WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Ethan Jones / PrivacyProtect.org
Case No. D2012-1390
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Ethan Jones of Fremont, California, United States of America; PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <swarovskiprstene.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On July 9, 2012, UK2 Group Ltd. 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 12, 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 12, 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 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 14, 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 2011, the Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 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.
In addition, Complainant has registered several domain names including <swarovski.com> and <swarovski.net>.
The disputed domain name was registered on October 11, 2011 and was used to operate an online shop with content in the English and Czech languages.
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 Complainant’s rights in the SWAROVSKI trademarks have been recognized by several UDRP panels.
The 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 “swarovskiprstene.com” into the address bar on their web browser, and be directed to the disputed domain name.
Internet users, particularly in the Czech Republic, may also type “www.swarovski prstene” into their search engine, where the website at the disputed domain name appears as the fifth and the fifteenth to the twentieth of the top twenty search results (according to Annex M of the Complaint).
The disputed domain name is confusingly similar to the registered trademark of the Complainant. The descriptive term “prstene” (meaning ring in Czech) is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.
According to the Complaint, the use of the word “prstene” along with the SWAROVSKI trademarks is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity with the SWAROVSKI 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 interests 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 disputed domain name. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest in the domain name.
The disputed domain name is an 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 the 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.
Previous UDRP panels have held that when a respondent chooses to incorporate a well known trademark (like the SWAROVSKI trademarks) into a domain name without the authorization of the trademark holder cannot be considered bona fide.
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 the SWAROVSKI trademarks in the disputed domain name, throughout the website at the disputed domain name, 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.
In addition, the 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 the 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.
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 <swarovskiprstene.com> is confusingly similar to the Complainants' 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 word “prstene” (that means “ring” in Czech language) 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 trademark SWAROVSKI.
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 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 use the Complainant’s trademarks on the website for commercial purposes without any disclaimer or explanation 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.
The 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).
Thus 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, the Complainant has stated that the website at the disputed domain name offers to sell a variety of products such as “Swarovski Rings”, “Swarovski Necklaces”, and “Swarovski Bracelets”. The disputed domain name also contains the Swarovski swan logo. The Respondent has not denied these assertions.
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.
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 <swarovskiprstene.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: August 28, 2012