WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Katie Lucas
Case No. D2013-0399
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Katie Lucas of Jinan, Shandong, China.
2. The Domain Names and Registrar
The disputed domain names <swarovski-onlinecheap.com> and <swarovskioutlet-online.com> are registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 28, 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.
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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.
The Center appointed David Stone as the sole panelist in this matter on April 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.
There are two disputed domain names included in this administrative proceeding, namely <swarovski-onlinecheap.com> and <swarovskioutlet-online.com>. In accordance with paragraph 3(c) of the Rules, the Complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules requires UDRP panels to decide a request to consolidate multiple domain name disputes in accordance with the Policy and the Rules. As Katie Lucas is the Respondent for both disputed domain names referenced in this Complaint, the Panel is satisfied that the two disputed domain names can and should be dealt with concurrently.
4. Factual Background
The Complainant is the one of the world’s leading producers 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. In 2011, the Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
The Complainant has registered SWAROVSKI as a trade mark globally, including in China, and uses such marks in relation to various goods.
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 disputed domain names <swarovski-onlinecheap.com> and <swarovskioutlet-online.com> were both registered on January 5, 2013. The Complainant asserts that the disputed domain names direct to websites operating as online shops in the English language displaying the Complainant’s logo and trade mark and offering the Complainant’s products for sale.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are confusingly similar to its registered SWAROVSKI trade mark. The disputed domain names incorporate the Complainant’s trademark in its entirety with the addition of the suffix terms “onlinecheap” in combination with a hyphen (<swarovski-onlinecheap.com>) and “outlet” and “online” in combination with a hyphen (<swarovskioutlet-online.com>). The Complainant submits that the addition of these suffix terms and hyphens will not lessen the confusing similarity between the disputed domain names and the Complainant’s trademarks, or have any impact on the overall impression of the dominant part of the disputed domain names.
The Complainant contends that misdirecting Internet users to the disputed domain names takes advantage of the behaviour pattern identified in Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, specifically that consumers expect to find a trade mark owner at a domain name address comprised of the company’s name or mark, for commercial gain.
The Complainant contends that there is no evidence to suggest that the Respondent has been using SWAROVSKI in any way that would give it rights or legitimate interests in the name. The Complainant further contends that the Respondent is not in any way affiliated or connected with the Complainant or authorised or licensed to use the SWAROVSKI trade marks.
The Complainant submits that the SWAROVSKI trade marks are well-known and famous, and that the Respondent’s use of the trade marks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant. The Complainant further submits that the Respondent is seeking to trade on the Complainant’s goodwill and reputation.
The Complainant submits that SWAROVSKI is a well-known trade mark worldwide, and that it is inconceivable that the Respondent would not have known of the Complainant’s rights in the SWAROVSKI trade mark at the time of the registration; indeed, the Respondent uses the Complainant’s logo and trade mark on the websites located at the disputed domain names which offer for sale a variety of the Complainant’s products.
The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The Complainant also asserts that the contact details provided by the Respondent are “fake” providing evidence of registration in bad faith by the Respondent.
The Complainant requests that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that is has prior registered rights in the mark SWAROVSKI around the world, including in China where the Respondent is based. From the evidence supplied by the Complainant, the Panel finds that SWAROVSKI is a well-known trademark, at least in relation to cut crystal goods. Several other UDRP panels have made similar findings: see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080; Swarovski Aktiengesellschaft v. meiguo, WIPO Case No. D2012-0745.
The disputed domain names incorporate the Complainant’s trade mark in its entirety. The addition of the suffix terms, “onlinecheap” in combination with a hyphen and “outlet” and “online” in combination with a hyphen, does not impact on the overall impression of the word “Swarovski”. Previous UDRP panels have held that adding common terms to a registered trade mark (as is the case here) and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820.
Furthermore, several previous UDRP panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity between the domain name and the mark. See Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 and Swarovski Aktiengesellschaft v. pfd, I. Stewart Donald/ dd I. Stewart Donald/ pd, I. Stewart Donald/ ma, I. Stewart Donald, WIPO Case No. D2012-0969.
Accordingly the Panel finds that the Complainant has established the first element under paragraph 4(a)i) of the Policy.
B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of these circumstances apply. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Based on the use as described at 6.C below, the Panel finds no other basis for establishing rights or legitimate interests under the circumstances.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the Respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given that the SWAROVSKI trade mark is well-known, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain names were registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well known or in wide use at the time of registration of the disputed domain name (See SembCorp Industries Limited v. Hu HuanXin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). The fact that the Respondent advertised goods purporting to be produced by the Complainant supports the Panel’s findings in this respect (a fact also considered relevant in Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638).
The Respondent is not an authorised reseller or distributor of the Complainant’s products. Applying the comments of the panelist in Lego Juris A/S v. Probuilders, WIPO Case No. D2011-0226, the sale of the Complainant’s products by the Respondent under the banner of the Complainant’s logo and trade mark is clearly designed to imply a connection between the Respondent and the Complainant.
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant's trade mark.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)iii) of 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 disputed domain names <swarovski-onlinecheap.com> and <swarovskioutlet-online.com> be transferred to the Complainant.
Date: April 26, 2013