WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard / Phily Helen
Case No. D2012-1287
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard of Los Angeles, 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 <swarovskistoreuk.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. On June 25, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 26, 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 July 3, 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 July 10, 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 July 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012. On August 2 ,2012 the Center notified the complaint again to an additional email address available on the website at the disputed domain name and provided three (3) additional days to indicate whether Respondent intended to participate in the proceedings. No answer was filed.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 10, 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 1,000 countries. In 2010, the Complainant’s products were sold in 1,218 of its own boutiques and through 100 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
Moreover, the Complainant is the holder of several registrations in the United States and internationally for the trademark SWAROVSKI. Complainant trademarks are well-known worldwide (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).
In addition, Complainant has registered several domain names including <swarovski.com> and <swarovski.net>.
Respondent registered the domain name on February 12, 2012.
5. Parties’ Contentions
The Complainant is the holder of several trademark registrations, as mentioned above. The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI trademarks throughout the United States and worldwide. As a result, the SWAROVSKI trademarks have become famous and well-known, both in the United States and worldwide.
The Complainants rights in the SWAROVSKI trademarks have been recognized by several UDRP panels.
The disputed domain name is being used to confuse consumers into believing that the website associated with the disputed domain name is an official Swarovski website or that Respondent is authorized to sell products by Swarovski.
The disputed domain name is confusingly similar to the registered trademark of the Complainant. The descriptive terms “store” and “up” are 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.
There is no license, permission, consent or authorization that has been granted to the Respondent.
The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”.
The disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the infringing website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest in the disputed domain name.
The disputed domain name is a blatant infringement of the SWAROVSKI trademarks 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 trademarks 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 Complainant’s rights in the SWAROVSKI trademarks at the time of registration.
The Complainant cites previous UDRP panel decisions concluding that the SWAROVSKI trademarks are well-known and that unauthorized registrants utilizing the SWAROVSKI trademarks in domain names do so specifically with the Complainant’s trademark in mind.
According to the complaint, the website at the disputed domain name offers to sell a variety of products such as “Swarovski Rings”, “Swarovski Necklaces”, “Swarovski Bracelets”, etc. Products purporting to be Swarovski products would not have been advertised on the website at the disputed domain name if the Respondent was unaware of Swarovski’s reputation.
The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent had incorporated SWAROVSKI trademarks in the disputed domain name, throughout the infringing website, as well as in the “title bar” of the website and attempts 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 SWAROVSKI trademarks.
Thus, the disputed domain name was registered and is being used in bad faith.
The Complainant requests the transfer of the disputed domain name to it.
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 Panel finds that the Complainant has established trademark rights in SWAROVSKI as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel also finds that the disputed domain name <swarovskistoreuk.com> is confusingly similar to the Complainant’s trademark SWAROVSKI. The name “Swarovski” is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the domain name is confusingly similar to the trademark SWAROVSKI.
The addition of the generic word “store” and the geographical designation “UK” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to the Panel to distinguish the disputed domain name from the Complainant’s mark.
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
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, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those above listed circumstances here. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the disputed domain name by several years. Moreover, the Respondent appears to utilize the Complainant’s trademark on the website for commercial purposes without any disclaimer or explanation of the relationship between the Respondent and the Complainant. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden to the Respondent to produce evidence to rebut this presumption. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
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.
Having regard to the fact initially accepted, 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 trademark.
In this case, Complainant has stated that the disputed domain name offers to sell a variety of products such as “Swarovski Rings”, “Swarovski Necklaces”, and “Swarovski Bracelets”. Respondent has not denied this assertion.
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, Paragraph 4 (b)(iv).
It should be further noted that even if the sale of the SWAROVSKI products would be of genuine goods deriving from the Complainant, it is the Panel’s view that the Respondent had or has no right to register and use the disputed domain name, which incorporates the Complainant’s trademark.
Another indicia of bad faith is that Respondent has also been subject to similar UDRP proceedings involving Complainant’s trademark where it was concluded that the domain names involved in those cases were registered and used in bad faith. See Swarovski Aktiengesellschaft v. WhoisGuard, WhoisGuard Protected Phily Helen, WIPO Case No. D2012-0889 and Swarovski Aktiengesellschaft v. Phily Helen, WIPO Case No. D2012-1208.
Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith under 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 disputed domain name <swarovskistoreuk.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: August 24, 2012