WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Ming Wu
Case No. D2014-1786
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Ming Wu of Qingdaohaidishijie, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-schweiz.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2014, 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 October 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 7, 2014.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 14, 2014. 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 is a 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. In 2012, Complainant's products were sold in 1250 of its own boutiques and through 1100 partner-operated boutiques worldwide.
Complainant's approximate worldwide revenue in 2012 was Euro 3.08 billion.
Complainant uses the SWAROVSKI trademarks in connection with crystal jewelry stones and
crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and
Complainant owns China trademark registration No. 384001 registered on July 30, 1987 and Community Trademark Registration No. 003895091 registered on August 23, 2005 both for the SWAROVSKI mark, as well as Community Trademark Registration No. 006865794 registered on February 5, 2009 for the SWAROVSKI and Swan Design mark, in addition to numerous other registrations.
Complainant owns the <swarovski.com> and <swarovski.net> domain names.
Respondent registered the disputed domain name on August 29, 2014.
5. Parties' Contentions
Complainant alleges that it has trademark rights in the SWAROVSKI marks as evidenced by the above listed registrations, that the mark has become well known and famous in China, Germany and Switzerland, that the SWAROVSKI mark is confusingly similar to the disputed domain name, and that the geographically descriptive term "schweiz" is the German word for Switzerland.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name, has no connection or affiliation with Complainant, has not received any license or consent to use the SWAROVSKI mark in a domain name or in any other manner, has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI mark or the name "Swarovski". Specifically, the disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the infringing website.
Complainant states that Respondent registered the disputed domain name with the knowledge of the Complainant's rights in the SWAROVSKI marks. Respondent's bad faith use is evidenced by the fact that following Complainant's report to the ISP and the removal of Respondent's first infringing website, Respondent reopened the online shop at the disputed domain name and is continuing to operate the infringing website.
Regarding use in bad faith, Complainant states that Respondent has done nothing to identify itself as being independent from the Complainant and that Respondent has incorporated SWAROVSKI Marks in the disputed domain name, throughout the infringing website, and attempts to attract consumers for commercial gain by purporting to sell Swarovski products. Respondent is currently using the infringing website to offer for sale goods that are similar to those sold at the official Swarovski website. Respondent's attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilizing the SWAROVSKI marks is compounded by the efforts to mislead consumers into believing the site was operated or authorized by Complainant.
Respondent did not respond to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the SWAROVSKI mark and that the disputed domain name is confusingly similar to the mark because it incorporates the entire SWAROVSKI trademark with the addition of only the geographically descriptive term "schweiz", which is the German word for Switzerland.
B. Rights or Legitimate Interests
Complainant's unrebutted allegations and evidence are sufficient to shift to Respondent the burden to prove bona fide use, but it has not done so. Although Complainant does not allege that Respondent's goods are counterfeits, it does allege that they are similar to its own goods, implicitly conceding that the two are not identical. In any event, Respondent does not rebut the allegation and evidence that its goods are not authentic SWAROVSKI brand goods. Even assuming facts most favorable to Respondent—i.e. that it is reselling legitimate SWAROVSKI brand goods—the use would still not be bona fide because Respondent's website does not make any effort to prevent Internet users from believing that it is affiliated with Complainant. Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. On the contrary, the unrebutted evidence is that Respondent uses Complainant's mark without disclaimers or other indicia of independence to encourage Internet users to believe the site is affiliated with Complainant. The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainant's allegations of bad faith registration and use. Also, it is highly unlikely that Respondent was unaware of Complainant's trademark rights when Respondent registered the disputed domain name on August 29, 2014, since Complainant had trademark registrations in the SWAROVSKI mark for more than 27 years prior to the disputed domain name's registration and had used the mark extensively worldwide.
There is also evidence of bad faith use. Respondent's website clearly displays Complainant's registered SWAROVSKI and Swan Design mark. Under the Policy, it is evidence of bad faith that, "by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant's mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." Paragraph 4(b)(iv) of the Policy.
For the reasons set forth above, the Panel finds that Respondent registered and is using the disputed Domain Name in bad faith.
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 <swarovski-schweiz.com> be transferred to the Complainant.
Lawrence K. Nodine
Date: November 26, 2014