WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Wang Jihui Wang Jihui
Case No. D2015-0587
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Wang Jihui Wang Jihui of Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <施华洛世奇.手机> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2015. On April 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2015, 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 April 9, 2015, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not comment within 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 in English and Chinese of the Complaint, and the proceeding commenced on April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2015.
On May 13, 2015, the Center received email communications from the Respondent in Chinese. The email communications consisted of one-line requests for future correspondence pertaining to the proceeding to be sent to another mail address and indicating, presumably the Respondent’s telephone number.
The Center appointed Francine Tan as the sole panelist in this matter on May 15, 2015. 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 claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones. It has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2012, the Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. The Complainant’s Group’s approximate worldwide revenue in 2012 was EUR 3.08 billion.
The Complainant has registered the SWAROVSKI trade mark globally. It also has trade mark registrations in China for SWAROVSKI, 施华洛世奇 (a transliteration of SWAROVSKI into Chinese), a combination mark comprising a device of a swan, the word “Swarovski” and施华洛世奇 (“the SWAROVSKI marks”).
Substantial expense in time, effort and money have been spent promoting the SWAROVSKI marks in China and worldwide. As a result, the SWAROVSKI marks have become 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” from which information on the Complainant and its merchandise can be obtained and items bought.
The Respondent registered the disputed domain name on January 5, 2015. The disputed domain name is used in relation to an online shop in the Chinese language. The Respondent’s website does not make reference to the Complainant but is used to sell beads and jewellery, similar to the Complainant’s line of business.
5. Parties’ Contentions
1. The disputed domain name consists of the Complainant’s registered trade mark施华洛世奇in its entirety. It is therefore confusingly similar to the Complainant’s SWAROVSKI trade marks.
2. The Respondent has no rights or legitimate interests in the disputed domain name. He has no connection or affiliation with the Complainant and has not received any licence or consent to use the SWAROVSKI trade marks in a domain name or in any other manner. The Respondent has never been known by the disputed domain name. The Respondent has used the SWAROVSKI trade marks to create the impression that it is associated with the Complainant and/or to create initial interest confusion. The Respondent’s choice of incorporating the Complainant’s well-known trade mark in the disputed domain name without the Complainant’s authorization cannot be considered to be bona fide.
3. The disputed domain name was registered and is being used in bad faith. The Respondent could not have registered the disputed domain name by pure coincidence without the knowledge of the Complainant’s rights in the SWAROVSKI trade marks. It is inconceivable that the Respondent was unaware of the Complainant’s rights in its well-known SWAROVSKI trade marks. It has not done anything to identify its website as being unrelated to the Complainant’s. Instead, it is attempting to attract consumers for commercial gain by selling products which are similar to the Complainant’s line of business.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove each of these elements before it can obtain an order in its favour:
“(i) [the Respondent’s] domain name is identical or confusingly similar to a trademark 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 Respondent’s] domain name has been registered and is being used in bad faith.”
A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
The Complaint was filed in English although the Registration Agreement was in Chinese. The Complainant requested that English be the language of the proceeding as its international business operates primarily in English. Having the proceeding in Chinese would be an inconvenience and involve additional cost to have the documents translated.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Panel makes the determination that it is appropriate in this case for English to be the language of the proceeding. The Respondent has been given a fair opportunity to present its case and to respond on the issue of the language of the proceeding. It did not respond on the issue. The Panel notes that although the content of the Respondent’s website is primarily in Chinese, the English words “Shopping Guarantee” appears on the screenshot of the Respondent’s website exhibited in the Complaint. More importantly, apart from the fact that the Respondent has been given a fair opportunity to be heard in the proceeding and to express any objection on the issue on the language, there is the Policy consideration of ensuring that the proceeding takes place with due expedition. Requiring the Complainant to translate the Complaint and the evidence into Chinese would involve additional time and delay the proceeding.
The language of the proceeding is therefore to be English.
B. Identical or Confusingly Similar
The Complainant has established that it has registered rights in the trade mark施华洛世奇. The Panel finds that the disputed domain name is identical to the施华洛世奇trade mark as it has been incorporated in its entirety. It is a well-established principle that the generic Top-level Domain may be disregarded when considering the issue of whether a respondent’s domain name registration is identical or confusingly similar to a complainant’s trade mark.
The Panel therefore finds that the first element of the Policy has been satisfied.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant, in relation to the second requirement under paragraph 4(a)(ii) of the Policy, has established a prima facie case. The burden therefore shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Paragraph 4(c) of the Policy provides examples of circumstances which, if founds to be proved, would demonstrate the Respondent’s rights or legitimate interests to the domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent had the opportunity to rebut the Complainant’s assertions but has not responded. Pursuant to paragraph 5(e) of the Rules and in the absence of any of the circumstances enumerated above which the Panel can take into consideration and which would/might demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, the Panel concludes that the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
As the Respondent has been found to have defaulted in providing a substantive response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the undisputed factual assertions made in the Complaint (Rules, paragraph 14(a)).
The Panel is persuaded that it is more likely than not that the Respondent chose to register the disputed domain name incorporating the Complainant’s well-known trade mark 施华洛世奇and/or the Chinese transliteration of the Complainant’s well-known SWAROVSKI trade mark with a view to attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation (paragraph 4(b)(iv) of the Policy). The Respondent has failed to respond to the Complainant’s assertions with any statement of fact or evidence to rebut the Complainant’s assertions. Furthermore, earlier UDRP decisions have established the principle that the registration of a domain name that is obviously connected with a trade mark which is widely known by someone who has no connection whatsoever with the trade mark suggests opportunistic bad faith. (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445). As stated by the panel in the latter case, the Panel also concludes in this case that “the only logical explanation for the Respondent’s choice of the disputed domain name is that it was for the purpose of attracting and misleading Internet users to the Respondent’s website for commercial advantage.”
In light of the above, the Panel concludes that the third requirement of paragraph 4(a) of the Policy has been met.
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 <施华洛世奇.手机> be transferred to the Complainant.
Date: May 24, 2015