World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Li XiaoLi

Case No. D2012-1401

1. The Parties

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

Respondent is Li XiaoLi of Jiang Su, China.

2. The Domain Names and Registrar

The disputed domain names <ouraswarovski.com>, <ourbswarovski.com>, <ourswarovski.com>, <swarovskianecklace.com>, <swarovskiaoutlet.com>, <swarovskibnecklace.com>, <swarovskiboutlet.com>, <swarovskicnecklace.com>, <swarovskicoutlet.com>, <swarovskidoutlet.com>, <swarovskieoutlet.com>, <swarovskijewelrysale.com> and <swarovski-saleoutlet.com> are registered with Todaynic.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2012. On July 10, 2012, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 12, 2012, Todaynic.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 8, 2012.

The Center appointed Ross Carson as the sole panelist in this matter on August 22, 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 the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 8 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. Complainant advertises its cut glass and jewelry in association with its trademark SWAROVSKI throughout the world. The SWAROVSKI star has been a feature of the famous Rockefeller Center Christmas Tree in New York City for over twenty years. In December, 2011 Complainant unveiled an 18 meter crystal Christmas tree at Xiamen S M Lifestyles Center in the People’s Republic of China. Complainant and its distributers advertise SWAROVSKI cut glass, jewelry and other products extensively through all types of media and the Internet all over the world and have been doing so for decades. Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI Mark throughout China. As a result, the SWAROVSKI Mark has become well known in China and distinguishes Complainant’s goods.

The trademark SWAROVSKI is registered in many countries throughout the world in relation to goods and services in many International Classes. Complainant is the owner of European Community Trademark SWAROVSKI, Registration No. 000120576, registered October 15, 1998 in relation to goods and services in International Classes 3, 9, 11, 14, 16, 18, 21, 25,and 26. Complainant is the owner of numerous registration of SWAROVSKI in the United Kingdom and the United States of America. Complainant is the registered owner of the Trademark SWAROVSKI registered in the People’s Republic of China as Registration No. 384001, registered July 30, 1987 in respect of goods in International Class 14. Complainant is also the owner of other registrations in China for SWAROVSKI in Chinese.

Complainant has registered several domain names, including <swarovski.com>, created January 11, 1996, and <swarovski.net>, created April 4, 1998, which point to Complainant’s official website, located at “www.swarovski.com”. The official website enables internet users to access information regarding Complainant and its merchandise and to purchase genuine SWAROVSKI products.

The 13 disputed domain names where created between March 16 and July 4, 2012.

5. Parties’ Contentions

A.1 Complainant

A.1. Identical or Confusingly Similar

Complainant states that it is the registered owner of numerous national, European Community, and Chinese trademarks for its trademark SWAROVSKI as set out in Section 4 immediately above.

Complainant submits that each of the disputed domain names is confusingly similar to its registered trademark SWAROVSKI. Complainant states that previous UDRP administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark. See, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 (“Crichton”).

Complainant further states that previous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, Swarovski Aktiengesellschaft v. Wutianhao WIPO Case No. D2010-0503 (May 24, 2010) and Swarovski Aktiengesellschaft v. Kation King, WIPO Case No. D2012-0079 (March 22, 2012).

Complainant further states that previous UDRP administrative panels have found that coupling a common word with the Complainant’s trademark or even a word similar to the Complainant’s trademark in a domain name does not negate a finding of confusing similarity. See, Swarovski Aktiengesellschaft v. Swarovsk AG, WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI…will make actual confusion among consumers likely”).

Complainant submits that the disputed domain name <swarovskijewelrysale.com> comprised of Complainant’s trademark SWAROVSKI and the generic terms “jewelry” and “sale” are confusingly similar to Complainant’s trademark SWAROVSKI. It is clearly established that the addition of generic words like “jewelry” and “sale” as suffixes to a trademark (and in particular to a trademark such as “SWAROVSKI”) strengthens rather than weakens the relationship between the domain name and the Complainant, as Swarovski is well-renowned for its sale of crystal jewelry products. See, Swarovski Aktiengesellschaft v. Wutianhao, WIPO Case No. D2010-0503 (May 24, 2010) (“the disputed domain name consists of “swarovskicrystalshop”, which can easily be read as “swarovski”, “crystal” and “shop”. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant's business is more likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant's trademark”); and Swarovski Aktiengesellschaft v. Kation King, WIPO Case No. D2012-0079 (March 22, 2012).

Complainant further submits that the disputed domain names <swarovskiboutlet.com>, <swarovskicoutlet.com>, swarovskibnecklace.com>,<swarovskidoutlet.com>, <swarovskieoutlet.com>,<swarovski-saleoutlet.com>,<swarovskianecklace.com>, <ourswarovski.com>, <ouraswarovski.com>,<swarovskicnecklace.com>, and <ourbswarovski.com> are confusingly similar to Complainant’s trademark SWAROVSKI. The addition of the terms “b”, “c”, “d”, “a”, “e”, “our”, “sale”, “outlet” and “necklace” as suffixes to the SWAROVSKI registered trademark is not enough of a differentiation from that trademark to avoid a finding of confusing similarity. See, e.g. Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 (March 1, 2012) (“Moreover, the addition in the disputed domain name of the term “crystal” only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals. The addition of “outlets” also contributes to this association in referring to points of sale for crystals made by Complainant”) and Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy.com / Seek Knight, WIPO Case No. D2012-0177 (April 5, 2012).

Complainant further submits that the disputed domain name <swarovskiaoutlet.com> is confusingly similar to Complainant’s registered trademark SWAROVSKI. Once consumers arrive at the disputed domain name <swarovskiaoutlet.com> they will obviously see that no content is available on the site. However, the fact that these consumers were initially attracted to the domain name by the use of the SWAROVSKI trademark in the domain name is enough to contravene paragraph 4(a)(i) of the Policy.

Complainant states that numerous UDRP panels have found that the fact that a consumer realizes once they have arrived at a website associated with a domain name that it is not the trademark holder’s domain name does not detract from the fact that the respondent’s use of the trademark in the domain name is what initially attracted the user to the domain name in the first place. See, General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 (July 30, 2007) (“Respondent also points to the presence of disclaimers on its website making it very clear that there is no relationship between Complainant and the Respondent. However, while those disclaimers may well be effective in disabusing internet users of an confusion once they arrive at Respondent’s site, they clearly do not offset the obvious risk of so-called ‘initial interest confusion’”) and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (January 25, 2001). Although the disputed domain name currently leads to a page with no website it is important to note that the Respondent was previously using the disputed domain name to operate an online shop and could at any time in the future upload another online shop or a similarly infringing website at the domain name.

Complainant further submits that it has been recognized by previous UDRP administrative panels that the content of a website at a domain name is irrelevant in the finding of confusing similarity and the real test for confusing similarity is whether a comparison between the trademark and the domain name reveals that there is a likelihood of confusion. See, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (April 2, 2001). Similarly, the addition of the terms “a” and “outlet” as suffixes to the SWAROVSKI trademark in the domain name <swarovskiaoutlet.com> is not enough of a differentiation from that trademark to avoid a finding of confusing similarity. See, e.g. Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 (March 1, 2012) and Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy.com / Seek Knight, WIPO Case No. D2012-0177 (April 5, 2012).

Complainant further submits that that the disputed domain name <swarovski-saleoutlet.com> is confusingly similar to Complainant’s registered trademark SWAROVSKI. Several UDRP Panelists have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity with the SWAROVSKI trademark. See e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (May 7, 2012)(“ It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name and indicators for top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”); Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022 (January 26, 2011) and Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010- 2067 (January 26, 2011).

A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Names

Complainant submits that its rights in the SWAROVSKI trademark have been recognized by several WIPO administrative panels. In Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 (April 19, 2011) the panel stated that the “Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices…Complainant’s trademark rights in SWAROVSKI preceede this domain name registration”.

Complainant further submits that it is clear that Respondent has no rights or legitimate interest in the disputed domain names.

Complainant states that Respondent has no connection or affiliation with it and has not received any license or consent, express or implied, to use the SWAROVSKI trademark in a domain name or in any other manner.

Complainant further states that Respondent has never been known by the disputed domain names and has no legitimate interest in the SWAROVSKI trademark or the name “Swarovski”. See, Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981 (August 1, 2011). WIPO administrative panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067 (March 20, 2001). Respondent has used the SWAROVSKI trademark in the disputed domain names to create the impression that it is associated with Complainant. Furthermore it had used the SWAROVSKI trademark throughout the websites at the disputed domain names and offers purported Swarovski products for sale which supports the contention that it chose the disputed domain names only because he was seeking to create an association with Complainant.

Complainant further submits that the misappropriation of the disputed domain names was no accident. Where a mark is famous and well-known, as with the SWAROVSKI trademark, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the complainant (see, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). The use of the SWAROVSKI trademark is clearly for the purpose of misleading consumers into believing that Respondent and the disputed domain names are associated with or approved by Complainant. Respondent does not have legitimate interests in the SWAROVSKI trademark. Previous UDRP panels have held that when a respondent chooses to incorporate a well-known trademark like SWAROVSKI into a domain name without the authorization of the trademark holder that this cannot be considered a bona fide offering. See,General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007- 0645 (July 30, 2007) and The Marigny Corporation v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354 (May 17, 2001).

Complainant submits that registration of several domain names that incorporate a well-known trademark, by a single respondent, does not create a legitimate interest in the infringing domain names. See, e.g., case Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209 (February 9, 2012).

Complainant states that Respondent’s previous use of the disputed domain name <swarovskiaoutlet.com> to sell goods similar to and purporting to be those produced and sold by Complainant can also be taken into consideration by the panel in determining bona fide or legitimate use. In, E. Gluck Corporation v. James L. Clark d/b/a Animationwerks, WIPO Case No. D2000-1651 (February 19, 2001) the panel found that the respondent’s prior use of the domain name was not bona fide and therefore there was no legitimate interest. The panel in E. Gluck made the following observations, “the Respondent initially registered the disputed domain name and tried to obtain the associated trademarks in order to pursue the same business as Complainant, i.e., to sell watches. At that point the domain name selling watches infringed the complainant's trademark rights. The Panel finds this is the appropriate point to determine whether the Respondent was using the domain name to make a bona fide offering of goods and services, and the Panel finds Respondent's infringing use was not a bona fide use”. Similarly, prior to the removal of the content at the website associated with the disputed domain name <sworvskiaoutlet.com> by the ISP, in this case, Respondent was operating an online shop at the domain name and was selling products claiming to be Complainant’s products.

A.3. Registration and Use in Bad Faith

Complainant states that the disputed domain names were registered in bad faith because it is inconceivable that Respondent was unaware of Complainant’s rights in the SWAROVSKI trademark at the time of registration of the disputed domain names in 2012. Previous UDRP panel decisions have concluded that the SWAROVSKI trademark is well-known and that unauthorized registrants utilizing the SWAROVSKI trademark in domain names do so specifically with Complainant’s trademark in mind. See, e.g. Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) (“The Respondent’s websites have expressly reflected the SWAROVSKI name and trade mark in relation to crystal jewelry and decorative objects, all of which demonstrate awareness of the Complainant’s mark”) and Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981(August 1, 2011).

In the case Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 (February 20, 2012) the panel stated “that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered”, as “it is unlikely that the Respondent would choose the Domain Name she did, unless seeking to create an impression of association with the Complainant”. The panel also pointed out that “no obvious steps have been taken by the Respondent to prevent the risk of confusion and there is clearly a likelihood of Internet users concluding, wrongly, that some form of association between Complainant and Respondent exists”. Therefore, “the Respondent must have known this when registering and using the Domain Name”, and “accordingly, for the purposes of the Policy, the Panel is satisfied that there has been both registration and use of the Domain Name in bad faith”.

Complainant further states that the selection of the disputed domain names, which wholly incorporate the SWAROVSKI trademark, cannot be a coincidence, “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark. Respondent offers for sale a variety of Complainant’s SWAROVSKI products at the websites associated with the domain names <swarovskieoutlet.com>, <ourbswarovski.com>, <swarovskicnecklace.com>. Furthermore, the website previously displayed at the disputed domain name <swarovskiaoutlet.com> offered for sale a variety of Complainant’s SWOROVSKI products such as “Swarovski Necklaces”, “Swarovski Earrings”, “Swarovski Bracelets”, “Swarovski Rings”, “Swarovski Charms” and more. Respondent would not have advertised products purporting to be Complainant’s products if it was unaware of Complainant’s reputation. See, Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638 (February 12, 2010).

Complainant further states that registration of a famous mark, like SWAROVSKI, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. See, Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) (“the registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark generally constitutes bad faith registration”). 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. See, Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065 (February 17, 2012) (“the Panel agrees with the Complainant’s contention that the Respondent did not register and use the Domain Name, which incorporates the Complainant’s well-known and well-established registered trademark SWAROVSKI, by chance, but on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the retail jewelry industry. Indeed, this reasonable inference is strengthened by the fact that the Domain Name also incorporates the descriptor “outlet”. This, in the view of the Panel, is a further indication of the Respondent’s intention to mislead consumers and users of the Internet and, as such, constitutes bad faith on the part of the Respondent”).

Complainant further states that in Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), the panel considered the fame and reputation of a complainant’s mark persuasive in determining a respondent’s bad faith intent and found that the complainant’s numerous trademark registrations, together with its wide reputation in the name “Telstra” left no other possible interpretation of the respondent’s registration of the domain name <telstra.org> other than that of bad faith. Similarly, given the fame of the SWAROVSKI trademark, there is no other conceivable interpretation of the registration and use of the disputed domain names other than that of bad faith. See, Swarovski Aktiengesellschaft v. lin, WIPO Case No.. D2010-2052 (January 21, 2011). In Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 (February 18, 2012) the panel stated that “By registering and using the disputed domain name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record in the Case File, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent”.

A.4. Use in Bad Faith

Complainant submits that Respondent’s bad faith is further evidenced by several circumstances indicating that Respondent must have been aware of the SWAROVSKI trademark. The SWAROVSKI trademark is well known in China and worldwide (see, Swarovski Aktiengesellschaft v. Lvbing Fei, WIPO Case No. D2012-0187 (April 17, 2012)) and as already discussed, the disputed domain names are confusingly similar to the SWAROVSKI trademark

Complainant states that Respondent has done nothing to identify itself as being independent from Complainant. On the contrary, Respondent has incorporated the SWAROVSKI trademark in the disputed domain names throughout the websites associated with the disputed domain names, and is attempting to attract consumers for commercial gain by purporting to sell Swarovski products. In, Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) it was stated that such conduct “demonstrates awareness of the Complainant’s mark and an intention to capitalize on its fame”. The panel also concluded that “the only logical explanation for the Respondent’s choice of the disputed domain names is that it was for the purpose of attracting and misleading Internet users to the Respondent’s websites for commercial advantage. This constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy”. Many UDRP arbitration panelists have held that Respondent’s very method of infringement, using the exact SWAROVSKI trademark to lure consumers to the websites at the disputed domain names demonstrates bad faith use under the Policy. See e.g., Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 (January 21, 2011).

Complainant further submits that Respondent’s registration and use of the disputed domain names creates “initial interest confusion”, which attracts Internet users to the online shops operated at the disputed domain names <swarovskieoutlet.com>, <ourbswarovski.com> and <swarovskicnecklace.com> and at the online shop previously operated at the disputed domain name <swarovskiaoutlet.com>, because of its purported affiliation of the SWAROVSKI trademark with Complainant. This is further evidence of Respondent’s bad faith registration and use of the disputed domain names. See, Swarovski Aktiengesellschaftv. Hopper Dirt, WIPO Case No. D2011-1525 (December 5, 2011).

Complainant further submits that it is unlikely that Respondent can prove good faith use of the disputed domain names because it is difficult to conceive of a use that would not infringe the SWAROVSKI trademark. See, Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878 (January 18, 2005).

Complainant further submits that Respondent is attempting to attract consumers for commercial gain to the websites associated with the disputed domain names by utilizing the SWAROVSKI trademark. Respondent, without valid consent, utilizes the SWAROVKI trademark throughout the websites associated with the disputed domain names and offers products identical to or similar to Complainant’s products for sale. UDRP administrative panels have determined that this type of behavior is indicative of bad faith. See, e.g. Swarovski Aktiengesellschaft v. bingbing chen, WIPO Case No. D2011-1524 (November 1, 2011) (“the Respondent’s use of the Disputed Domain Name in selling goods under the SWAROVKSI Mark without authorization from the Complainant is a sign of the Respondent’s bad faith use of the Disputed Domain Name”) and Swarovski Aktiengesellschaft v. Chen Meifeng WIPO Case No. D2011-0364 (April 19, 2011).

Complainant states that Respondent is not currently using the website at the disputed domain name <swarovskiaoutlet.com> to operate an online shop. In,Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) it was clearly recognized that “The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See, also Swarovski Aktiengesellschaft v. David Osgood, David, WIPO Case No. D2011-0937 (August 3, 2011). The administrative panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) stated that “in considering whether a passive holding of a domain name, following a bad faith registration of it satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior”. Therefore bad faith can be inferred from the strong reputation and wide recognition of the SWAROVSKI trademark and the fact that the Respondent continues to maintain the registration of the disputed domain names despite its awareness of Complainant’s rights in the SWAROVSKI trademark.

Complainant submits that Respondent does not have to be actively using the disputed domain name <swarovskiaoutlet.com>. This coupled with the fact that Respondent has used the word “Swarovski” is a further indication of Respondent’s bad faith use of the domain name <swarovskiaoutlet.com>. In, Alstom v. Itete Peru S.A, . WIPO Case No. D2009-0877 (August 27, 2009) the panel found bad faith use to exist where respondent did not actively use a domain name because “Complainant has shown that it has a mark that is widely known and widely registered throughout the world. The domain name has not been used for any legitimate reason even though many years have passed since it was first registered. Under these circumstances, it appears more likely than not that Respondent's passive holding of the domain name constitutes bad faith use of the domain name in violation of the Policy”. The same set of factors exists in relation to the disputed domain name <swarovskiaoutlet.com> and therefore Respondent’s use of the disputed domain name <swarovskiaoutlet.com> constitutes bad faith use.

Complainant states that it forwarded a letter to the Information Service Provider for the disputed domain names <swarovskijewelrysale.com> and <swarovskiaoutlet.com> advising the ISP that the web pages associated with the domain names were replete with infringing uses of the SWAROVSKI trademark. The webpage associated with the disputed domain name <swarovskiaoutlet.com> was shut down and the disputed domain name <swarovskiaoutlet.com> has no webpage associated with it. Although, Complainant has successfully removed the online shop that was being operated at the disputed domain name <swarovskiaoutlet.com>, the Complainant is not in control of the disputed domain name and Respondent is at liberty to upload new content to this disputed domain name at any time. Therefore in order to prevent Respondent from using the disputed domain name <swarovskiaoutlet.com> to operate an unauthorized website, such as an online shop similar to the way in which Respondent previously used the disputed domain name <swarovskiaoutlet.com>, Complainant is instituting this administrative proceeding to have the disputed domain name <swarovskiaoutlet.com> transferred to it.

Complainant further states that Respondent has used the SWAROVSKI trademark in association with unauthorized SWAROVSKI products on the webpages associated with the disputed domain names <swarovskiboutlet.com>,<swarovskicoutlet.com>, <swarovskibnecklace.com>, <swarovskidoutlet.com>,<swarovskieoutlet.com>,<swarovskijewelrysale.com>, <swarovski-saleoutlet.com>, <swarovskicnecklace.com>, <ourbswarovski.com>, <swarovskianecklace.com>,< ourswarovski.com> and <ouraswarovski.com>.

Complainant further submits that it is particularly concerned about the possibility of cyberflight and also about the damage Respondent is causing to Complainant and the SWAROVSKI trademarks. Complainant states that it has considerable experience dealing with respondents of this nature who so blatantly infringe the SWAROVSKI trademark. In Complainant’s experience these respondents are unwilling to voluntarily discontinue use of the SWAROVSKI trademark because they are already aware that what they are doing is illegal and constitutes trademark violation. Complainant has not provided Respondent with a cease and desist letter as Complainant has previously dealt with respondents who rather than discontinue the use of SWAROVSKI trademark upon receipt of a cease and desist letter from Complainant, transfer the domain name to another registrant in order to delay the process and thwart Complainant’s efforts to resolve the dispute. This allows such respondents to continue to exploit the SWAROVSKI trademark. Therefore in order to prevent cyber-flight and minimize the detrimental effects of Respondent’s exploitation of the SWAROVSKI trademark and resulting damage to Complainant it has commenced this administrative proceeding without sending Respondent a cease and desist letter.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

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 names registered by Respondent are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of numerous trademark registrations for the trademark SWAROVSKI. It has registered a large number of national, Community and international trademarks for SWAROVSKI including, inter alia, European Community Trademark SWAROVSKI, Registration No. 000120576, registered October 15, 1998 in relation to goods and services in International Classes 3, 9, 11, 14, 16, 18, 21, 25,and 26. Complainant is the owner of numerous registration of SWAROVSKI in the United Kingdom and the United States of America. Complainant is the registered owner of the Trademark SWAROVSKI registered in the People’s Republic of China as Registration No. 384001, registered July 30, 1987 in respect of goods in International Class 14. Complainant is also the owner of other registrations in China for SWAROVSKI in Chinese. The goods in International Class 14 include natural or synthetic precious stones of all types and for every purpose, gemstones, genuine and imitation jewellery.

The disputed domain names <ouraswarovski.com>, <ourbswarovski.com>, <ourswarovski.com>, <swarovskianecklace.com>, <swarovskiaoutlet.com>, <swarovskibnecklace.com>, <swarovskiboutlet.com>, <swarovskicnecklace.com>, <swarovskicoutlet.com>, <swarovskidoutlet.com>, <swarovskieoutlet.com>, <swarovskijewelrysale.com> and <swarovski-saleoutlet.com> all include the term “swarovski” as the distinctive element of the disputed domain names in association generic or descriptive terms “our”, ”necklace”, “outlet”, “jewelry”, or “saleoutlet” either alone or in conjunction with the letter “a”, “b”, “c”, or “d”. or a ‘hyphen”. Numerous UDRP panels have found that domain names comprised of the well-known trademark SWAROVSKI as the distinctive element in conjunction with descriptive or generic terms are confusingly similar to the registered trademark SWAROVSKI. See, See, Swarovski Aktiengesellschaft v. Swarovsk.AG, WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “.com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI will make actual confusion among consumers likely”). See also, Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 (March 1, 2012) (“Moreover, the addition in the disputed domain name of the term “crystal” only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals. The addition of “outlets” also contributes to this association in referring to points of sale for crystals made by Complainant”) and Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy.com / Seek Knight, WIPO Case No. D2012-0177 (April 5, 2012).

The disputed domain names all include Complainant’s trademark SWAROVSKI in full as the distinctive part of the disputed domain names. Previous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, Swarovski Aktiengesellschaft v. Wutianhao WIPO Case No. D2010-0503 (May 24, 2010) and Swarovski Aktiengesellschaft v. Kation King, WIPO Case No. D2012-0079 (March 22, 2012).

All the disputed domain names include the generic Top Level Domain (gTLD) indicator “.com”. The disputed domain name <swarovski-saleoutlet.com> includes a hyphen. Numerous UDRP panels have found that the use of a gTLD indicator as part of a disputed domain name is typically irrelevant in consideration of confusing similarity. Several UDRP panelists have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity with the SWAROVSKI trademark. See e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (May 7, 2012)(“ It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name and indicators for top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”); Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022 (January 26, 2011) and Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067 (January 26, 2011).

The Panel finds that Complainant has proven on a balance of probabilities that the disputed domain names are confusingly similar to Complainant’s trademarks SWAROVSKI.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademark SWAROVSKI.

Complainant has been using its SWAROVSKI trademark since at least 1981 to promote its goods and services. Respondent appears to have registered or acquired the disputed domain names over thirty years later when Complainant’s SWAROVSKI trademark was well-known in the United States, Europe and China. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

There is no evidence that Respondent has ever been known by or used the trademark SWAROVSKI in association with its own goods or services. Respondent has used the disputed domain names in association with websites that use the SWAROVSKI trademark throughout the websites and offers purported Swarovski products for sale which supports the contention that he chose the disputed domain names only because it was seeking to create an association with Complainant. Use of the disputed domain names in association with copies or imitations of Complainant’s products is not a legitimate use of the disputed domain names. See, Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981 (August 1, 2011). WIPO administrative panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067.

The disputed domain name <svarovskiaoutlet.com> was previously used for a website that imitated the look and feel of Complainant’s official websites. On this website, which was not authorized by Complainant, Respondent offered goods resembling Complainant’s goods. Since Respondent is not an authorized dealer or licensee of Complainant, the Panel infers that Respondent was trying to confuse Internet users into thinking that the website under the disputed domain name was an official website of Complainant and was thus trying to profit from Complainant’s well-known SWAROVSKI trademark. Such use is not a legitimate use. Following a letter from Complainant to the Information Service Provider for the website “www.swarovskiaoutlet.com” the website that could before be accessed under the disputed domain name <swarovskiaoutlet.com> was disconnected. Presently, Respondent does not actively use the disputed domain name <swarovskiaoutlet.com> to operate a website.

Respondent’s previous use of the disputed domain name <swarovskiaoutlet.com> to sell goods similar to and purporting to be those produced and sold by Complainant can also be taken into consideration by the panel in determining bona fide or legitimate use. In, E. Gluck Corporation v. James L. Clark d/b/a Animationwerks, WIPO Case No. D2000-1651 (February 19, 2001), the panel found that the respondent’s prior use of the domain name was not bona fide and therefore there was no legitimate interest. The panel in E. Gluck made the following observations, “the Respondent initially registered the disputed domain name and tried to obtain the associated trademarks in order to pursue the same business as Complainant, i.e., to sell watches. At that point the domain name selling watches infringed the complainant's trademark rights. The Panel finds this is the appropriate point to determine whether the Respondent was using the domain name to make a bona fide offering of goods and services, and the Panel finds Respondent's infringing use was not a bona fide use”.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

C.1. Registered in Bad Faith

Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 8 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 €2.87 billion. Complainant advertises its cut glass and jewelry in association with its trademark SWAROVSKI throughout the world.

When the disputed domain names were registered between March and July of 2012, Complainant’s SWAROVSKI trademark had been registered around the world for over several decades in relation to goods and services in many International Classes including natural or synthetic precious stones of all types and for every purpose, gemstones, genuine and imitation jewellery. Complainant is the registered owner of the Trademark SWAROVSKI registered in the People’s Republic of China as Registration No. 384001, registered July 30, 1987 in respect of goods in International Class 14. Complainant is also the owner of other registrations in China for SWAROVSKI in Chinese.

Earlier Sections above cite numerous recent UDRP decisions involving the Complainant and respondents having addresses in the Chinese Peoples Republic in which previous panels found that the trademark SWAROVSKI was well known in China. Previous WIPO panel decisions have concluded that the SWAROVSKI trademark is well-known and that unauthorized registrants utilizing the SWAROVSKI trademark in domain names do so specifically with Complainant’s trademark in mind. See, e.g. Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) (“The Respondent’s websites have expressly reflected the SWAROVSKI name and trade mark in relation to crystal jewellery and decorative objects, all of which demonstrate awareness of the Complainant’s mark”) and Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981 (August 1, 2011).

In the case Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 (February 20, 2012) the panel stated “that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered”, as “it is unlikely that the Respondent would choose the Domain Name she did, unless seeking to create an impression of association with the Complainant”. The panel also pointed out that “no obvious steps have been taken by the Respondent to prevent the risk of confusion and there is clearly a likelihood of Internet users concluding, wrongly, that some form of association between Complainant and Respondent exists”. Therefore, “the Respondent must have known this when registering and using the Domain Name”, and “accordingly, for the purposes of the Policy, the Panel is satisfied that there has been both registration and use of the Domain Name in bad faith”.

Respondent’s selection of the disputed domain names, which wholly incorporate the SWAROVSKI trademark, cannot be a coincidence, “Swarovski” is not a descriptive or generic term; it is a famous and well known trademark. Respondent offers for sale a variety of Complainant SWAROVSKI products at the websites associated with the domain names <swarovskieoutlet.com>, <ourbswarovski.com>, <swarovskicnecklace.com>. Furthermore, the website previously displayed at the domain name <swarovskiaoutlet.com> offered for sale a variety of Complainant’s SWAROVSKI products such as “Swarovski Necklaces”, “Swarovski Earrings”, “Swarovski Bracelets”, “Swarovski Rings”, “Swarovski Charms” and more. Respondent would not have advertised products purporting to be Complainant’s products if he was unaware of Complainant’s reputation. See, Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638 (February 12, 2010).

The Panel thus finds on a balance of probabilities that Respondent registered or acquired the disputed domain names in bad faith.

C.2. Domain Name Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 its website or location or of a product or service on its website or location.

The disputed domain names which are confusingly similar to Complainant’s SWAROVSKI trademark contain links to websites including Complainant’s trademark SWAROVSKI and products in the jewelry field corresponding to Complainant’s goods. The Panel infers that Respondent is trying to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s well-known SWAROVSKI trademark as Internet users looking for official information about SWAROVSKI goods or services will be misled to Respondent’s websites. Respondent has done nothing to identify itself as being independent from Complainant. On the contrary, Respondent has incorporated the SWAROVSKI trademark in the disputed domain names and throughout the websites associated with the disputed domain names, and is attempting to attract consumers for commercial gain by purporting to sell Swarovski products. In, Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) it was stated that such conduct “demonstrates awareness of the Complainant’s mark and an intention to capitalize on its fame”. The panel also concluded that “the only logical explanation for the Respondent’s choice of the disputed domain names is that it was for the purpose of attracting and misleading Internet users to the Respondent’s websites for commercial advantage. This constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy”. Many UDRP arbitration panelists have held that Respondent’s very method of infringement, using the exact SWAROVSKI trademark to lure consumers to the websites at the disputed domain names demonstrates bad faith use under the Policy. See e.g., Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 (January 21, 2011).

The Panel thus finds that all the disputed domain names linked to webpages including Complainant’s SWAROVSKI and featuring products corresponding to Complainant’s goods, other than the disputed domain name <swardovskiaoutlet.com> which is currently not linked to any website, are being used by Respondent in bad faith.

Prior to Respondent’s Information Service Provider receiving a cease and desist letter from Complainant, Respondent used the disputed domain name <swarovskiaoutlet.com> to resolve to a webpage on which Respondent offered jewelry having the look and feel of Complainant’s goods. After receipt of the cease and desist letter, the website “www.swarovskiaoutlet.com” was shut down and does not currently link to any webpage.

Previous UDRP panels have found that non-use of domain names which include well-known trademarks, which if used by a respondent would confuse Internet users into concluding that the website associated with the domain name belonged to the complainant constituted bad faith use under paragraph 4(b) of the Policy. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy support the assumption that passive use can also be of bad faith. In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […] The question that then arises is what circumstances of the inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.”

It is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See, Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065, where the panel found: “Since the hypotheses identified in paragraph 4(b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the domain name, may prove that the domain name has been registered and is being used in bad faith.”

Respondent registered and initially used the disputed domain name <swarovskiaoutlet.com> in association with a webpage containing references to Complainant’s trademark SWAROVSKI and offering jewelry corresponding to Complainant’s goods for profit in bad faith. There is no evidence that Respondent has ever carried on business or used the trademark SWAROVSKI as a trademark. The Panel cannot conceive of any use of the currently passively held disputed domain name <swarovskiaoutlet.com> which would not mislead Internet users seeking Complainant’s goods to the a website associated with the disputed domain name <swarovskiaoutlet.com> should it be activated.

The Panel finds on a balance of probabilities that the currently passively held disputed domain name <swarovskiaoutlet.com> was registered and is being used in bad faith under paragraph 4(b) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <ouraswarovski.com>, <ourbswarovski.com>, <ourswarovski.com>, <swarovskianecklace.com>, <swarovskiaoutlet.com>, <swarovskibnecklace.com>, <swarovskiboutlet.com>, <swarovskicnecklace.com>, <swarovskicoutlet.com>, <swarovskidoutlet.com>, <swarovskieoutlet.com>, <swarovskijewelrysale.com> and <swarovski-saleoutlet.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: September 5, 2012

 

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