WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard Protected / Wicky Blown
Case No. D2012-2501
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard Protected of Los Angeles, California, United States of America / Wicky Blown of Liverpool, Merseyside, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <swarovski-outlets.org> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 28, 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 31, 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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Luca Barbero as the sole panelist in this matter on February 5, 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 the world’s leading producer of cut crystal, genuine gemstones and created stones, with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. The trademark SWAROVSKI is used in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. 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 owner of several trademark registrations for SWAROVSKI in many countries, including the United States trademark No. 3864495, registered on October 19, 2010, in class 16; the Chinese trademark No. 384001, registered on July 30, 1987, in class 14; the International trademark No. 857107, registered on November 3, 2004, in classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41; the Community trademark No. 000120576, registered on October 15, 1998, in classes 3, 9, 11, 14, 16, 18, 21, 25 and 26.
The Complainant is also the owner of the domain names <swarovski.com>, registered on January 11, 1996, and <swarovski.net>, registered on April 16, 1998. Both domain names are pointed to the Complainant’s official web site, published at “www.swarovski.com”.
The Respondent registered the disputed domain name <swarovski-outlets.org> on October 15, 2012. The screenshots submitted by the Complainant highlight that the disputed domain name has been redirected to a web site in Chinese language providing images and information on female models.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar with the trademark SWAROVSKI and highlights that the addition of the term “outlets” and of the hyphen does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant points out that Internet users who intend to purchase Swarovski products online may type <swarovski-outlets.org> into the address bar on their web browser and be directed to the Respondent’s web site. The Complainant underlines that this type of initial interest confusion is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the trademark SWAROVSKI to divert Internet traffic to the web site published at the disputed domain name.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name as it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the trademark SWAROVSKI in a domain name or in any other manner.
The Complainant also asserts that the Respondent has never been known by the disputed domain name and has no legitimate interest in the trademark SWAROVSKI or in the name “Swarovski”, since it used the Complainant’s trademark for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant, thus seeking to trade on the Complainant’s goodwill and reputation.
The Complainant further highlights that previous UDRP panels have held that, when a respondent chooses to incorporate a well known trademark like SWAROVSKI into a domain name without the authorization of the trademark holder, this cannot be considered a bona fide offering.
With reference to the circumstances evidencing the Respondent’s bad faith registration, the Complainant states that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the trademark SWAROVSKI since it is inconceivable that the Respondent was unaware of the Complainant’s well-known trademark and the incorporation of SWAROVSKI in the disputed domain name cannot be a coincidence.
The Complainant also states that previous UDRP panels have found that coupling a descriptive word with the Complainant’s mark or even a word similar to the Complainant’s mark in a domain name constitutes bad faith on the part of the Respondent.
As to the use of the disputed domain name, the Complainant indicates that the Respondent has created “initial interest confusion”, attracting Internet users to its web site because of its purported affiliation with the Complainant. The Complainant also states that the disputed domain name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of it would “inevitably lead to confusion of some sort” and cause disruption to Swarovski’s business in contravention of paragraph 4(b)(iii) of the Policy.
The Complainant also informs the Panel that a cease and desist letter was not addressed to the Respondent prior to the filing of the Complaint since the Complainant was particularly concerned about the possibility of cyber-flight and about the detrimental effects of the Respondent’s exploitation of its trademark and thus opted for directly commence the present UDRP administrative proceeding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted, and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations for SWAROVSKI in many countries, including the Chinese trademark No. 384001, registered on July 30, 1987, in class 14; the United States trademark No. 386449, registered on October 19, 2010, in class 16; and the Community trademark No. 000120576, registered on October 15, 1998, in classes 3, 9, 11, 14, 16, 18, 21, 25 and 26.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the disputed 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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the case at hand, the Panel finds that the addition of the hyphen and of the generic term “outlets” to the trademark SWAROVSKI in the disputed domain name is not sufficient to prevent the finding of confusing similarity.
See also, among the numerous decisions stating that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Indeed, the inclusion of the term “outlets” is particularly apt to mislead Internet users into believing that the web site published at the disputed domain name is an online shop operated by Complainant for selling SWAROVSKI-branded products. See, amongst others, Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
There is also no indication before the Panel that the Respondent is commonly known by the disputed domain name, has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
Furthermore, the Panel notes that the Complainant and its trademark SWAROVSKI enjoy a worldwide reputation. Consequently, in the absence evidence to the contrary and convincing explanations submitted by the Respondent, the Panel also finds that the trademark SWAROVSKI is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. See, along these lines, Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Guccio Gucci S.p.A. v. Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel finds that, in light of the worldwide reputation of the Complainant and of its trademark SWAROVSKI, as well as of the market presence of the Complainant in numerous countries, including in the United Kingdom, where the Respondent is prima facie based according to the registrar-disclosed WhoIs information, it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel also concurs with the views expressed in Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, WIPO Case No. D2012-0979 and in Swarovski Aktiengesellschaft v. WhoisGuard, WhoisGuardProtected / Frank Amanda, WIPO Case No. D2012-2171, where it was found that the respondent’s registration of a domain name which included a well-known trademark in the absence of any legal connection to the Complainant or of any right or legitimate interest in the Complainant’s mark is strong evidence of bad faith.
Based on the evidence on record, showing that the disputed domain name has been redirected to a web site, in Chinese language, publishing images of female models and related information, the Panel finds that the Respondent has likely registered and used the disputed domain name to generate traffic to its own web site for commercial gain. In addition, in view of the inclusion of the well-known trademark SWAROVSKI in the disputed domain name, the Panel finds that Internet users might be confused as to the affiliation, source or endorsement of the Respondent’s web site by the Complainant.
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site and services.
Another element highlighting bad faith is that the Respondent has been subject to at least two other UDRP proceeding involving the Complainant’s trademark, i.e. Swarovski Aktiengesellschaft v. WB - Wicky Blown, WIPO Case No. D2012-2267 and Swarovski Aktiengesellschaft v. WhoisGuard / WB Wicky Blown, WIPO Case No. D2012-2268, in which it was found that the domain names involved in the respective cases were registered and used in bad faith. In the latter proceeding, it was also stated that the Respondent’s use of a privacy service and the provision of an address that - like in the present case - was located in Liverpool and resulted to be incorrect, was part of a “well planned and carried scheme to register and use of the disputed domain name in bad faith”.
Moreover, in the present case, the Respondent has chosen not to formally respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See, along these lines, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146 and Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646.
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 <swarovski-outlets.org> be transferred to the Complainant.
Date: February 20, 2013