World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. shi pi

Case No. D2012-1363

1. The Parties

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

Respondent is shi pi of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <cheapswarovskisale.net> and <discountswarovskioutlet.com> are registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2012. On July 5, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 6, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On July 9, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On July 10, 2012, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit its comments by the specified 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on August 17, 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

Complainant, Swarovski Aktiengesellschaft, is a company incorpated in Triesen, Liechtenstein. Swarovski is the world’s 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.

Complainant has exclusive rights in the SWAROVSKI marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally (see Annex B to the Complaint), including China (since 1987; see Annex C to the Complaint). It also owns the domain names <swarovski.com> (since January 11, 1996) and <swarovski.net> domain names (since April 16, 1998) and multiple other domain names incorporating the SWAROVSKI mark (see Annexes I and J to the Complaint).

Respondent is shi pi of Beijing, China. Respondent registered the disputed domain names <cheapswarovskisale.net> and <discountswarovskioutlet.com> on May 9, 2012 and May 8, 2012 respectively, long after the SWAROVSKI mark became internationally famous (Annex A to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) Complainant is the exclusive owner of trademark rights in the SWAROVSKI Marks.

Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones.

Complainant has registered the SWAROVSKI Marks globally (an excerpt of a selection of the registrations is attached as Annex B to the Complaint), including China (Annex C to the Complaint).

Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>.

Both of these domain names point to Complainant’s official website, located at <swarovski.com> (Annex I and Annex J to the Complaint).

(b) The disputed domain names were improperly registered and are being improperly used.

Respondent registered the disputed domain names and is operating online shops that offer purported Swarovski products for sale (Annex K to the Complaint).

Respondent is using the disputed domain names to confuse consumers into believing that Respondent’s websites are official Complainant’s websites and/or Respondent is affiliated with or authorised to sell products by Complainant.

The marketing material used on the websites that the disputed domain names currently resolve (“Infringing Websites”) i.e. the picture of the model on the home page and the background of all the web pages are identical to the official website of the Complainant, which may mislead consumers into thinking that the Infringing Websites are in fact affiliated with the Complainant (see Annex K to the Complaint).

Respondent does not at any point identify himself as being independent from the Complainant and the Respondent is clearly intending to create the impression that the Infringing Websites are official Swarovski websites.

The disputed domain names are a blatant infringement of the SWAROVSK Marks and no bona fide use is being made of the disputed domain names. Respondent is trying to pass himself off as Swarovski and is exploiting the goodwill associated with the SWAROVSK Marks in order to obtain commercial gain.

(c) The disputed domain names are identical and confusingly similar to the SWAROVSKI Marks.

UDRP administrative panels have recognised that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.

Respondent has used the SWAROVSK Marks in the disputed domain names so as to cause confusion among Internet users between the disputed domain names and Swarovski approved websites.

Misdirecting Internet users to the disputed domain names takes advantage of the behaviour pattern identified in Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2012-0872 for commercial gain.

The addition of generic words like “cheap”, “sale”, “discount” and “outlet” to a trademark (and in particular to a trademark such as SWAROVSKI) is not enough of a differentiation from that trademark to avoid a finding of confusing similarity.

The addition of the term “sale” as a suffix to the SWAROVSKI Marks in the disputed domain name <cheapswarovskisale.net> and the term “outlet” as a suffix to the disputed domain name <discountswarovskioutlet.com> strengthens rather than weakens the relationship between the disputed domain names and the Complainant’s mark, as Swarovski is well-renowned for its sale of crystal jewellery products online.

The addition of the prefix “cheap” in the disputed domain name <cheapswarovskisale.net> and “discount” in the disputed domain name <discountswarovskioutlet.com> does not lessen the confusing similarity between the disputed domain names and the Complainant’s mark.

(d) Respondent has no legitimate interest or rights in the disputed domain names.

Complainant’s rights in the SWAROVSK Marks have been recognised by several UDRP administrative panels.

Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSK Marks in a domain names or in any other manner.

Respondent has never been known by the disputed domain names and has no legitimate interest in the SWAROVSK Marks or the name “Swarovski”.

Respondent has used the SWAROVSKI Marks in the disputed domain names to create the impression that he is associated with Swarovski. The misappropriation of the disputed domain names was no accident.

Respondent’s use of the SWAROVSK Marks is clearly for the purpose of misleading consumers into believing that the Respondent and the Infringing Websites are associated with or approved by Swarovski.

Previous UDRP panels have held that when a respondent chooses to incorporate a well-known trademark (like the SWAROVSK Marks) into a domain name without the authorisation of the trademark holder that this cannot be considered a bona fide offering.

(e) The disputed domain names were registered and are being used in bad faith.

(i) Disputed domain names have been registered in bad faith

Respondent has registered the disputed domain names in bad faith because it is inconceivable that the Registrant was unaware of Complainant’s rights in the SWAROVSK Marks at the time of registration.

Respondent’s selection of the disputed domain names, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark.

Furthermore, the Respondent offers for sale a variety of Swarovski products at the Infringing Websites. Registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

Previous UDRP administrative panels have found that coupling a descriptive word with complainant’s mark or even a word similar to complainant’s mark in a domain name constitutes bad faith on the part of respondent.

(ii) The disputed domain names are being used in bad faith

Complainant’s trademarks are well known in China and worldwide and the Respondent’s use of the disputed domain names is confusingly similar to the registered trademarks of Complainant.

Respondent has done nothing to identify itself as being independent from Complainant.

Many UDRP panelists have held that a respondent’s very method of infringement by using SWAROVSKI Marks to lure consumers to its website demonstrates bad faith use under the Policy.

Respondent’s registration and use of the disputed domain names creates “initial interest confusion”, which attracts Internet users to the Infringing Websites because of its purported affiliation with Swarovski.

The address provided by the Respondent in the WhoIs database is not a proper postal address and therefore it is apparent that these details are false. This would also constitute bad faith use of the disputed domain names (see Annex A to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The contents on the Infringing Websites are in English

(b) Respondent appears to operate internationally in multiple languages.

(c) It is presumable that Respondent is able to communicate in English.

(d) Swarovski is an international brand with registered marks in multiple jurisdictions whose international business primarily operates in English.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Liechtenstein, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Infringing Websites at the disputed domain names includes the Latin characters “Swarovski” and the English words “cheap” , “sale”, “discount” and “outlet” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names are registered in Latin characters and particularly in the English language, rather than Chinese script; (b) the websites at the disputed domain names are an English-based websites and Respondent is apparently doing business in English through this websites (Annex K to the Complaint); (c) the Websites appear to have been directed to users in worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the SWAROVSKI Marks acquired through registration. The SWAROVSKI Mark has been registered worldwide including in China, and Complainant has a widespread reputation in producing cut crystal, genuine gemstones and created stones.

The disputed domain names <cheapswarovskisale.net> and <discountswarovskioutlet.com> comprise the SWAROVSKI Mark in its entirety. The disputed domain name <cheapswarovskisale.net> only differs from Complainant’s trademark by the addition of the word “cheap” and the final word “sale” to the mark SWAROVSKI. The disputed domain name <discountswarovskioutlet.com> only differs from Complainant’s trademark by the addition of the word “discount” and final word “outlet” to the mark SWAROVSKI. In the Panel’s view, these do not eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “cheap” and a suffix “sale” to Complainant’s mark fails to distinguish in the disputed domain name <cheapswarovskisale.net>. By contrast, it may increase the likelihood of confusion. Consumers who visit <cheapswarovskisale.net> are likely to be confused and may falsely believe that this domain name is operated by Complainant for selling SWAROVSKI-branded products. In a same way, the mere addition of the descriptive term “discount” and a term “outlet” as a suffix to Complainant’s mark fails to distinguish also in the disputed domain name <discountswarovskioutlet.com>. By contrast, it may also increase the likelihood of confusion. One of the common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Consumers who visit <discountswarovskioutlet.com> are likely to be confused and may falsely believe that the domain name is operated by Complainant for selling discounted SWAROVSKI-branded products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the SWAROVSKI Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:

(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the SWAROVSKI Mark globally (international registration - see Annex B to the Complaint), including SWAROVSKI Mark registration in China since 1987 – (see Annex C to the Complaint) which long precedes Respondents’ registrations of the disputed domain names (in May 2012).

According to Complainant, Complainant is the world’s 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 2011, Complainant’s products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.

Moreover, Respondent is not an authorized dealer of SWAROVSKI branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “Swarovski” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SWAROVSKI Mark or to apply for or use any domain names incorporating the SWAROVSKI Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names <cheapswarovskisale.net> and <discountswarovskioutlet.com> on May 9, 2012 and May 8 2012 respectively. The disputed domain names are identical or confusingly similar to Complainant’s SWAROVSKI Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Swarovski products at <cheapswarovskisale.net> and <discountswarovskioutlet.com> (Annex K to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.

a). Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the SWAROVSKI Mark with regard to its products. Complainant has registered its SWAROVSKI Marks internationally, including registration in China (since 1987). Moreover, according the information provided by Complainant, Respondent states on the homepage of the website at the disputed domain name <cheapswarovskisale.net> that “We can now provide our worldwide customers with expertise and quality Swarovski crystal items”. Furthermore, on the home page of the website at the disputed domain name <discountswarovskioutlet.com>, Respondent claims “Indulge yourself in glamour and luxury with the latest crystal-encrusted masterpieces”. These clearly intend to give consumers the impression of an affiliation with or authorization by Complainant.

As such, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark at the time of the registration of the disputed domain names. The Panel therefore finds that the SWAROVSKI Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s Swarovski branded products.

b). Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s SWAROVSKI branded products and services without authorization. Complainant claimed that Respondent has incorporated the SWAROVSKI Marks in the disputed domain names, in the Infringing Websites, and are attempting to attract consumers for commercial gain by purporting to sell Swarovski products.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the SWAROVSKI Mark (as well as the content on the Infringing Websites - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved (see Annex K to the Complaint). In other words, Respondent has, through the use of confusingly similar domain names and webpage contents, created a likelihood of confusion with the SWAROVSKI Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain names, potential partners and end users are led to believe that the websites at <cheapswarovskisale.net> and <discountswarovskioutlet.com> are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the Websites on to which the domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names at <cheapswarovskisale.net> and <discountswarovskioutlet.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: August 31, 2012

 

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