WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard / Phily Helen
Case No. D2012-1289
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 (“USA”) / Phily Helen of Bolton, Bolton, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <swarovskioutletstores.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 June 27, 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 28, 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 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2012.
The Center appointed Mladen Vukmir as the sole panelist in this matter on July 27, 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 corporation organised under the laws of the Principality of Liechtenstein, with its principal place of business at Triesen, Liechtenstein. The Complainant is the exclusive owner of famous and well-known SWAROVSKI trademarks registered in the USA and globally.
The Complainant protected its SWAROVSKI trademarks by obtaining several USA, European Community and international trademark registrations, as listed and evidenced in Annexes B and C, which include, among others, the following verbal and figurative trademarks in numerous classes, dating from as early as 1972 through 2010:
- SWAROVSKI, International Registration No. 857107;
- SWAROVSKI, International Registration No. 527385;
- SWAROVSKI, International Registration No. 528189;
- SWAROVSKI, International Registration No. 303389;
- SWAN Design, International Registration No. 528759;
- SWAN Design, International Registration No. 528188;
- SWAROVSKI, USA, registration No. 3864495;
- SWAROVSKI, USA, registration No. 934915;
- SWAROVSKI, USA, registration No. 1739479;
- SWAROVSKI, USA, registration No. 1785590;
- SWAROVSKI, USA, registration No. 2402230;
- SWAN Design, USA, registration No. 3230029;
- SWAN Design, USA, registration No. 3864494;
- SWAROVSKI, CTM registration No. 007462922;
- SWAROVSKI, CTM registration No. 003895091;
- SWAN Design, CTM registration No. 003920634.
The Panel confirmed that the disputed domain name was registered with the Registrar on February 12, 2012, according to the WhoIs data (Annex A to the Complaint) and reviewed the WhoIs data for the official Complainant’s domain names <swarovski.com> and <swarovski.net> as submitted by the Complainant in Annex I.
The Panel reviewed the print-outs of the representative pages of the website, to which the disputed domain name resolves, submitted by the Complainant in Annex K, and determined that the Respondent uses the SWAROVSKI trademarks throughout the website associated with the disputed domain name, as well as in the “title bar” of said website, and advertises for sale various purported Swarovski products.
5. Parties’ Contentions
The Complainant contends that:
- the SWAROVSKI trademarks are famous and well-known;
- the Complainant has developed an enormous amount of goodwill in the SWAROVSKI trademarks internationally, and the public has come to associate the SWAROVSKI trademarks exclusively with high quality items marketed by Swarovski;
- 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;
- the Respondent is not an authorised seller of the Complainant’s products, and the Complainant does not guarantee the authenticity or quality of the products sold on the website associated with the disputed domain name;
- 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 Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”;
- the Respondent’s method of infringement, using the exact SWAROVSKI trademarks to lure consumers to their website demonstrates bad faith use within the meaning of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the disputed domain name is confusingly similar to trademark 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.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a number of SWAROVSKI trademarks in the United States, European Union and internationally, some of which are listed under Section 4 Factual Background hereof. Further, the Complainant has established that its SWAROVSKI trademarks are internationally well known marks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.
It is well established that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The disputed domain name <swarovskioutletstores.com> consists of three parts, of which the main part carrying the semantic load is identical to the Complainant’s distinctive trademark SWAROVSKI used in the disputed domain name in its entirety, without any modification. The remaining two parts are the generic terms “outlet” and “stores” and the applicable top-level suffix “.com”.
Hence, it is evident that the disputed domain name incorporates the Complainant’s SWAROVSKI trademark in its entirety and it is clearly recognizable within the disputed domain name. Incidentally, this Panel finds that the Complainant has presented enough evidence showing that its SWAROVSKI trademarks have been extensively used, including on the Internet, and are, in fact, well known marks worldwide, including within the relevant Internet community. Moreover, as the Complainant appositely pointed out, the word “Swarovski” is not a descriptive or generic term, so consumers associate this term exclusively with the Complainant and its products owing to the international goodwill that the Complainant has developed in the SWAROVSKI trademarks over the years.
Further, the Panel upholds the Complainant’s contention that the generic terms “outlet” and “stores”, used by the Respondent in combination with the Complainant’s entire SWAROVSKI word trademark in creation of the disputed domain name, are insufficient for establishing indubitable difference between the disputed domain name and SWAROVSKI well-known trademarks. As the Complainant asserts, Internet users, who intend to purchase Swarovski products online, may type any combination of the words “swarovski”, “outlet” and/or “stores” into any search engine and would be directed to the website operated under the disputed domain name. The Complainant substantiates this assertion by a copy of the Google search, where the disputed domain name appears as the third result (Annex M). Moreover, since the website operated under the disputed domain name, in fact, offers for sale various purported Swarovski products, Internet users will most likely be confused into thinking that the subject matter website is either associated with or endorsed by the Complainant because of the use of the SWAROVSKI trademarks.
Therefore, as the Complainant demonstrated, the Respondent, clearly, did not intend to distinguish the disputed domain name from the Complainant’s trademarks by adding the generic terms “outlet” and “stores” to the Complainant’s entire unique word trademark SWAROVSKI. Quite the opposite, adding said generic words may, in fact, reinforce consumer confusion as to the connection between the Complainant's trademarks and the disputed domain name. Namely, the Respondent does not identify themselves in any manner anywhere on the website operated under the disputed domain name, much less by indicating no affiliation with the Complainant. On the contrary, the homepage and “About Us” section of the subject matter website contains statements inducing the visiting Internet users/consumers to conclude that the website and/or the products offered for sale through the website are genuine offerings made either by the Complainant or at least one of its authorised dealers.
It should be noted, that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself.
See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0, and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. Also, see the numerous panel decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyProtect.org Domain Admin / Trade Out Investments Ltd, WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252; and Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947.
Taking into consideration the renown of the Complainant’s SWAROVSKI trademarks and the semantic load that the word “Swarovski” carries in the disputed domain name, as well as the previous practice in the UDRP, in this Panel’s view, the words “outlet” and “stores” are not sufficient to overcome the overall confusing similarity between the disputed domain name and the Complainant’s SWAROVSKI trademarks.
As for the applicable top-level “.com” suffix in the disputed domain name, it is a consensus view that it can usually be disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the Policy, paragraph 4(a)(i), i.e. has proven that the disputed domain name <swarovskioutletstores.com> is confusingly similar to the its SWAROVSKI trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) before any notice to [the respondent] of the dispute, use by [the respondent] 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) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. “
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.
In the case at hand, the Complainant has established that it is an owner of a number of well-known SWAROVSKI trademarks protected worldwide, and that it has extensively used the same trademarks on the Internet through its websites “www.swarovski.com” and “www.swarovski.net”.
Furthermore, the Complainant has stated that it neither is in any manner affiliated with the Respondent nor has authorized, licensed, permitted or otherwise consented to the Respondent’s use of its SWAROVSKI trademark in the disputed domain name. Quite the opposite, the Complainant emphasizes that 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 misdirects Internet traffic to the associated infringing website, where purported Swarovski products are advertised for sale. The Complainant rightfully asserts that such use is contrary to a bona fide offering of goods or services or a legitimate interest.
The Respondent failed to deliver a response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.
In addition, the Panel accepts the Complainant’s contentions that there is no indication that the Respondent is commonly known by the disputed domain name, that it has used the same in connection with bona fide offering of goods and services, or that 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. On the contrary, the Panel finds that it can be safely concluded that the Respondent deliberately chose to include the Complainant’s SWAROVSKI trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use.
Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location. “
With regard to the bad faith at the time of registration, the Panel notes that it is unlikely that the Respondent was unaware of the Complainant and its SWAROVSKI trademarks. As the Complainant pointed out in the Complaint, “[p]roducts purporting to be Swarovski products would not have been advertised on the Infringing Website if the Respondent was unaware of Swarovski’s reputation”. On the other hand, the Complainant provided sufficient evidence to show that its SWAROVSKI trademarks are well-known globally and vested with significant goodwill.
Finally, the evidence of the content available on the website operated under the disputed domain name <swarovskioutletstores.com>, provided by the Complainant in the Annex K to the Complaint, indicates that the Respondent uses said website to advertise for sale purported Swarovski products with the intent to achieve commercial gain by misleadingly diverting consumers.
Therefore, it is safe to assume that the Respondent must have been aware of the Complainant, its SWAROVSKI trademarks and the Complainant’s business, and that it has registered the disputed domain name in order to trade on the renown of the Complaint’s trademarks and goodwill. In the Panel’s view, it cannot be denied that the word “Swarovski” carries distinction, and given the above described use of the disputed domain name by the Respondent, it is obvious that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <swarovskioutletstores.com> be transferred to the Complainant.
Dated: August 10, 2012