WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Bojan Djordjevic
Case No. D2012-1404
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Bojan Djordjevic of Belgrade, Serbia.
2. The Domain Name and Registrar
The disputed domain name <swarovskimania.com> is registered with eNom.
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 eNom a request for registrar verification in connection with the disputed domain name.
On July 10, 2012, eNom transmitted by email to the Center its verification response informing that the disputed domain name expired on June 1, 2012 as well as that the registrant and contact information for the disputed domain name differed from the named Respondent and contact information in the Complaint.
On July 11, 2012 the Center requested that eNom confirm:
1) that the disputed domain name will be placed in Registrar LOCK status, and the disputed domain name will remain in such status after the lapse of the expiry date until UDRP proceedings are concluded, and
2) whether any action is required by the parties to keep the disputed domain name under Registrar LOCK so that the administrative procedure can continue as required under the UDRP. The Center also informed the parties and eNom that according to paragraph 22.214.171.124. of the ICANN Expired Domain Deletion Policy “in the event that a domain name which is subject of a UDRP dispute would be deleted or would expire during the course of the dispute, the Complainant in the UDRP dispute would have the option to renew or restore the disputed domain name under the same commercial terms as the registrant”.
On July 11, 2012 eNom confirmed “that the domain will remain LOCKED until the UDRP proceedings are concluded or terminated. The domain will also remain locked after expiration should the UDRP process extend beyond the expiration date. However, should the domain go into redemption status after its expiration, the domain may be deleted if the domain is not renewed”.
On July 19, 2012 the Complainant requested that eNom reactivate the disputed domain name. On July 20, 2012 eNom confirmed that it had reactivated the disputed domain name from redemption, renewing it in the name of the registrant Bojan Djordjevic of Belgrade, Serbia.
On July 23, 2012 the Center issued a Complaint Deficiency Notification to the Complainant to amend its Complaint in accordance with the WhoIs record data as provided by eNom.
In response to the above mentioned notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 24, 2012, naming Bojan Djordjevic of Belgrade, Serbia as the Respondent.
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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2012.
The Center appointed Zoltán Takács 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.
The language of this administrative proceeding is English in accordance with paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is the world’s leading manufacturer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and presence in more than 120 countries worldwide. In 2011, the Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques throughout the world.
The Complainant produces and markets these products under the trademark SWAROVSKI and owns a number of registered rights for the mark SWAROVSKI, e.g.:
- United States of America (US) Trademark Registration No. 934915, registered on May 30, 1972;
- International Trademark Registration No. 527385, registered on March 7, 1988;
- Community Trademark Registration No. 3895091, registered on August 23, 2005;
all for a wide variety of goods and services including crystal jewelry stones, crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.
The Complainant also owns registrations for the domain names <swarovski.com> since January 11, 1996 and <swarovski.net> since April 14, 1998, from which it operates its websites.
The disputed domain name was created on June 1, 2010. At the time of submission of the Complaint, the website at the disputed domain name redirected Internet users via a parking page with sponsored links to other websites that marketed and sold various jewelry products in competition with those of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name contains the word “swarovski” and it is therefore confusingly similar to the SWAROVSKI trademark in which the Complainant has long established and reputed rights based on a number of registrations valid throughout the world. The addition of the generic term “mania” as a suffix does not have any significant impact on the overall impression of an Internet user, because “swarovski” as instantly recognizable is the dominant part of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. It has no connection or affiliation with the Complainant and has not received any license or consent to use the SWAROVSKI trademark in a domain name or in any other manner.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. “Swarovski” is not a descriptive or generic word, contrariwise it is a famous mark and it is inconceivable that the Respondent was unaware of the mark at the time of registering the disputed domain name. The website under the disputed domain name redirects Internet users to other websites that market and sell products identical to or similar with those of the Complainant, clearly intending to capitalize of reputation of the SWAROVSKI trademark. The Respondent, without any consent utilizes the SWAROVSKI trademark to redirect Internet users to the websites of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the 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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, first that it has rights in a trade or service mark, second that the disputed domain name is identical or confusingly similar to that trade or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds a significant number of registrations for the mark SWAROVSKI throughout the world. For the purpose of this proceeding, the Panel established that the Complainant’s valid US Trademark Registration No. 934915, registered on May 30, 1972, International Trademark Registration No. 527385, registered on March 7, 1988 and Community Trademark Registration No. 3895091, registered on August 23, 2005 satisfy the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in SWAROVSKI, the Panel next assessed whether the disputed domain name <swarovskimania.com> is identical or confusingly similar to the trademark.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name <swarovskimania.com> fully incorporates the Complainant’s SWAROVSKI trademark, with addition of the term “mania” as suffix.
The trademark SWAROVSKI is neither a common, nor descriptive word; it identifies the business and products of the Complainant. Mere use of the descriptive term “mania” in the disputed domain name otherwise identical with the Complainant’s SWAROVSKI trademark is not only not capable to eliminate confusing similarity with the Complainant’s trademark, in fact increases it in the opinion of the Panel. Consumers would likely believe that the disputed domain name <swarovskimania.com> is connected to or associated with the Complainant and its business.
For all these reasons the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it has been commonly known by the domain name; or
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant submitted uncontested evidence that it holds well-established rights in the trademark SWAROVSKI.
The Complainant never gave permission to the Respondent to use its SWAROVSKI trademark in any way.
The Complainant’s prior rights in the trademark SWAROVSKI long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out prima facie case that the respondent lacks rights or legitimate interests, the burden of proof shifts to the respondent.
In view of this Panel there cannot be any plausible reason or explanation for the Respondent’s selection of the disputed domain name but to intentionally ride on the fame and reputation of the Complainant’s widely recognizable SWAROVSKI trademark. The Respondent could have provided evidence of the opposite, but it defaulted and failed to respond, and by doing so failed to offer to this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, or otherwise to counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have 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 you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location of a product or service on your website or location.”
The disputed domain name <swarovskimania.com> was registered many years after the Complainant’s SWAROVSKI trademark became widely known for products such as crystal jewelry stones and crystalline semi-finished goods in the fashion, home accessories and collectibles industry.
This Panel finds it unlikely that the Respondent who registered and used the disputed domain name in relation to identical or similar products (either through direct promotion on its website, or by allowing redirection to websites that advertised or sell such products) was unaware of the Complainant’s SWAROVSKI trademark, and that the choice of the disputed domain name <swarovskimania.com> was merely coincidental.
The Panel finds that the Respondent certainly knew about the Complainant’s SWAROVSKI trademark and business and deliberately registered the disputed domain name to ride on the fame and recognition of the SWAROVSKI trademark.
There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name, nor any evidence that it was making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, the Complainant provided sufficient and convincing evidence that the disputed domain name resolved to the Respondent’s website which advertised products identical to or similar with those of the Complainant, and also allowed redirection to other websites such as “www.timesjewelry.com” and “www.completelycrystals.com” which advertised and sold products in competition with the Complainant’s products. The Panel finds that the Respondent has registered and used the disputed domain name in order to create confusion among Internet users and divert them to the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy.
Under these circumstances the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the third element of paragraph 4(a) of the Policy is satisfied.
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 <swarovskimania.com> be transferred to the Complainant.
Dated: August 30, 2012