WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Frank Jackie
Case No. D2012-1671
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Frank Jackie of Shenyang, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskischmuck-outletshop.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 21, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 2012, the Registrar 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 August 29, 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 29, 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 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2012.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 28, 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 has multiple registered trade marks for or including SWAROVSKI around the world including a U.S. registration for the SWAROVSKI word mark for, inter alia, jewellery and decorative jewels and stones dating back to 1972.
The Disputed Domain Name was registered on June 26, 2012. It is being used for an online shop purporting to sell the Complainant’s goods which has no identification on its title page other than a large Swarovski (name and swan) logo. The “about us” section only mentions the Complainant and its products and refers to boutiques around the globe.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the exclusive owner of the famous and well-known SWAROVSKI registered trade mark in the USA, Germany and globally (the earliest registration in evidence for, inter alia, jewellery dating back to 1972). It uses the mark in relation to crystal jewellery stones and goods. It has 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 1218 of its own boutiques and through 1000 partner operated boutiques worldwide.
The Complainant has developed substantial goodwill in the SWAROVSKI mark internationally through spending substantial time, effort and money on advertising and promotion. As a result the public has come to associate this mark exclusively with high quality items marketed by the Complainant.
The Complainant has several domain names including the SWAROVSKI mark including <swarovski.com> and <svarovski.net> which point to the Complainant’s website.
The Respondent registered the Disputed Domain Name on June 26, 2012 and is operating an online shop with content in the English and German languages. The Respondent is using the Disputed Domain Name to confuse Internet users into believing that the Respondent’s website is an official site or the Respondent is affiliated with or authorised to sell products by the Complainant. Its website advertises for sale various purported Swarovski products.
The Respondent does not at any point identify himself as being independent from the Complainant and has used the Complainant’s mark in the Disputed Domain Name, throughout its website and offers for sale Swarovski products that are similar to those sold at the official Swarovski website.
The Disputed Domain Name is an infringement of the Complainant’s trade marks and no bona fide use is being made of the Disputed Domain Name. The Respondent associates itself with the Complainant by referring to the Complainant’s design team and shops around the world selling Swarovski jewellery. The Respondent is trying to pass itself off as the Complainant on its web site.
The Disputed Domain Name is confusingly similar to the SWAROVSKI mark. By using the German word for jewellery “schmuck” in relation with the Complainant’s mark, the Respondent is aiming to create a false and misleading impression among consumers that the Respondent’s website is authorised to sell Swarovski jewellery (in particular in Germany). The addition of “schmuck” and “outletshop” as suffixes to the SWAROVSKI mark does not lessen the confusing similarity between the Disputed Domain Name and the Complainant’s mark. Indeed as the Complainant manufactures jewellery, the use of the German word for jewellery is intended to create an association with the Complainant strengthening confusion rather than weakening it. The hyphen is insignificant. The Disputed Domain Name contains the Complainant’s entire mark. Internet users are likely to be confused into thinking the Respondent’s site is an official Swarovski site. Such diversion of traffic is illegal because it wrongly capitalises on the Complainant’s goodwill in the SWAROVSKI mark to divert Internet traffic to the Respondent’s site. It is also contrary to a bona fide offering of goods or services or a legitimate interest.
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no connection with the Complainant and has no consent (express or implied) to use the SWAROVSKI mark. The Respondent has never been known by the Disputed Domain Name.
The SWAROVSKI mark is famous and well known and is not a descriptive or generic term and registration of it cannot be coincidental. The fact that it is being used to sell jewellery and divert traffic on the Internet shows the Respondent is aware of the Complainant’s reputation and has registered and is using the Disputed Domain Name in bad faith. The Respondent is seeking to mislead customers into believing that its website is owned or operated by the Complainant.
The Complainant did not send a cease and desist letter to the Respondent to avoid cyberflight.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark 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.
A. Identical or confusing similarity
The Complainant has had trade mark registrations consisting of or containing the SWAROVSKI mark for many years around the world. The Disputed Domain Name is confusingly similar to the Complainant’s trade mark, consisting of the Complainant’s SWAROVSKI registered trade mark and the generic text “schmuck-outletshop”, schmuck being German for jewellery, a trade in which the Complainant operates. The distinctive part of the Disputed Domain Name is the SWAROVSKI name. The addition of the non distinctive text “schmuck-outletshop” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Complainant’s SWAROVSKI trade mark. As such the Panel holds that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Disputed Domain Name for a bona fide offering of goods and services given its confusing use, as discussed below, and is not commonly known by the Disputed Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted 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, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only generic terms added reflecting a trade in which the Complainant operates. The Respondent may have argued legitimately that it is entitled to use the SWAROVSKI word mark descriptively to sell his stock if it proved to be genuine. However, in the opinion of the Panel the use made of the Disputed Domain Name is deceptive. The content of the website, using the official logo at the top, and details relating to the Complainant in the “about us” section of the site without further explanation is confusing as to origin. It is not at all clear whether the site is or is not that of the Complainant. It gives the distinct impression that it is an official site of the Complainant. As such the Panel finds that the Disputed Domain Name has been used in a way likely to confuse people into believing the Disputed Domain Name is registered to or connected to the Complainant.
The use of the trade marks on the site shows that the Respondent is well aware of the Complainant, its trade marks and goods. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Disputed Domain Name the panelist is satisfied that the Complainant has shown that the Respondent registered the Disputed Domain Name in bad faith and has used the Disputed Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant.
As such the Panel finds that the Disputed Domain Name has been registered and used in bad faith satisfying the third element of 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 <swarovskischmuck-outletshop.com> be transferred to the Complainant.
Dated: October 12, 2012