World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Huang Dougong

Case No. D2012-2495

1. The Parties

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

The Respondent is Huang Dougong of Putian, Fujian, China.

2. The Domain Names and Registrars

The disputed domain name <cheapswarovskisale.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <outletswarovskisale.com> is registered with Hangzhou AiMing Network Co., LTD. The disputed domain name <cheapswarovskisale.org> and the disputed domain name <outletswarovskisale.com> shall be referred to as the “Disputed Domain Names” hereafter.

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 PDR Ltd. d/b/a PublicDomainRegistry.com and Hangzhou AiMing Network Co., LTD (the “Registrars”) a request for registrar verification in connection with the Disputed Domain Names. On December 19, 2012, the Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

On December 20, 2012, the Center sent an email communication to the parties, in both Chinese and English, regarding the language of the proceeding of the Disputed Domain Name <outletswarovskisale.com>. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not make any submissions with respect to the language of the proceeding by the specified due date.

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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 22, 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 uses the SWAROVSKI marks in connection with crystal jewelry stones and crystalline semi-finished goods in a variety of industries. The Complainant sells Swarovski branded products through its own boutiques and through partner-operated boutiques worldwide.

The Complainant has registered the SWAROVSKI trademarks globally, including China. The registered trademarks in China include the SWAROVSKI trademark in English and Chinese as well as in combination with the Complainant’s Swan logo. The earliest Chinese trademark registration for SWAROVSKI dates back to 1987.

The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com”.

The Respondent registered the Disputed Domain Name <cheapswarovskisale.org> on November 20, 2012 and the Disputed Domain Name <outletswarovskisale.com> on September 23, 2012. The Disputed Domain Name <outletswarovskisale.com> re-directs to the website operated at the Disputed Domain Name <cheapswarovskisale.org>, where the Respondent is operating an online shop.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Names are confusingly similar to the registered trademark of the Complainant.

The Respondent has used the Complainant’s SWAROVSKI trademarks in the Disputed Domain Names so as to cause confusion among Internet users between the Disputed Domain Names and the Complainant approved websites.

The Disputed Domain Names cause initial interest confusion and diversion of traffic because they wrongfully capitalize on the Complainant’s goodwill in its SWAROVSKI trademarks.

The addition of generic terms such as “cheap”, “sale” and “outlet” as prefixes or suffixes to the SWAROVSKI trademarks does not lessen the confusing similarity between the Disputed Domain Names and the Complainant’s trademark. These terms are similar to the Complainant’s business so as to give the impression that the Complainant’s products are being sold at outlet or sold online at a cheaper price, neither of which in any way diminishes the confusing similarity with the SWAROVSKI trademarks.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s SWAROVSKI trademarks in the Disputed Domain Names or in any other manner.

The Respondent has never been known by the Disputed Domain Names and has no legitimate interests in the SWAROVSKI trademarks or the name “Swarovski”.

The Disputed Domain Names are being used to advertise the purported Complainant‘s products and the Disputed Domain Names mislead consumers into believing that the Respondent and the Disputed Domain Names are associated with or approved by the Complainant. Such use is contrary to a bona fide offering of goods or services or a legitimate interest in the Disputed Domain Names.

(iii) The Disputed Domain Names were registered and are being used in bad faith.

The Disputed Domain Names were registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI trademarks at the time of registration.

The Complainant cites previous UDRP panel decisions concluding that the SWAROVSKI trademarks are famous and well-known and that unauthorized registrants utilizing the SWAROVSKI trademarks in domain names do so specifically with the awareness of the Complainant’s trademark.

The Complaint claims that the website at the Disputed Domain Names advertises for sale various purported Swarovski products. The Respondent would not have advertised products purporting to be the Complainant’s products on the Disputed Domain Names if it was unaware of the Complainant’s reputation.

The Complainant cites previous UDRP panel decisions concluding that coupling a descriptive word with the Complainant’s trademark or even a word similar to the Complainant’s trademark in a domain name constitutes bad faith on the part of the Respondent.

The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the SWAROVSKI trademarks in the Disputed Domain Names as well as throughout the website, and is attempting to attract consumers for commercial gain by purporting to sell the Complainant’s products.

The Complainant cites previous UDRP panel decisions concluding that the Respondent’s very method of infringement, using the exact SWAROVSKI trademarks to lure consumers to the website at the Disputed Domain Names demonstrates bad faith use under the Policy.

Thus, the Disputed Domain Names were registered and are being used in bad faith. The Complainant requests the transfer of the Disputed Domain Names to it.

B. Respondent

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

6. Preliminary Procedural Issues

A. Consolidation of Multiple Disputed Domain Names

Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided the domain names are registered by the same domain-name holder”. The Panel notes that the Disputed Domain Names <cheapswarovskisale.org> and the <outletswarovskisale.com> are registered to the same domain name holder, Huang Dougong. The Panel finds that these two Disputed Domain Names are properly consolidated in the Complaint.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings”.

The languages of the Registration Agreements in relation to the Disputed Domain Names

<cheapswarovskisale.org> and the < outletswarovskisale.com> are English and Chinese, respectively. The Complainant requested, in Section VIII of the Complaint, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: (i) the Complainant was unable to locate the registration agreement for the Disputed Domain Name <outletswarovskisale.com>, but the Complainant assumes that the registration agreement is in Chinese. The registration agreement between the Respondent and the Registrar for the Disputed Domain Name <cheapswarovskisale.org> is in English; (ii) the Respondent appears to operate internationally in multiple languages and be able to communicate in English based on the fact that the content of the website operated by the Respondent at the Disputed Domain Name <cheapswarovskisale.org> is in English; and (iii) the Complainant is an international brand with registered marks in multiple jurisdictions whose international business primarily operates in English.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Panel notes the following facts:

(i) The language of the Registration Agreement for the Disputed Domain Name <cheapswarovskisale.org> is English; therefore English would undisputedly be the language of the proceeding if the Disputed Domain Name <cheapswarovskisale.org> were the only Disputed Domain Name identified in the Complaint;

(ii) The Panel notes that all Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant's request that English be the language of proceeding. The Panel finds that the Respondent has been given a fair chance to object, and has failed to do so;

(iii) The Respondent’s website at the Disputed Domain Name <cheapswarovskisale.org> (to which the Disputed Domain Name <outletswarovskisale.com> also directs viewers) appears entirely in the English language, and appears to have been directed to Internet users worldwide rather than exclusively to Chinese speakers. The Panel is satisfied that the Respondent apparently understands the language of the Complaint;

(iv) The Disputed Domain Names are properly consolidated in the Complaint in accordance with paragraph 3(c) of the Rules.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the Disputed Domain Names, each of the following:

(i) The Disputed Domain Names are confusingly similar to a trademark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domains Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of a number of SWAROVSKI trademarks in China and internationally. Further, the filed evidence establishes that the Complainant’s products have been sold on a substantial and world-wide basis under this trademark. The Complainant has a wide range of registered trademarks comprised entirely or in part by the “swarovski” element.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).

In comparing the trademark and the Disputed Domain Names, it is clear that both of the Disputed Domain Names incorporate the SWAROVSKI element, which is identical to the Complainant’s trademark. The SWAROVSKI element in the Disputed Domain Names is immediately recognizable as the Complainant’s trademark and the addition of the generic terms “cheap” and “outlet” before the Complainant’s SWAROVSKI trademark and the generic term “sale” after the Complainant’s trademark is insufficient to prevent threshold confusion by Internet users (Guccio Gucci S.p.A. v.Huangwensheng, Shirley, wangliang, xiaomeng xiexun, jiangxiuchun, WIPO Case No. D2012-0342).

A domain name which consists of a trademark and a generic, descriptive term would be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. (Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 also see the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0.)

As for the applicable top-level suffix such as “.com“, “.org” in the Disputed Domain Names, it is a consensus view that it could usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).

Accordingly the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.

In the present case, the Complainant has established that it is the owner of the SWAROVSKI trademarks worldwide, and that it has extensively applied the SWAROVSKI trademark on the Internet through its websites “www.swarovski.com” and “www.swarovski.net”.

Furthermore, the Complainant has stated that it has no connection or affiliation with the Respondent and the Respondent has not received any license or consent, express or implied, to use the Complainant’s SWAROVSKI trademarks in the Disputed Domain Names or in any other manner.

The Respondent failed to respond to the Complaint or give any explanation as to why the Disputed Domain Names were chosen and registered. Therefore, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s SWAROVSKI trademark in the Disputed Domain Names, for the purpose of achieving commercial advantage by misleadingly diverting consumers into websites at the Disputed Domain Names and that such use cannot be considered as a legitimate noncommercial or fair use.

Having considered the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.”

In relation to the bad faith at the time of registration, the Panel notes that the Complainant has established that its SWAROVSKI trademark was registered in China and internationally, was widely used, and had acquired an international reputation prior to the dates the Disputed Domain Names were registered. The Panel finds that the Complainant has in balance established that the Respondent registered the Disputed Domain Names in bad faith. Furthermore, the Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel thus finds that the Dispute Domain Names were registered in bad faith.

Further, the evidence of the content available on the websites at the Disputed Domain Names (captured on December 18, 2012 and provided by the Complainant in Annex K to the Complaint), indicate that the Respondent uses the Disputed Domain Names to “attract, for commercial gain, Internet users to the holder’s website” where it purportedly sells Swarovski goods. The Panel has reviewed the evidence presented and found that the Respondent has not taken measures to identify itself as being independent of the Complainant. In fact, the Respondent has incorporated other trademarks owned by the Complainant in the content of the website.

Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Names in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 Names <cheapswarovskisale.org> and <outletswarovskisale.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: January 30, 2013

 

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