WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Lao a
Case No. D2013-0251
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Lao a of Harbin, Heilongjiang, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskisaleonline.com> (the “Domain Name”) is registered with Foshan YiDong Network Co., LTD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2013. On February 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 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. On February 7, 2013, the Center transmitted an email to the Parties in both Chinese and English languages regarding the language of proceedings. On February 8, 2013, the Complainant requested that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on March 15, 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 world leading producer of cut crystal, genuine gemstones and created stones with production facilities in 8 countries, distribution to 42 countries and a presence in more than 120 countries. In 2010, the Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide. It’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
The Complainant uses the SWAROVSKI trade marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. It has registered the SWAROVSKI trade marks globally including China. The registered trade marks in China include the SWAROVSKI trade mark in English and Chinese as well as in combination with the Complainant’s “Swan” logo. The earliest Chinese trade mark registration for SWAROVSKI dates back to 1987.
The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI trade marks throughout China and worldwide. As a result, the SWAROVSKI trade marks have become famous and well known in China.
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 Domain Name <swarovskisaleonline.com> on December 3, 2012. The Domain Name is not currently connected to any active web pages. The website connected to the Domain Name (the “Website”) which was in English used to bear the SWAROVSKI trade marks and purported to sell discounted SWAROVSKI crystal jewellery. The Domain Name is connected to the domain name <swarovskicrystal-uk.com> which is registered to a different registrant. The About Us section on the Website refers to <swarovskicrystal-uk.com> rather than the Domain Name. Separate proceedings have been taken against the registrant of that domain name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the SWAROVSKI trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Section VIII of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Website was in English which demonstrates that the Respondent has proficiency and is able to communicate in English. The Complainant is an international business which primarily operates in English. It is not familiar with the Chinese language. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark SWAROVSKI.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark SWAROVSKI is the dominant portion of the Domain Name. The addition of the word “sale” and “online” after the word “Swarovski” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its SWAROVSKI trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis under the circumstances described above upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of and intended to target the Complainant’s SWAROVSKI mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The Website bore the SWAROVSKI trade mark and purported to offer for sale and sell discounted SWAROVSKI jewellery which showed a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on it were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
The subsequent removal of this website content does not change the Panel’s assessment under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <swarovskisaleonline.com> be transferred to the Complainant.
Date: March 28, 2013