in English and there is no version of the Websites 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 would 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 Names are confusingly similar to its SWAROVSKI mark. The addition of generic descriptive terms or geographical indicators to the SWAROVSKI mark in the Domain Names does not lessen the confusing similarity between the Domain Names 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 Names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI mark in the Domain Names or in any other manner. The Respondent has never been known by the Domain Names and has no legitimate interests in the SWAROVSKI mark or the name “Swarovski”. Moreover, the use of the Domain Names 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 Names in bad faith. The SWAROVSKI mark is well-known worldwide and it is inconceivable that the Respondent was unaware of the SWAROVSKI mark at the time of registration. Moreover, products purporting to be Swarovski products would not have been advertised on the Websites if the Respondent was unaware of the reputation of the Complainant. In addition, the registration and use of the Domain Names by the Respondent creates “initial interest confusion”, which attracts Internet users to the Websites because of its purported affiliation with the Complainant. The Respondent is attempting to attract consumers for commercial gain by utilizing 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 UDRP 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 US Trademark Registration No. 3864495 in class 16, and US Trademark Registration No. 3864494 in classes 3 and 16. The registration of the SWAROVSKI trademark predates that of the Domain Names.
The Panel notes that the Domain Names consist of the SWAROVSKI trademark in its entirety, along with the additional terms specified below:
- <jewelryswarovskiuk.com>: “jewelry” and “uk”;
- <swarovskibijouxsoldes.com>: “bijoux” (“jewelry” in French) and “soldes” (“sale” in French);
- <swarovskicrystalonlineuk.com>: “crystal”, “online” and “uk”;
- <swarovskikristaller.com>: “kristaller” (“crystals” in Swedish);
- <swarovskischmuckschweiz.com>: “schmuck” (“jewelry” in German) and “schweiz” (“Switzerland” in German);
- <swarovskiuksaleonline.com>: “uk”, “sale” and “online”.
The Panel finds it an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. The Panel further agrees that addition of generic descriptive terms or geographical indicators such as “jewelry”, “online” and “uk” to the Complainant’s SWAROVSKI trademark does not dispel but instead reinforces the confusing similarity as the Domain Names directly refer to the business of the Complainant. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Moreover, the Panel holds that incorporating the Complainant’s SWAROVSKI trademark in the Domain Names in itself is sufficient to support the claim that the Domain Names are 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.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are 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 Complainant claims that the Respondent has no connection or affiliation with it and has not received any license or consent to use the SWAROVSKI mark in the Domain Names or in any other manner. Besides, the Respondent has not been commonly known by the Domain Names 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 Names 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 to demonstrate its rights or legitimate interests. 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 Names under paragraph 4(c) of the Policy.
The Panel further finds there is no evidence that the Respondent has used or intends to use the Domain Names for purposes of a bona fide offering of goods or services. To make a bona fide offering of goods or services as a reseller or distributor of trademarked goods, 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 Names but also displays the marks prominently on the Websites as well as on various products, but without identifying itself as being a separate and independent entity from the Complainant by placing a disclaimer on the Websites. 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 should the Respondent actually be engaged in the sale of the Complainant’s goods. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Besides, the Panel finds it likely that the Respondent intentionally registered and uses the Domain Names in an attempt to capitalize on the fame of the trademark SWAROVSKI, which shall not be deemed as bona fide. See Madonna Ciccone, p/k/a Madonna v. Dan Parisis and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or 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 Names.
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 Names. Besides, the Respondent’s offer for sale of Swarovski branded products on the Websites further indicates that it knew of both the Complainant and its SWAROVSKI mark. Incorporation of the SWAROVSKI mark in the Domain Names without any reasonable justification may be 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 Websites to offer for sale Swarovski products. The Panel is therefore satisfied that bad faith is established by the Respondent’s use of the Domain Names 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 Names were registered and are 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 Names <jewelryswarovskiuk.com>, <swarovskibijouxsoldes.com>, <swarovskicrystalonlineuk.com>, <swarovskikristaller.com>, <swarovskischmuckschweiz.com> and <swarovskiuksaleonline.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: July 10, 2012