World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Phily Helen

Case No. D2012-1208

1. The Parties

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

The Respondent is Phily Helen of Bolton, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <swarovskioutletshops.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 15, 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 June 18, 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 June 21, 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 June 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2012.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on July 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 world 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. 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 EUR 2.66 billion. Moreover, the Complainant is the holder of, inter alia, the following registrations in the United States and internationally (hereinafter the “SWAROVSKI Marks”):

No. Trademark

Category

Reg. No.

Class

Registration Date

1. SWAROVSKI

USA

3864495

16

October 19, 2010

2. SWAROVSKI

USA

934915

14, 21

May 30, 1972

3. SWAROVSKI

USA

1739479

8, 11, 14,

18, 21, 25

December 15, 1992

4. SWAROVSKI

USA

1785590

21

August 3, 1993

5. SWAROVSKI

USA

2402230

14

November 11, 2000

6. SWAROVSKI

INT

857107

2,3,6,8,9, 11,14,16, 18,19, 20, 21,24,25,26, 28,34,35, 41

November 3, 2004

The disputed domain name was registered on April 25, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant is the holder of, inter alia, the registrations above. The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI Marks throughout the United States and worldwide. As a result, the SWAROVSKI Marks have become famous and well-known, both in the United States and worldwide.

The disputed domain name is confusingly similar to the registered trademark of the Complainant. The descriptive term “outletshops” is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.

The Respondent has no rights or legitimate interests in the disputed domain name. No licence, permission, consent or authorization has been granted to the Respondent. The disputed domain name is a blatant infringement of the SWAROVSKI Marks and no bona fide use is being made of the disputed domain name. There is clear evidence that the Respondent is trying to pass itself off as the Complainant and is exploiting the goodwill associated with the SWAROVSKI Marks in order to obtain commercial gain.

The disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of Complaiant’s rights in the SWAROVSKI Marks at the time of registration. Moreover, the Respondent is using the trademarks of the Complainant on the web site linked to the disputed domain name in order to pass itself off as commercially linked to the Complainant. Thus, the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant has established registered rights to the trademark SWAROVSKI. Moreover, in this Panel’s view the trademark SWAROVSKI is very well-known, if not notorious.

The disputed domain name contains the Complainant’s trademark in its entirety. The addition of the generic word “outletshops” is not sufficient to prevent a confusing similarity, see e.g. Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500. According to well-established consensus, the top level domain “.com” is not distinguishing.

Consequently, this Panel finds the disputed domain name confusingly similar to the trademark in which the Complainant has established rights.

B. Rights or Legitimate Interests

It is a consensus view, amongst UDRP panels, that a respondent's default does not automatically result in a decision in favour of the complainant. The Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a 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 Complainant has asserted that no licence, permission, consent or authorization has been granted to the Respondent. Moreover, the Complainant has stated that there is no reason why the Respondent would have a right or legitimate interest to the disputed domain name which entirely incorporates the Complainant’s trademark and moreover leads to a web site which clearly uses the registered trademarks of the Complainant in order to create the impression that the Respondent is associated with the Complainant.

Having considered the submissions of the Complainant, and the lack of response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name, but uses the Complainant’s mark with an intention to derive commercial advantage of the Complainant’s SWAROVSKI Marks. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent.

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to direct visitors to a web site which so obviously uses the Complainant’s registered trademarks in order to sell identical or similar products to those of the Complainant is clear indication of bad faith use under the Policy. Moreover, having regard to the fact initially accepted by this Panel, namely the well-known, if not notorious character of the Complainant’s trademarks, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademarks and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark. It should be further noted that even if the sale of the SWAROVSKI products would be of genuine goods deriving from the Complainant, the Respondent had or has no right to register and use the disputed domain name. The Panel here refers to the arguments put forward by the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith under the Policy.

7. Decision

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 <swarovskioutletshops.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: July 27, 2012

 

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