WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Private Registration/ Miss Swarovski, Vitaia Kamenoff
Case No. D2012-1603
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Private Registration/ Miss Swarovski, Vitaia Kamenoff, of Sydney, North South Wales, Australia and Bundaberg, Queensland, Australia, respectively.
2. The Domain Name and Registrar
The disputed domain name <missswarovski.com> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2012, the registrar transmitted by e-mail 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 August 15, 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 August 15, 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any formal Response, but did send e-mail communications to the Center on August 16, September 4 and September 13, 2012. Accordingly, the Center notified the Respondent’s default on September 12, 2012.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on October 3, 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 in these proceedings is Swarovski Aktiengesellschaft (Swarovki), a company organized under the laws of the Principality of Liechtenstein. The Complainant has a worldwide reputation in crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries with an international presence in more than 120 countries according to its uncontested allegations.
Further, according also to its uncontested allegations, Swarovski’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
The Complainant is the owner of various Australian (among other countries in the world) registered trademarks containing or consisting of SWAROVSKI. It also has Community Trademarks and International registrations for the mark SWAROVSKI and the Device Mark consisting of a swan.
The Complainant also owns several domain name registrations including <swarovski.com> and <swarovski.net> which lead to Swarovski’s official website with its products.
The Complainant further spends substantial effort and money in advertising and promoting its SWAROVSKI marks all over the world, including Australia, according to its uncontested allegations.
The disputed domain name <missswarovski.com> was created and registered by the Respondent on April 11, 2011. The disputed domain name resolved to a website that offered products and services in competition with those products and services offered by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions. It merely sent remarks which culminated in asking for a sum of money in order to transfer the disputed domain name to the Complainant, a claim which the latter did not accept. The Respondent also claimed that “MISSWAROVSKI” is not trademarked” and that it “found at least another three websites containing the word “Swarovski”.”
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent (notwithstanding the communications the Respondent did make with the Center). The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel can not merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns the rights in the trademark SWAROVSKI in Australia and in many countries all over the world.
The mere fact that the Respondent has added to the mark SWAROVSKI the generic word “miss”, and the suffix “.com” does not to this Panel affect the essence of the matter: the disputed domain name is confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish criterion of identity or confusing similarity for purposes of the Policy, as many UDRP panels have found in the past, see e.g. Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir, Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <missswarovski.com> is identical or confusingly similar to the Complainant’s trademark SWAROVSKI.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. In the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services, in light of the use of the Complainant’s mark in conjunction with the Respondent’s website. Moreover, the website does not appear to offer the Complainant’s goods for sale, although a disclaimer at the bottom of the Respondent’s website indicates “it will be genuine ‘Swarovski’, not an imitation or ‘look like’ if not stated otherwise”, as inter alia the website invites the Internet user to “BE YOUR OWN DESIGNER”. The Panel additionally notes that the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record, given the apparent commercial use of the website.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Further the Respondent does not seem to have any trademark registrations including the term “Swarovski”.
Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4/a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in order to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademarks, according also to the uncontested allegations of the Complainant.
The bad faith of the Respondent is also reinforced through a simple, logical process as well, in the sense that it would indeed be highly unlikely that the Respondent would register randomly and unintentionally a domain name that is identical or confusingly similar to the Complainant’s SWAROVSKI trademark. Rather, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e. commercial gain from the Complainant’s reputation, as mentioned above.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent’s communications further confirm to the Panel that the Respondent was aware of the Complainant’s rights and registered the disputed domain name in order to capitalize on the Complainant’s marks.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
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 <missswarovski.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: October 17, 2012