WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Ming Robot
Case No. D2012-1200
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, of Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Ming Robot of Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-onlineoutlets.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. As originally filed the Complaint identified Domains By Proxy, LLC, Domains By Proxy, LLC, and DomainsByProxy.com, both of 15111 N. Hayden Rd., Ste 160, PMB 353, Scottsdale, Arizona 85260, USA as Respondents. On June 13, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On June 14, 2012 GoDaddy.com, LLC transmitted by email to the Center its verification response which indicated that the named Respondents, DomainsbyProxy LLC and DomainsByProxy.com were not the registrant of the Domain Name. It identified the registrant of the Domain Name as “ming robot” of China. The Center sent an email communication to the Complainant on June 25 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 June 26, 2012 substituting “Ming Robot” as the Respondent. The Center verified that the amended 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 Amended Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. No response was filed and on July 17, 2012 the Center issued a notice of Respondent Default to the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 24, 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant carries on business on a worldwide basis in the production and sale of cut crystal and gemstones. It has done so for many years. It does so under and by reference to the name “Swarovski”. It is the world’s leading producer of cut crystal, with production facilities in 18 countries, distribution to 42 countries and a 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. Swarovski’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Respondent has registered the word SWAROVSKI in many countries throughout the world – for example in the USA under registration number 3864495. Its registered trade mark rights date back to at least 1972 (US registration no. 934915).
The Complainant operates a number of websites under the name “Swarovski” – for example at “www.swarovski.com” and “www.swarovski.net”.
The Respondent registered the Domain Name on January 11, 2012. The Respondent is using the Domain Name in connection with a web site which provides an online shop that advertises for sale various purported Swarovski products e.g. “Swarovski Rings”, “Swarovski Earrings”, “Swarovski Bracelets”, “Swarovski Necklaces”, “Swarovski Brooches” and more.
5. Parties’ Contentions
The Complainant’s contentions are equally straightforward and can be summarized as follows:
The Domain Name is confusingly similar to its trade mark SWAROVSKI in which it clearly has rights. Addition of the non distinctive wording “online outlets” does not distinguish the Domain Name.
The Complainant says that the Respondent’s selection of the Domain Name, which wholly incorporates the SWAROVSKI trademark cannot be a coincidence as “Swarovski” is not a descriptive or generic term; it is a famous and well known trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “swarovski”. There is no other meaning associated with SWAROVSKI other than in relation to the Complainant’s products and business.
In consequence the Complainant alleges the Domain Name was registered and is being used in bad faith. The content of the Respondent’s web site suggests an affiliation or connection with the Complainant which is not the case. The Respondent is not an authorized distributor of the Complainant’s products and the Respondent cannot guarantee the authenticity of the products the Respondent is offering for sale.
The Complainant also says that the look and feel of the website operated by the Respondent is very similar, if not identical, to the websites operated at four other domain names,<swarovski-forsale.com>, <swarovskijewelryonline.com>, <swarovski-outletshop.com> and <swarovskistar.com>. The Complainant commenced proceedings against the respondents of these four domains and was successful in having the domain names transferred to the Complainant. The WIPO cases for these domain disputes are Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630, Swarovski Aktiengesellschaft v. Bruce Bush, WIPO Case No. D2012-0628, and Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy.com / Seek Knight, WIPO Case No. D2012-0177.
The Complainant relies upon previous WIPO administrative panels which have found that coupling a common word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name, especially a well known mark like the SWAROVSKI Mark, does not negate a finding of confusing similarity but serves to reinforce the similarity – for example Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139.
The Complainant says the Domain Name is being used to advertise purported Swarovski products and misdirects internet traffic to a web site which wrongly suggests a connection with the Complainant. It says that such a use is contrary to a bona fide offering of goods or services or a legitimate interest and relies upon previous cases such as Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark SWAROVSKI. The filed evidence establishes the Complainant’s products have been sold on a substantial sale on a world-wide basis under this trade mark and are very well known. The Complainant has a wide range of registered trademarks for the word “SWAROVSKI”.
The Domain Name is confusingly similar to the SWAROVSKI trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the words “onlineoutlets” which simply suggest an online sales operation of some kind) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“SWAROVSKI” is a word with no other meaning so far as the Panel is aware save in relation to the Complainant’s products. The addition of the non-distinctive words “onlineoutlets” does not provide any additional basis for the Respondent to claim rights in the Domain Name.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the SWAROVSKI trade mark. The Complainant has prior rights in the SWAROVSKI trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the SWAROVSKI trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the SWAROVSKI trade mark, and the confusingly similar nature of the Domain Name to the SWAROVSKI trade mark, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s SWAROVSKI trade mark when it registered the Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Domain Name because of its similarity with the Complainant’s SWAROVSKI trade mark. The addition of only the words “onlineoutlets” suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s name. The Panel also notes this appears to be part of a pattern whereby a number of similar websites also operating under names which include the Complainant’s SWAOVSKI trademark all offer goods which purport to be those of the Complainant though none of these sites are operated by authorized distributors of the Complainant’s products. The Panel finds that the Respondent, possibly with others, is engaged upon a deliberate scheme to trade under and by reference to the Complainant’s SWAROVSKI trademark and to suggest that it is connected with the Complainant when it is not. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
In reaching this conclusion the Panel's view is reinforced by similar UDRP decisions reached by several previous Panels on similar cases involving the Complainant and its SWAROVSKI trademark – see for example Swarovski Aktiengesellschaft v. MarzenaMarzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080; and Swarovski Aktiengesellschaft v. Stewart Donald, WIPO Case No. D2012-0169.
As a result the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <swarovski-onlineoutlets.com> be transferred to the Complainant.
Nick J. Gardner
Date: August 7, 2012