World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. pfd, I. Stewart Donald/ dd I. Stewart Donald/ pd, I. Stewart Donald/ ma, I. Stewart Donald

Case No. D2012-0969

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondents are pfd, I. Stewart Donald/ dd, I. Stewart Donald/ pd, I. Stewart Donald and ma, I. Stewart Donald of Poughkeepsie, New York, United States of America (the “United States”).

2. The Domain Names and Registrar

The disputed domain names <schmuck-swarovski.com>, <swarovskicanada.com>, <swarovskischmuckonlineshop.com>, <ukswarovski.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 May 8, 2012. On May 8 and 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 9 and 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On May 11, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding 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 Respondents of the Complaint, and the proceedings commenced on May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 12, 2012.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on June 13, 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 marks 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 globally, inter alia, UK Trademark No. 962682, CANADA Trademark No. TMA280868 and Community Trademark No. 006865794 applicable in Germany and UK in class 14.

The Domain Name <schmuck-swarovski.com> was registered on January 15, 2012, <swarovskicanada.com> on February 13, 2012, <swarovskischmuckonlineshop.com> on December 11, 2011 and <ukswarovski.com> on February 8, 2012 respectively.

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 Complainant is an international brand with registered marks in multiple jurisdictions, including China but whose international business primarily operates in English;

(c) conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese;

(d) the websites under the Domain Names (the “Websites”) are in the English and German language, which clearly demonstrates that the Respondents have proficiency and are able to communicate in English.

As confirmed by the Registrar, the languages of the Registration Agreements are Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondents 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 Complainant is a company registered in Liechtenstein and operates its business in multiple jurisdictions whose international business primarily operates in English while the Respondents are located at New York of the United States.

The Panel views that the Websites display all their contents in English and German and there is no version of the Domain Names with contents in Chinese. The Panel also views that the Respondents have 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 Respondents in their ability to articulate the arguments for the case, while if the proceeding is to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the evidence 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. Multiple Respondents

The Panel finds that the four Domain Names included in this proceeding seem to be related to four different registrants. The Complainant contends in the Complaint that the four Domain Names are registered by the same person as the names, addresses, telephone numbers, fax numbers and email addresses for all the Domain Names are identical with the exception of the use of varying prefixes to the registrants’ name such as “pfd”, “dd”, “pd” and “ma”. The Complainant requests accordingly for consolidation of the proceedings into one.

The Panel finds that according to the registrar verification, the names of the registrants mainly consist of two parts, one is a prefix such as “pfd”, “dd”, “pd” and “ma”, the other is the same name “I. Stewart Donald”. The Panel holds that the second part “I. Stewart Donald” plays a vital role in differentiating the registrants of the Domain Names from those of other domain names.

The Panel also notes that the addresses, telephone numbers and fax numbers as indicated in the registrants contact information of the Domain Names are identical.

The Panel further views that the registrants’ email addresses of the Domain Names <schmuck-swarovski.com>, <swarovskicanada.com> and <ukswarovski.com> are identical. Moreover, the registrant’s email address of <swarovskischmuckonlineshop.com> is identical to the administrative contact, technical contact and billing contact of other three Domain Names <schmuck-swarovski.com>, <swarovskicanada.com> and <ukswarovski.com>.

The Panel also understands that the Respondents did not file opposition to consolidate the proceedings into one.

For all the above reasons, the Panel therefore finds that the four Domain Names are actually controlled by a single, individual Respondent and accordingly consolidation of proceedings into one is granted hereby. See Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 and Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587.

7. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its SWAROVSKI marks. The Respondent has used the SWAROVSKI marks in the Domain Names so as to cause confusion among Internet users between the Websites and the approved websites of the Complainant. The addition of generic words like “uk”, “canada”, “schmuck”, “online” and “shop” to the SWAROVSKI marks in the Domain Names does not differentiate the Domain Names enough to not cause confusion among consumers.

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 express or implied license or consent from the Complainant to use the SWAROVSKI marks in a domain name or in any other manner. Moreover, the Respondent has never been known by the Domain Names and has no legitimate rights or interests in the SWAROVSKI marks or the name “Swarovski”. The Domain Names are being used to advertise purported SWAROVSKI products and misdirect Internet traffic to the Websites. The registration of the Complainant’s marks in multiple Domain Names shows the intention of the Respondent to prevent the Complainant from registering the Domain Names, which in turn shows the Respondent’s lack of rights or legitimate interests in the Domain Names.

The Complainant finally contends that the Respondent has registered and is using the Domain Names in bad faith. The SWAROVSKI marks are well-known in China and worldwide and it is inconceivable that the Respondent was unaware of the SWAROVSKI marks at the time of registering the Domain Names. Registration of SWAROVSKI marks as the Domain Names by the Respondent who has no legitimate relationship with the marks is itself sufficient to demonstrate bad faith. In addition, the Respondent has done nothing to identify itself as being independent from the Complainant. Moreover, the registration and use of the Domain Names by the Respondent creates “initial interest confusion”, which attracts Internet users to the Websites because of their purported affiliation with SWAROVSKI. The Respondent is attempting to attract consumers for commercial gain to the Domain Names by utilizing the SWAROVSKI marks.

B. Respondents

The Respondent did not reply to the Complainant’s contentions.

8. 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 are 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 names; and

(iii) the domain names have been registered and are 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 marks. The Complainant’s SWAROVSKI marks are protected as trademarks and the Complainant holds registration for the SWAROVSKI marks worldwide, inter alia, United Kingdom of Great Britain and Northern Ireland (“UK”) Trademark No. 962682 registered as early as in 1970, CANADA Trademark No. TMA280868 registered as early as in 1983 and Community Trademark No. 006865794 applicable in Germany and UK registered in 2009, covering goods in class 14. The registration of the SWAROVSKI trademarks predates those of the Domain Names.

The Domain Name <schmuck-swarovski.com> consists of three parts, a word “schmuck”, a hyphen and the other word “swarovski”. The word “schmuck” meaning “jewellery” in German language is generic; the word “swarovski”, identical to the marks of the Complainant, has no special meaning and therefore is not a generic or descriptive word; the hyphen is used to combine the two words “schmuck” and “swarovski”.

The Domain Name <swarovskicanada.com> consists of two words “swarovski” and “canada”. The word “swarovski”, identical to the marks of the Complainant is not a generic or descriptive word; the word “canada” is generally considered as the name of the country “Canada”, therefore is a generic word.

The Domain Name <swarovskischmuckonlineshop.com> consists of four words “swarovski”, “schmuck”, “online” and “shop”. The word “swarovski”, identical to the marks of the Complainant is not a generic or descriptive word; the word “schmuck” is a generic word as previously stated; other words “online” and “shop” are also generic words.

The Domain Name <ukswarovski.com> consists of two words “uk” and “swarovski”. The word “uk” is generally considered as the abbreviation the country “United Kingdom of Great Britain and Northern Ireland”, therefore is a generic word; the word “swarovski”, identical to the marks of the Complainant is not a generic or descriptive word.

The Panel finds, by analyzing the constitution of the Domain Names, that the addition of the generic words “schmuck”, “canada”, “online”, “shop” and “uk” is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s SWAROVSKI marks in the Domain Names. See Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”). The Panel also finds that the use of a hyphen in the Domain Name <schmuck-swarovski.com> is insignificant and does little to avoid confusing similarity with the Complainant’s marks. See Di-El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk, WIPO Case No. D2007-0961 (“the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”).

The Panel holds that the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Names are confusingly similar to the Complainant’s marks. 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 that 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 Panel notes that the Respondent is not connected or affiliated with the Complainant and has not received any license or consent to use the trademark of the Complainant in a domain name or in any other manner as contended by the Complainant.

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. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and 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.

Besides, the Panel holds that the Respondent’s use of the Domain Names to direct Internet users to the Websites selling purported SWAROVSKI products creates a likelihood of confusion with the Complainant’s SWAROVSKI marks as to the source, sponsorship, affiliation, or endorsement of the Websites, which precludes a bona fide offering of goods and services.

The Panel agrees with the Complainant that the number of the Domain Names that the Respondent registered that contain the Complainant’s marks gives rise to the inference that the Respondent has registered the Domain Names in order to prevent the Complainant from reflecting its marks in the Domain Names, which in turn shows the Respondent’s lack of rights and legitimate interests in the Domain Names. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

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 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 Panel notes that the websites under the Domain Names <schmuck-swarovski.com> and <swarovskischmuckonlineshop.com> are currently redirected to a website “www.schmuckkristall.org” which is used to sell SWAROVSKI branded products, the website under the Domain Name <swarovskicanada.com> is also used to offer for sale of SWAROVSKI branded products and <ukswarovski.com> is currently inaccessible, while 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 Names 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 marks not only in the Domain Names but also on each page of the Websites 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 and Houghton Mifflin Co. v. The Weathermen, 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 Websites at the Domain Names that incorporate the Complainant’s marks and may most likely be confused into believing that the Websites are official sites of the Complainant and/or the Respondent is affiliated with or authorized to sell products of the Complainant, which is contrary to the fact. 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 websites, by creating a likelihood or confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its websites or of the products being offered for sale there.

Given the reputation of the Complainant and its SWAROVSKI marks, the Panel views that it is inconceivable that the Respondent was unaware of the SWAROVSKI marks 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 marks. Incorporation of the SWAROVSKI marks in the Domain Names 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 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.

9. Decision

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 <schmuck-swarovski.com>, <swarovskicanada.com>, <swarovskischmuckonlineshop.com> and <ukswarovski.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Dated: June 27, 2012

 

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