WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Brian Belzee

Case No. D2013-0478

1.The Parties

The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is Brian Belzee of Altoona, Idaho, United States of America.

2. The Domain Name and Registrar

The disputed domain name <swarovskioutletjewelry.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2013. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant of the disputed domain name 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 March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. The named Respondent did not submit any formal response, however, submitted several e-mail communications disputing that it was in fact the Registrant of the disputed domain name, which the Center acknowledged receipt of on April 5, 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.

4. Factual Background

The Complainant is 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 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.

The Complainant has registered the word “Swarovski” as a trade mark globally, including in the United States of America, 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 name <swarovskioutletjewelry.org> was registered on January 9, 2013. The Complainant asserts that the disputed domain name <swarovskioutletjewelry.org> directs to a website operating as an online shop in the English language displaying the Complainant’s logo and trade mark and offering the Complainant’s products for sale.

Steps were taken by the Complainant to inform the Internet Service Provider hosting the website found at the disputed domain name that the content on the website infringed the Complainant’s trade marks. As a result, the website was removed and the disputed domain name no longer leads to a website selling products.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its registered SWAROVSKI trade mark. The disputed domain name incorporates the Complainant’s mark in its entirety together with the suffix terms “outlet” and “jewelry”, which the Complainant submits will not lessen the confusing similarity between the disputed domain name and the Complainant’s marks or have any impact on the overall impression of the dominant part of the disputed domain name.

The Complainant contends that misdirecting Internet users to the disputed domain name 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 comprised of the company’s name or mark.

The Complainant contends that there is no evidence to suggest that the Respondent has been using the word “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 trade mark at the time of the registration: indeed, the Respondent used the Complainant’s logo and trade mark on the website located at the disputed domain name which offered for sale a variety of the Complainant’s products.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith.

Although the Complainant has successfully removed the online shop being operated at the disputed domain name, the Complainant does not have control of the disputed domain name.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply formally to the Complainant’s contentions.

On various occasions, the most recent being April 5, 2013, the Center received email communication from the Respondent, listed as the registrant of the disputed domain name in the publicly-available WhoIs and as confirmed by the Registrar, to the effect that he claims that the registration of the disputed domain name had been made without his knowledge or authorization by a third party using his identity. On April 5, 2013, the Center sent an email confirmation to the Respondent that acknowledged receipt of his email communication dated the same day and informed the Respondent that this email communication would be transmitted to the Panel for consideration, once appointed. The Panel has reviewed these communications.

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 the United States where the Respondent is based. From the evidence supplied, the Panel finds that SWAROVSKI is a well-known mark, 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 name incorporates the Complainant’s trade mark in its entirety. The addition of the suffix terms “outlet” and “jewelry” does not impact on the overall impression of the word SWAROVSKI. Previous UDRP panels have held that adding common terms (as is the case here) to a registered trade mark 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.

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 of the disputed domain name;

(ii) common association with the disputed domain name; or

(iii) legitimate noncommercial use of the disputed domain name.

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 arguments supporting rights or legitimate interests.

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 disputed domain name to the rights-holder at a profit;

(ii) to prevent the rights holder from registering the disputed 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 name was 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 (SembCorp Industries Limited v. Hu Huan Xin, 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 purportedly 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 website at the disputed domain name (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant's trade mark.

The Respondent says that his identity has been misused to register the domain name. If true (and the Panel makes no finding in this regard), then the bad faith of the actual entity misusing the Respondent’s identity is amplified.

Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <swarovskioutletjewelry.org> be transferred to the Complainant.

David Stone
Sole Panelist
Date: April 29, 2013