WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard / Kate Julie
Case No. D2013-0205
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard of Los Angeles, California, United States of America / Kate Julie of Shantou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-discountsale.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2013, 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 February 4, 2013 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 February 7, 2013.
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 February 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2013.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 13, 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.
The Panel notes that the hard copy of the Complaint was undelivered, the courier record noting that the address given was a wrong address. The address was the address shown for the Respondent in the WhoIs for the disputed domain name. The Panel is satisfied that the requirements of paragraph 2(a) of the Rules have been satisfied.
4. Factual Background
The disputed domain name was registered on July 5, 2012.
The Complainant is renowned for its crystal ware, jewelry and other luxury items. It had its origins in Austria in the 19th Century; has production facilities in 18 countries, distribution in 42 countries and a presence in 120 countries. Its products are sold through 1,218 of its own boutiques and 1,000 partner-operated boutiques; in 2011 its worldwide revenue was approximately EUR 2.87 billion. It has registrations of its SWAROVSKI trademark and its Swan device trademark in the United States of America dating from 1972 and internationally from 2007 and has been widely publicized in internationally circulated publications such as “Harpers Bazaar”, “Cosmopolitan” and “Vogue”. The Complainant’s success and the reputation and attractive power of its SWAROVSKI trademark have made it a prime target for cybersquatters. It has been the subject of over 130 successful complaints under the Policy, 23 of which have been cited by the Complainant in this Complaint.
At the date of the Complaint the disputed domain name resolved to a website which offers for sale crystal and other jewelry items under the trademark SWAROVSKI. It displays the Complainant’s SWAROVSKI trademark and its Swan device trademark and a statement that it is an “authorized dealer”.
Nothing is known of the Respondent save that the Complainant points out that the website at the disputed domain name is substantially identical in content and in look and feel to that at the domain name <swarovskisale-us.com> which is the subject of a co-pending Complaint Swarovski Aktiengesellschaft v. Hellen Admas, WIPO Case No. D2013-0225. In particular, the “About Us” sections are identical, each stating that “We are professional Swarovski jewelry online retailer”, that “All our Swarovski items are made of real Swarovski elements”, and that the order will come “with original Swarovski blue package box certificates”.
The Complainant states that the website is the same as that to which resolved the domain name <swarovskisales-usa.com>, the subject of a prior case, Swarovski Aktiengesellschaft v. WhoisGuard / Linda Blue, WIPO Case No. D2013-0004, prior to its transfer to the Complainant.
The Complainant did not attempt to contact the Respondent with a view to settlement before filing the Complaint. The Complainant explains that it does not do so because it has experienced instances of cyber flight leading to delay in resolution of the matter.
5. Parties’ Contentions
The Complainant’s submissions may be summarized as follows:
- The Complainant has exclusive rights in the name and trademark SWAROVSKI by virtue of its extensive and longstanding worldwide reputation and its registration in the United States of America, the European Community and elsewhere.
- The disputed domain name is confusingly similar to the Complainant’s trademark. It wholly incorporates the trademark and the added words “discount” and “sale” do not serve to distinguish the disputed domain name from the Complainant’s trademark.
- The Complainant has no connection or affiliation with the Respondent and the Respondent has not received any licence or approval to use the disputed domain name.
- The Respondent has never been known by the name Swarovski.
- -The Respondent has used the disputed domain name to advertise purported Swarovski products to create initial interest confusion and to create the impression of an association with the Complainant.
- -The Respondent has deliberately misappropriated the Complainant’s mark knowing of its fame and reputation.
- It is inconceivable that the Respondent was not aware of the Complainant’s trademark and the only logical explanation for the adoption of the disputed domain name was to capitalize on the reputation of the Complainant’s mark and to obtain economic advantage from the inevitable confusion to which it would lead.
- The contact details provided by the Respondent are fake.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s trademark is, and has been for many years, a well-known trademark in the field of cut crystal, jewelry and other luxury items. It is registered in the United States of America, Europe, China and several other jurisdictions. Over 130 prior panel decisions under the Policy have recognized that it is a trademark in which the Complainant has rights.
It has been recognized in many prior UDRP panel decisions that where a disputed domain name wholly incorporates the Complainant’s trademark, it is not distinguished from the trademark by the addition of generic descriptive words such as “discount” or “sale”. As found by the panel in Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604, such words:
“do not eliminate the identity or at least the similarity between the Complainant's registered trademark and the disputed domain names”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that it has no connection or affiliation with the Respondent and has not given any licence or authority to the Respondent to use the trademark SWAROVSKI in the disputed domain name. The Complainant further asserts that the Respondent has never been known by the disputed domain name. The Complainant has shown examples of the use of the disputed domain name which clearly suggests that Respondent is an authorized dealer in the Complainant's products and that the goods offered for sale are the genuine goods of the Complainant. The Complainant denies that this is so and the Respondent has made no attempt to dispute the Complainant’s assertions in this regard. Moreover, the statements in the “About Us” section of the Respondent’s website are ambiguous but they appear to suggest that items offered for sale are made by or for the Respondent using genuine Swarovski parts. Whether this is true or not, it does not entitle the Respondent to sell the items as Swarovski. A car is not a Rolls Royce merely because it is powered by a Rolls Royce engine. The Respondent’s use of the Complainant’s trademark is therefore an illegitimate use and such use cannot constitute a use in the bona fide offering of the Respondent’s goods.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name the Complainant’s trademark SWAROVSKI was world famous. As the Complainant submits, it is inconceivable that the Respondent, a person engaged in the same industry as the Complainant, would not have known of the Complainant’s mark. The only logical reason for its adoption therefore must have been with bad faith intent to use it to exploit, for commercial gain, the Complainant’s reputation. As demonstrated above, the Respondent has used the disputed domain name for precisely that purpose. The Respondent’s use is therefore, by definition, use in bad faith in accordance with paragraph 4(b)(iv) of the Policy. Further evidence of bad faith is the provision of a false address and contact information in the WhoIs for the disputed domain name.
The Panel therefore finds that the disputed domain name has been 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-discountsale.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: March 26, 2013