WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Stephen Lucia
Case No. D2012-1674
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Stephen Lucia of Louisiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <swarovskiaustraliashop.com> is registered with GoDaddy.com, LLC (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 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2012.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on September 25, 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 US and 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 names 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 in the US and Australia, according to its uncontested allegations.
The Panel is unaware of any further information relative to this case with regards to the Respondent, except that which is given by the Complainant and mentioned above.
The disputed domain name <swarovskiaustraliashop.com> was created and registered by the Respondent on July 6, 2012. The disputed domain name resolved to a website that offered products and services in competition with those products and services offered by the Complainant. This website does not exist anymore following steps taken 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.
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. 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 the US, in Australia and in many countries all over the world.
The mere fact that the Respondent has added to the mark SWAROVSKI the words “australia”, “shop” and the suffix “.com” does not affect the essence of the matter: the disputed domain name is identical or 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 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 Limited 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 <swarovskiaustraliashop.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.
(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.
(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. The fact that the Respondent’s website does not exist anymore does not mean that the Respondent will not use the disputed domain name in the future as before.
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.
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. As mentioned above, the non-existence now of the website does not alter the essence of the case.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
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.
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 <swarovskiaustraliashop.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: October 9, 2012