WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Qingrui Chen

Case No. D2013-1825

1. The Parties

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

Respondent is Qingrui Chen of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <施华洛世奇.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. The Response was filed with the Center on November 27, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on December 10, 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

Complainant, Swarovski Aktiengesellschaft, is a company incorporated in Triesen, Liechtenstein. Swarovski is a world leading producer 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.

Complainant has exclusive rights in several well-known registered SWAROVSKI and 施华洛世奇 trademarks globally (see Annex B to the Complaint), including China since 1987 (for SWAROVSKI Marks) and 1989 (for 施华洛世奇 Marks) respectively (see Annex C to the Complaint). It also owns the domain names <swarovski.com> (since January 11, 1996) and <swarovski.net> (since April 16, 1998) (see Annexes H-I to the Complaint).

Respondent is Qingrui Chenof Guangdong, China. The disputed domain name <施华洛世奇.com> was registered by Respondent on September 16, 2010, long after the SWAROVSKI Marks became internationally famous (Annex A to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) Complainant is the exclusive owner of trademark rights in the SWAROVSKI Marks.

Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones.

Complainant has registered the SWAROVSKI Marks globally (an excerpt of a selection of the registrations is attached as Annex B to the Complaint), including China since 1987 (see Annex C to the Complaint).

In 2011, Complainant’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide and its approximate worldwide revenue in 2011 was EUR 2.87 billion.

SWAROVSKI Marks have become famous and well-known in China (Annexes D-E to the Complaint) and worldwide (Annexes F-G to the Complaint).

Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>.

(b) The disputed domain name was improperly registered and is being improperly used.

The disputed domain name consists of the term “施华洛世奇”, which means “Swarovski” in the Chinese language.

Respondent registered the disputed domain name on September 16, 2010 and is operating a click-through website that displays sponsored links to third party websites (the “Infringing Website”) in the English and Chinese languages (see Annex J to the Complaint).

The sponsored links displayed at the Infringing Website direct Internet users to third party commercial websites that offer for sale and market various products unrelated to the Swarovski brands. The Infringing Website also displays “Related links” on the left side of the webpage.

Respondent has not only used the SWAROVSKI Marks in the disputed domain name but also operates the Infringing Website which utilises the SWAROVSKI Marks and displays sponsored links to third party commercial sites, which is a blatant infringement of the SWAROVSKI Marks.

Respondent does not at any point identify himself as being independent from Complainant and is clearly intending to create the impression that the Infringing Website is an official Swarovski website.

The disputed domain name is a blatant infringement of the SWAROVSKI Marks and no bona fide use is being made of the Infringing Domain Name. Respondent is trying to pass itself off as Swarovski and is exploiting the goodwill associated with the SWAROVSKI Marks in order to obtain commercial gain.

Respondent is clearly intending on capitalising on Swarovski’s goodwill and reputation.

Previous UDRP panels have recognised that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.

Respondent has used the SWAROVSKI Marks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and Swarovski approved websites.

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. D2002-0872for commercial gain.

This type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalises on Complainant’s goodwill in the SWAROVSKI Marks to divert Internet traffic to the Infringing Website.

The doctrine of “initial interest confusion” has been applied in numerous UDRP cases and it is also acknowledged in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Numerous UDRP panels have found that coupling a common word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name, especially a well-known mark like the SWAROVSKI Marks, does not negate a finding of confusing similarity but serves to reinforce the similarity.

The disputed domain name consists of the term “施华洛世奇”, which means “Swarovski” in the Chinese language. Previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.

(d) Respondent has no legitimate interests or rights in the disputed domain name.

Complainant’s rights in the SWAROVSKI Marks have been recognised by several UDRP panels.

Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI Marks in a domain name or in any other manner.

Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI Marks or the name “Swarovski”.

The disputed domain name misdirects Internet traffic to the Infringing Website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

Respondent has used the SWAROVSKI Marks in the disputed domain name to create the impression that it is associated with Swarovski.

Respondent is operating the Infringing Website to display sponsored links to third party websites. Previous UDRP panels have found that such a use of a website cannot be considered legitimate or fair use of a website.

Respondent’s misappropriation of the disputed domain name was no accident. Respondent’s use of the SWAROVSKI Marks is clearly for the purpose of misleading consumers into believing that Respondent and the Infringing Website are associated with or approved by Swarovski.

Previous UDRP panels have held that when a respondent chooses to incorporate a well-known trademark (like the SWAROVSKI Marks) into a domain name without the authorisation of the trademark holder, it cannot be considered a bona fide offering.

(e) The disputed domain name was registered and is being used in bad faith.

(i) The disputed domain name has been registered in bad faith

Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of Complainant’s rights in the SWAROVSKI Marks, as it is inconceivable that Respondent was unaware of Complainant’s rights in the SWAROVSKI Marks.

Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. Complainant’s trademarks are well known in China and worldwide and the disputed domain name is confusingly similar to the registered trademarks of Complainant.

Respondent’s selection of the disputed domain name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark.

The Infringing Website advertises for sale various purported Swarovski products. Registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

Previous UDRP panels have found that coupling a descriptive word with a complainant’s mark or even a word similar to a complainant’s mark in a domain name constitutes bad faith on the part of Respondent.

By operating a website offering sponsored links to third party websites, Respondent is exploiting Complainant’s trade marks for commercial gain by trying to profit from customers’ initial interest confusion.

Respondent receives commissions when Internet users clik on the sponsored links displayed at the Infringing Website and this constitutes bad faith.

(ii) The disputed domain name is being used in bad faith

Respondent has done nothing to identify itself as being independent from Complainant. On the contrary, Respondent incorporated SWAROVSKI Marks in the disputed domain name, which displays sponsored links to third party websites.

Many UDRP panels have held that a respondent’s very method of infringement, i.e., by using the exact SWAROVSKI Marks to lure consumers to its website demonstrates bad faith use under the Policy.

Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Infringing Website because of its purported affiliation with Swarovski.

The disputed domain name is so “obviously indicative” of Swarovski’s products and services that Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort” and cause disruption to Swarovski’s business.

Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVSKI Marks is compounded by the efforts to mislead consumers into believing the site was operated or authorized by Complainant. Respondent, without valid consent, utilises the SWAROVKI Marks throughout the Infringing Website, and this type of behaviours is indicative of bad faith.

B. Respondent

(a) Whether the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

“施华洛世奇” was a surname, and later becomes a trade mark. The characters of “施华洛世奇” were not original or created by Complainant. “施华洛世奇” is transliteration of the surname of “Swarovski”. Complainant does not have a monopoly right on it.

Respondent’s domain name is <施华洛世奇.com> and is not identical to Complainant’s <swarovski.com>, and no confusion will be resulted in.

Complainant’s branches in China have not used “施华洛世奇”, but used SWAROVSKI. As such, the disputed domain name will not cause any confusion. (Annexes 1-3 to the Response)

Based on the information found from the “China Trade Mark Web” “www.sbcx.saic.gov.cn/trade” hosted by the Trade Mark Office of the State Administration for Industry and Commerce (SAIC), some other companies and individuals have registered 施华洛世奇 trademarks.(Annexes 4-7 to the Response). Since other companies and individuals have registered 施华洛世奇 trade marks, it is clear that 施华洛世奇is a common surname and it was not original or created by Complainant.

Complainant’s Chinese Trade Mark 施华洛世奇 is not a well-known trade mark, and Complainant has no monopoly right on it. 施华洛世奇 is a common surname. Through “www.wikipedia.org” or other websites, many people, who have 施华洛世奇 as surname, can be found.(see Annexes 8-14)

The disputed domain name is different from Complainant’s trademark. The ownership of a trademark does not automatically result in the ownership of a domain name. The trade mark rights should not be unlimited expanded to the domain name area. Many scholars contended that a domain name does not belong to a trade mark.

Respondent recognized Complainant’s trade mark right on 施华洛世奇. Respondent has not infringed Complainant’s trade mark right, because trade mark and domain name are not same under the law.

Complainant does not have a monopoly right on the Chinese domain name <施华洛世奇.com>. The possession of the trade mark does not mean the possession of the domain name, e.g. Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster, Claim Number FA0609000796276

(b) Whether Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent has legitimate rights on <施华洛世奇.com> and “施华洛世奇” (Swarovski) family tree research website.

Complainant does not have a monopoly right on “施华洛世奇” - the main component of <施华洛世奇.com>.

Before the reception of the dispute notification, Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, e.g. via 施华洛世奇 (Swarovski) family tree research website. (Annex 15 to the Response)

Although Respondent has not obtain relevant trade marks on goods or related services, Respondent has commonly been known by the disputed domain name. (See 施华洛世奇 (Swarovski) family tree research website. Annex 15 to the Response).

Respondent is conducting legitimate noncommercial or fair use of the disputed domain name, and does not have the intention of obtaining commercial gain, misleading consumer or jeopardizing the trade marks for goods or services. (See施华洛世奇 (Swarovski) family tree research website; Annex 15 to the Response ).

Neither has Respondent registered nor is using the disputed domain name in bad faith.

Respondent has not registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name;

Respondent has not registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;

Respondent has not registered the disputed domain name primarily for the purpose of disrupting the business of a competitor;

By using the disputed domain name, Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding.

Respondent filed its Response in Chinese, and has requested that Chinese be the language of the proceeding for the following reasons:

(a) The disputed domain name is in Chinese. Complainant, who filed a dispute on a domain name in Chinese characters, must intend to use the disputed domain name for a Chinese website. Since the disputed domain name was in Chinese, some relevant evidences are in Chinese also.

(b) Respondent can only use Chinese.

(d) The link of Complainant’s company in Shanghai, China:“http://www.swarovski.com.cn/Web_CN/zh/contact_entry?WT.ac=Landing%20%2F%20Nav%20%2F%20Footer”

(e) According to precedent, in some previous UDRP cases, the language of proceeding was in Chinese, but Complainant’s Complaint was in English. In some other cases, the language of proceeding was in English, but Respondent’s Response was in Chinese.

Complainant objected to the request of Respondent for the following reasons:

(a) As indicated by the Center in the email dated November 18, 2013 to Respondent – according to paragraph 11(a) of the Rules, the language of the proceeding shall be the language of the Registration Agreement. The Registrar has confirmed that the language of the Registration Agreement is in English. Therefore, there is no reason for the Respondent to request that the language of proceedings be in the Chinese language.

(b) The majority of the content at the Infringing Website is in the English language. Therefore, as Respondent is capable of operating a website that is in the English language, it does not seem credible that Respondent is unable to communicate in the English language.

(c) Complainant is an international brand with registered marks in multiple jurisdictions whose international business primarily operates in English. It would be an inconvenience and an added cost to the Complainant if the language of the proceedings is in Chinese.

(d) Respondent’s claim that it did not receive any correspondence relating to this dispute and its reasons for the language of proceedings to be Chinese is clearly a tactic exercised by Respondent with the intention of prolonging the registration of the disputed domain name and the operation of the Infringing Website, to take advantage of Complainant’s well-known reputation for Respondent’s own commercial gain.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview 2.0 further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company from Liechtenstein, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the Infringing Website is in English (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the language of the Registration Agreement for the disputed domain name is English; (b) the Infringing Website is an English-based website and Respondent is apparently doing business in English through this website (Annex J to the Complaint); (c) the Infringing Website appears to have been directed to Internet users around the world (particularly English speakers) rather than Chinese speakers; (d) the email communications between the Center and Respondent indicated that Respondent is able to understand English.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. And, in order to reduce unnecessary delay of the proceedings, the Panel decided to accept the Response in Chinese. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the SWAROVSKI Marks acquired through registration. The SWAROVSKI Marks have been registered worldwide including in China (SWAROVSKI Mark was registered in China since 1987, and 施华洛世奇 Mark was registered in China since 1989; see Annex C to the Complaint), and Complainant has a widespread reputation in producing cut crystal, genuine gemstones and created stones.

The disputed domain name <施华洛世奇.com> comprises the施华洛世奇 Marks in its entirety. The disputed domain name only differs from Complainant’s trade mark by the suffix “.com”. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

Mere addition of the generic Top-Level Domain. “com” as suffix to Complainant’s trade mark fails to distinguish the disputed domain name from the trade mark. By contrast, it may increase the likelihood of confusion. Consumers who visit <施华洛世奇.com> are likely to be confused and may falsely believe that the website at the disputed domain name is operated by Complainant for selling Swarovski-branded products online.

Thus, the Panel finds that the additional suffix is not sufficient to negate the confusing similarity between the disputed domain name and the 施华洛世奇 Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

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

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the SWAROVSKI Marks globally (international registration - see Annex B to the Complaint), including registrations of SWAROVSKI Marks in China since 1987 and registrations of 施华洛世奇 Marks in China since 1989 – (see Annex C to the Complaint) which long precedes Respondent’s registration of the disputed domain name (September 16, 2010).

Respondent is not an authorized dealer of SWAROVSKI-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “施华洛世奇” and “Swarovski” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SWAROVSKI and/or施华洛世奇Marks or to apply for or use any domain name incorporating the 施华洛世奇 Mark and Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the SWAROVSKI and 施华洛世奇 Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website “www.施华洛世奇.com” is either Complainant’s website or a website of an official authorized partner of Complainant in China, which it is not.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <施华洛世奇.com> on September 16, 2010. The disputed domain name is identical or confusingly similar to Complainant’s 施华洛世奇 Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent “operates the Infringing Website which utilises the SWAROVSKI Marks and displays sponsored links to third party commercial sites”. And the sponsored links displayed at the Infringing Website direct Internet users to third party commercial websites that offer for sale and market various products unrelated to the Swarovski brands. (Annex J to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the SWAROVSKI Marks with regard to its products. Complainant has registered its SWAROVSKI Marks internationally, including registrations of SWAROVSKI Marks in China (since 1987) and registrations of 施华洛世奇 Marks in China (since 1989). Moreover, according to the information provided by Complainant, Respondent “operates the Infringing Website which utilises the SWAROVSKI Marks and displays sponsored links to third party commercial sites”. In the “Related Links” catalogue, the webpage contains the item titles “Swarovski Online”, “Swarovski Ring”, “Swarovski Jewelery” and so forth. Respondent would not have advertised products purporting to be Swarovski products on the Infringing Website if it was unaware of Complainant’s reputation.

In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trade mark right at the time of the registration of the disputed domain name. The Panel therefore finds that the SWAROVSKI and 施华洛世奇 Marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s Swarovski branded products.

(b) Use in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s SWAROVSKI-branded products and services without authorization. Complainant claimed that Respondent is trying to pass itself off as Complainant and is exploiting the goodwill associated with the SWAROVSKI Marks in order to obtain “commercial gain”.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the SWAROVSKI and 施华洛世奇 Marks, the Panel finds that the public, particularly the public in China, is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Infringing Website (see Annexes H-J to the Complaint). In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the 施华洛世奇 and SWAROVSKI Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website “www.施华洛世奇.com” is either Complainant’s website or a website of an official authorized partner of Complainant, which it is not. . The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trade mark, intended to ride on the goodwill of Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of convincing evidence to the contrary, the choice of the disputed domain name and the conduct of Respondent as far as the Infringing Website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <施华洛世奇.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: January 19, 2014