WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. David Osgood, David

Case No. D2011-0937

1. The Parties

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

Respondent is David Osgood, David of Farmingdale, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <swarovskibead.biz> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2011. On May 31, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2011, GoDaddy.com, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2011.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 19, 2011. 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 prestigious manufacturer of jewelry, luxury items, and decorative and collectible objects made of, or containing crystal. Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and a presence in more than 120 countries. In 2009, Complainant’s products were sold in 1,014 of its own boutiques and through 819 partner-operated boutiques worldwide. Complainant’s approximate worldwide revenue in 2009 was EUR 2.25 billion.

Complainant advertises and promotes the SWAROVSKI trademark, and has also registered such trademark, in several different countries. Among other trademark registrations worldwide, Complainant obtained the following ones in the United States:

Complainant has also registered several domain names, including <swarovski.com> and <swarovski.net>, which point to Complainant’s official website. Complainant’s website enables Internet users to access information regarding Complainant’s merchandise and to purchase Complainant’s genuine products.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is confusingly similar to the SWAROVSKI trademark owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

The burden of proving these elements is on Complainant.

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant showed that SWAROVSKI is a distinctive earlier trademark in relation to the disputed domain name, and that the latter is confusingly similar to such mark.

It is well-settled that when a respondent merely adds generic or descriptive terms to an otherwise distinctive trademark, the domain name is to be considered confusingly similar to the registered trademark. In this case, Respondent added to the SWAROVSKI trademark the descriptive term “bead”, which indicates one of the products manufactured by Complainant.

There are numerous WIPO UDRP decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name (see, e.g., Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).

Therefore, the Panel finds that the disputed domain name <swarovskibead.biz> is confusingly similar to the trademark SWAROVSKI to which Complainant has rights and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The disputed domain name was registered on April 4, 2006 that is, several decades after Complainant started to use and registered the trademark SWAROVSKI. Therefore, the prior rights over such trademark are clearly on Complainant’s side and due to the well-known character of Complainant’s trademark it is fair to assume that Respondent had prior knowledge of such trademark when it adopted the disputed domain name.

In addition, Respondent does not run any legitimate business activity in connection with the disputed domain name. The web page that may be accessed under the disputed domain name contains no information at all.

Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Therefore, given the circumstances described above, the Panel finds that Respondent has no rights or legitimate interests in respect to the domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith by Respondent. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

It has been proven to the Panel’s satisfaction that Complainant’s trademark SWAROVSKI is well-known, and the Panel accepts that Respondent could not likely reasonably ignore the high reputation of the products that such trademark identify.

In this sense, there is little doubt that Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing Complainant’s website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: “Indeed, by redirecting Internet users looking for the website of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant’s trademark.”

The Panel noticed that there is currently no content other than the domain name itself listed in bold letters on Respondent’s website that is located under the disputed domain name. In that regard, the Panel agrees with Complainant’s contention that consumers were initially attracted to the disputed domain name by the use of the SWAROVSKI trademark in the disputed domain name is enough to contravene the Policy. This has been the consensus among UDRP decisions since the beginning of the UDRP system, as decided, among others, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”

Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark and that Complainant has proven that Respondent’s registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under 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 <swarovskibead.biz> be transferred to the Complainant.

Gabriel F. Leonardos
Sole Panelist
Dated: August 3, 2011