WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Domain Admin, PrivacyProtect.org / Robert S. Rayford
Case No. D2012-2494
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Domain Admin, PrivacyProtect.org of Queensland, Australia / Robert S. Rayford of California, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <swarovskicrystaluksale.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 19, 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 December 20, 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 December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2013.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 17, 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 EUR 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 US (where the Respondent Robert S. Rayford is domiciled) since as least as early as 1972.
The disputed domain name was registered on November 8, 2012, and is being used to redirect to a web-shop at “www.charmspandorauk2013.co.uk”. The website displays a variety of jewelry products competitive with of those of the Complainant, along with the trademark of the Pandora brand.
5. Parties’ Contentions
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 dictionary terms “crystal,” “UK,” and “sale” do 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 Respondent has re-directed the disputed domain name to a website offering the goods of a competitor, after attracting Internet users via initial interest confusion, which does not constitute a bone fide offering of goods or services. 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.charmspandorauk2013.co.uk” 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.
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, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The addition of a dictionary word or term which is descriptive of a complainant’s goods or services 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. In this case, the descriptive terms “crystal,” “UK,” and “sale” have been appended to the Complainant’s registered SWAROVSKI mark, which may serve to heighten Internet user confusion.
Finally, it is well established that a generic Top Level Domain (“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 <swarovskicrystaluksale.org> 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 rights or legitimate interests 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 competitive 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.
The use of a complainant’s trademark to attract Internet users to a website where competing goods or services are sold, for the benefit of commercial gain, does not constitute a bona fide offering for the purposes of the Policy. See J. R. Four Ltd. Dba Technical Glass Products v. Michael Monaghan, WIPO Case No. D2011-2224.
Accordingly, 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 November of 2012, long after the Complainant began using the Swarovski brand, and roughly 40 years after the Complainant’s mark was registered in the US (where the Respondent Robert Rayford is located). Furthermore, the Respondent has used the disputed domain name to redirect to a website selling jewelry items competitive with those of the Complainant. 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. Moreover, the re-direction of a disputed domain name to a website offering the goods of a competitor has been held to constitute bad faith use of a domain name in prior UDRP cases. See, for example, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 <swarovskicrystaluksale.org> be transferred to the Complainant.
Date: January 30, 2013