WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Fabien Hubert
Case No. D2013-0206
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Fabien Hubert of Troyes, Aube, France.
2. The Domain Name And Registrar
The disputed domain name <bijouxswarovskiboutique.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 30, 2013, 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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2013.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 26, 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, Swarovski Aktiengesellschaft, is the owner of the trademark SWAROVSKI and the SWAROVSKI Swan Logo in the United-States (e.g. Trademark No. 1739479, Trademark No. 1785590, Trademark No. 2402230), in Europe (e.g. CTM No. 00012051, CTM No. 3895091, CTM No. 6865794). It is also the holder of various international trademarks (International Trademark No. 857107, International Trademark No. 303389A, International Trademark no. 528189).
Swarovski uses the SWAROVSKI mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles, and lighting industries.
The Complainant is the world leading producer of cut crystal, guenine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. 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.
According to the WhoIs database, the disputed domain name was registered on October 15, 2012. The Respondent is known as Fabien Hubert, localized in the city of Troyes, in France.
The disputed domain name <bijouxswarovskiboutique.com> currently resolves to an inactive page. The disputed domain name used to be active.
5. Parties’ Contentions
First, the Complainant asserts that the disputed name <bijouxswarovskiboutique.com> is confusingly similar to its well known trademark SWAROVSKI which is reproduced in its entirety in the disputed domain name. The Complainant argues that the addition of the French words “bijoux” and “boutique” which are common words that refer to the Complainant’s activities does not lessen the finding of confusing similarity but serves to reinforce the similarity.
Second, the Complainant alleges that the trademarks SWAROVSKI have been recognized by several WIPO panels as well known throughout the world. The Complainant also argues that the Respondent uses the well known trademark SWAROVSKI in the disputed domain name, that the Respondent has never been known under that name, trademark or trade name, nor that he has ever been licensed or authorized by the Complainant. The Complainant finally alleges that such a use of the well known trademark is evidence that the Respondent has no rights or legitimate interest in <bijouxswarovskiboutique.com>.
Third, the Complainant contends that the disputed domain name was registered and is used in bad faith due to the worldwide reputation of the trademark SWAROVSKI. The Complainant claims that the Respondent could not have ignored the trademark SWAROVSKI when registering <bijouxswarovskiboutique.com>. The Complainant also asserts that the Respondent used the disputed domain name in bad faith as it lures consumers about his identity by creating a likelihood of confusion with the Complainant’s trademark, in order to attract Internet users for commercial gains by selling various purported Swarovski products.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
6. Discussion And Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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 Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The first element under the paragraph 4(a) (i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that the Complainant has rights in the SWAROVSKI trademarks as evidenced by the trademark registrations submitted with the Complaint. Previous UDRP decisions also held that the SWAROVSKI is well known internationally (Swarovski Aktiengesellschaft v. A.S., WIPO Case No.D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No.D2012-2267; Swarovski Aktiengesellschaft v.Derk Hond, WIPO Case No. D2013-0005).
The Panel finds that the domain name <bijouxswarovskiboutique.com> is confusingly similar to the Complainant’s trademarks SWAROVSKI as the disputed domain name incorporates the mark SWAROVSKI in its entirety. Previous UDRP decisions have held that a domain name is confusingly similar to a trademark when it comprises a well known mark in its entirety.
The disputed domain name fully integrates the highly distinctive element “Swarovski” of the Complainant’s trademark and only differs from it by the addition the French terms “bijoux” (“jewels” in English) and “boutique” (“store” in English).
The Panel finds that those terms are common words which are not sufficient to exclude similarity, especially with a well known trademark such as SWAROVSKI (Pepsico Inc., of Purchase v. Johan De Broyer WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072). On the contrary, the terms “bijoux” and “boutique” increase the impression of confusion as they refer to the Complainant activities, particularly for French speaking consumers.
The Panel finds that consumers who visit the disputed domain name are likely to be confused and may falsely believe that the website corresponding to <bijouxswarovskiboutique.com> is operated by the Complainant for selling Swarovski products online.
Finally, when it comes to the adjunction of gTLD “.com”, it is now well established that the generic top-level domain may be ignored when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt, WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the disputed domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
Once the complainant has made a prima facie case that the respondent lacks legitimate interest or right, the burden shifts to the respondent to prove its right or legitimate interest in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
Considering the Complainant’s SWAROVSKI trademark well-known character, and the fact that the Respondent has never been licensed, authorized or permitted to use it, the Panel considers that any use that the Respondent would make of any domain name incorporating the Complainant’s trademark SWAROVSKI would most likely violate the exclusive trademark rights which the Complainant has long held in its mark (Deutsche Bank Aktiengesellschaft v. New York TVTickets Inc. WIPO Case No.2001-1314).
The Panel noticed that the disputed domain name <bijouxswarovskiboutique.com> currently resolves to an inactive page. But the Complainant showed that the disputed domain name used to direct to a website which reproduced the Complainant’s trademarks SWAROVSKI as well as the SWAROVSKI swan logo. It seems that the Respondent tried to lure Internet users and more particularly the Complainant’s French speaking customers into thinking that the website was run by the Complainant and/or that the Respondent was affiliated with or authorised to sell products by Swarovski. This is obviously not in favour of legitimate interest justifying the registration of the domain name.
Taking all of these elements into consideration, the Respondent takes undue advantage from Internet users’ confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey ( WIPO Case No. D2009-0258).
In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Respondent has not taken the opportunity to explain the right or legitimate interest behind the registration by responding to the Complaint as the UDRP rules allow him to do.
Consequently, the Panel considers that the condition set out by paragraph 4(a) (ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
a) Registered in bad faith.
The Panel confirms that SWAROVSKI is a well known trademark with an international reputation (Swarovski Aktiengesellschaft v. A.S., WIPO Case No.D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No.D2012-2267; Swarovski Aktiengesellschaft v.Derk Hond, WIPO Case No. D2013-0005). The Complainant is the world leading producer of cut crystal, guenine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. Considering the worldwide reputation of SWAROVSKI’s brand and products, Panel finds that the Respondent registered the disputed domain name with full knowledge of the Complainant’s rights in the SWAROVSKI trademarks. The Panel considers that registration of a well known trademark such as SWAROVSKI, as a domain name by an entity that has no legitimate relationship with the mark suggests bad faith registration (Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445). The Respondent has not even tried to challenge the Complainant’s allegations regarding the well known character of the trademark.
Considering the use of the disputed domain name by the Respondent, which consists of offering for sale various purported Swarovski products, the reproduction of the trademark SWAROVSKI and of the SWAROVSKI swan logo, the Panel finds that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark. It is not conceivable 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 also finds that the SWAROVSKI mark is not a sign that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No.D2009-0610; Swarovski Aktiengesellschaft v. Zhang Ting, WIPO Case No. D2012-1791). Such a conduct is evidence of bad faith registration.
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
b) Used in bad faith.
At the time of the filing of the Complaint, the disputed domain name used to direct towards a website which imitated the SWAROVSKI trademarks as well as the SWAROVSKI swan logo and referred to the Complainant’s activities. It seems therefore that the Respondent used the SWAROVSKI mark throughout the website without valid consent.
The Respondent, rather than identifying himself as being independent from the Complainant, has wilfully created confusion with the latter. This type of behaviour is indicative of bad faith (PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700; Nikon Corp. v. Technilab, Inc., WIPO Case No. D2000-1774; Swarovski Aktiengesellschaft v. Chen Meifeng WIPO Case No. D2011-0364).
When this decision was drafted by the Panel, the disputed domain named directed towards an inactive page. It is very likely that the Respondent is behind this change. The Panel does not believe that this change is sufficient to consider that the domain name is not used in bad faith.
Therefore, the Panel finds that the Respondent has used the disputed domain name to intentionally attempt to attract Internet users, particularly French speaking ones, to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s well known trademarks as to the source, sponsorship, affiliation, or endorsement of its website for fraudulent gain and earning.
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <bijouxswarovskiboutique.com> be transferred to the Complainant.
Date: March 12, 2013