World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Charlie Hill

Case No. D2012-2402

1. The Parties

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

The Respondent is Charlie Hill of Charleston, South Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <swarovskillc.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 December 6, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.

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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.

The Center appointed Torsten Bettinger as the sole panelist in this matter on January 14, 2013. 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 is a well-known producer of cut crystal and gemstones, with production facilities in 18 countries, distribution activity in 42 countries, and a presence in more than 120 countries around the world. In 2011, Swarovski’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide. Swarovski’s approximate worldwide revenue in 2011 was Euro 2.87 billion.

The Complainant is the holder of numerous SWAROVSKI trademarks in a wide array of jurisdictions, and its mark has been registered in the United States of America (where the Respondent is domiciled) since as least as early as 1972.

The disputed domain name was registered on May 11, 2012, and is being used to redirect to a web-shop at “www.aussieswarovskistore.com.” The website displays a variety of products which are similar to those of the Complainant, as well as the statement: “Our company is official authorization pro shop, the main product includes: Swarovski Bracelets, Swarovski Necklace, Swarovski Rings, Swarovski Earrings, Swarovski Brooch, Swarovski Sets. Because our products come from the OEM factory directly and the properly tested and through the network selling we can save the charges from shop rent, logistic, advertising etc. That’s why our products sell in such low price and good-quality. Our aim is to wish more people can own our items and enjoy the brands charm.” Many of the item names displayed on the site include misspellings and typographical errors.

5. Parties’ Contentions

A. Complainant

The Complainant states that each of the three elements of paragraph 4(a) of the Policy is satisfied.

With regard to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to its SWAROVSKI mark, since the addition of the business identifier “LLC” does not adequately distinguish the domain name.

Concerning the second element of the Policy, the Complainant notes that the Respondent has not been authorized to use the Complainant’s mark in any fashion, and that the Respondent is in no way connected to the Complainant’s business activities. The Complainant further notes that the Respondent has attempted to impersonate the Complainant, as it has provided no indication that the Respondent is not connected with or endorsed by the Complainant. The website to which the disputed domain name connects prominently displays the Complainant’s swan-logo device trademark, without authorization or permission from the Complainant. The Complainant notes that the Respondent has attempted to convey the erroneous impression that its website is an authentic distributor of the Complainant’s goods. Additionally, the Complainant notes that the website to which the disputed domain name redirects is commercial in nature, and accordingly the Respondent either receives revenue directly from sales made on the website or, at the very least, via referral fees from the registrant of the “www.aussieswarovskistore.com” domain name.

Finally, with regard to the third element of the Policy, the Complainant notes that the Respondent was clearly aware of the Complainant’s rights in the well-known SWAROVSKI mark, and that there is no use the Respondent could logically make of the domain name which would not infringe the Complainant’s rights. The Complainant further notes that the use of the disputed domain name in connection with a commercial website constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone. Moreover, it is well-established that the addition of a dictionary word or term which is logically connected to a complainant’s business activities, such as “LLC,” will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel thus finds that the disputed domain name <swarovskillc.com> is confusingly similar to the Complainant's SWAROVSKI mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its SWAROVSKI mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, as the disputed domain name is used to re-direct to a web-shop offering products similar to those of the Complainant, from which the Respondent presumably generates revenue, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name.

It is unnecessary to consider in this regard whether the products offered on the Respondent’s website are genuine Swarovski-branded goods, and thus whether the Respondent might qualify as a bona fide reseller of the Complainant’s products, as the Respondent has blatantly attempted to impersonate the Complainant through the content and statements displayed on the website to which the disputed domain name redirects. As quoted at length above, the website not only fails to provide a disclaimer indicating that the Respondent is not connected with the Complainant, but further provides an affirmative statement indicating that the website is run by the Complainant itself. The Respondent has attempted to pass itself off as the Complainant, and accordingly has run afoul of one of the four required elements of the Oki Data test for reseller rights. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has been in business for over a century, and has used the Swarovski name in commerce in over 120 countries around the world. The Respondent’s domain name was registered in May of 2012, long after the Complainant began using the Swarovski brand, and roughly 40 years after the Complainant’s mark was registered in the United States (where the Respondent is located). The Respondent has used the disputed domain name to redirect to a website impersonating the Complainant and selling jewelry items. Therefore, it is clear to the Panel that the Respondent selected the disputed domain name with knowledge of, and intent to target, the Complainant’s SWAROVSKI trademark.

As noted above, the disputed domain name redirects to an online sales portal, from which the Respondent presumably derives either sales profits or referral revenue. Such activity constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Despite having been provided with an opportunity to refute the Complainant’s evidence, and to offer any explanation it may have for its actions, the Respondent has declined to enter any reply. Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met.

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 disputed domain name <swarovskillc.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: January 28, 2013

 

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