WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard / li chun
Case No. D2012-1369
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is WhoisGuard of Los Angeles, California, United States of America; li chun of Shenyang, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewelry-shop.com> is registered with eNom.
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 eNom a request for registrar verification in connection with the disputed domain name. On July 6, 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 Complainant on July 9, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 9, 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 15, 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 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 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, Complainant is the holder of several registrations in the United States and internationally for the trademark SWAROVSKI.
In addition, Complainant has registered several domain names including <swarovski.com> and <swarovski.net>.
Respondent registered the disputed domain name on April 16, 2012, through which it operates an online shopping.
5. Parties’ Contentions
Complainant is the holder of several trademark registrations. 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.
Complainant’s rights in the SWAROVSKI trademarks have been recognized by several WIPO UDRP administrative panels.
Respondent has used the SWAROVSKI trademarks in the disputed domain name so as to
cause confusion among Internet users between the disputed domain name and the Swarovski approved websites.
Internet users who intend to purchase Swarovski products online may type “www.swarovskijewerly-shop.com” into the address bar on their web browser, as a reference to Swarovski jewelry, and be directed to the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s trademark. The descriptive terms “jewerly” and “shop” are not sufficient to distinguish the disputed domain name from Complainant’s trademarks. The use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity with the SWAROVSKI trademarks.
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 Respondent.
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.
Respondent is not an authorized Swarovski agent and therefore does not have the right to use the
SWAROVSKI trademarks 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 Respondent is trying to pass itself off as Complainant and is exploiting the goodwill associated with the SWAROVSKI trademarks in order to obtain commercial gain.
Furthermore, Respondent has used the SWAROVSKI trademarks throughout the disputed domain name, in the “title bar” and offers purported Swarovski products for sale on the website at the disputed domain name, which supports the contention that Respondent has chosen the disputed domain name for the purpose of creating an association with Complainant.
The disputed domain name was registered in bad faith because it is inconceivable that Respondent was unaware of Complainant’s rights in the SWAROVSKI trademarks at the time of registration.
Complainant cites previous WIPO 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.
Previous WIPO UDRP panel decisions have held that when a respondent chooses to incorporate a well known trademarks (like the SWAROVSKI trademarks) into a domain name without the authorization of the trademark holder that this cannot be considered a bona fide offering.
According to Complainant, the disputed domain name advertises for sale various purported Swarovski products e.g. “Necklaces & Pendants”, “Earrings”, “Rings”, “Bangles & Bracelets”, “Brooches & Pins”
and more. Respondent would not have advertised products purporting to be Swarovski products on the website at the disputed domain name if it was unaware of Swarovski’s reputation.
Respondent has done nothing to identify himself as being independent from Complainant. On the contrary, Respondent had incorporated the 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.
Respondent is attempting to attract consumers for commercial gain to the disputed domain name by utilizing the SWAROVSKI trademarks.
In addition, Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the website at the disputed domain name because of its purported affiliation with Swarovski. This is further evidence of Respondent’s bad faith registration and use of the disputed domain name.
Thus, the disputed domain name was registered and is being used in bad faith.
Complainant requests the transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, 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 Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established its trademark rights in SWAROVSKI as evidenced by the trademark registrations submitted with the Complaint..
The Panel is also prepared to find that the disputed domain name <swarovskijewelry-shop.com> is confusingly similar to Complainant’s trademark SWAROVSKI. The name “Swarovski” is clearly the dominant element of the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark SWAROVSKI.
The addition of the descriptive terms “jewelry” and “shop” separated by a hyphen “-” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the disputed domain name as referring to an entity other than Complainant. In fact, because the terms “jewelry” and “shop” are generic and may be easily associated with Complainant’s products they may enhance confusion of Internet users.
Consequently, this Panel finds the disputed domain name confusingly similar to the trademark in which 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 Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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 Respondent’s rights or legitimate interests in the disputed domain name. Complainant has not authorized, licensed, or permitted Respondent to register or use the domain name or to use the trademark. Complainant has prior rights in the trademark, which precede Respondent's registration of the disputed domain name by several years. Complainant first registration of the SWAROVSKI trademark in the United States dates from May 1972, while Respondent registered the disputed domain name in April 2012.
Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden to 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.
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 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.
Complainant’s 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 view of the fact that the Complainant’s trademarks is well-known (as set above), it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of 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 related to Complainant. This Panel visited the disputed domain name on Friday, August 24, 2012 and was able to verify that the Swarovski swan logo is featured in the website at the disputed domain name, as well as several mentions of the trademark SWAROVSKI for each of the products offered in the website.
Respondent’s use of the disputed domain name to direct visitors to a website which so obviously uses the Complainant’s registered trademarks in order to sell identical or similar products to those of Complainant’s 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 Complainant in this Panel’s view, Respondent had or has no right and no authorization to register and use the disputed domain name (WIPO Overview 2.0, paragraph 2.3). And the Panel further notes that the website does not accurately and prominently disclose the registrant’s relationship with the trademark holder.
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 <swarovskijewelry-shop.com> be transferred to Complainant.
Pablo A. Palazzi
Dated: August 29, 2012