WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. NetNames Hostmaster

Case No. D2010-1735

1. The Parties

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

The Respondent is NetNames Hostmaster of Hong Kong, Special Administrative Region of the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <swarovskischmuckde.com> 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 October 13, 2010. On October 13, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing the contact information for the disputed domain name which differed from the contact information in the Complaint. The Center transmitted by email to the Complainant on October 25, 2010, notifying of the Complaint deficiency and providing the Complainant with the registrant name and contact information, as disclosed by the Registrar. On the same day, the Center also transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On October 26, 2010, the Complainant filed an amendment to the Complaint and informed the Center of its request that English or German be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint together with the amendment to 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 November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2010.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 26, 2010. 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, Swarovski Aktiengesellschaft, is a producer of cut crystals genuine gemstones and created stones with production facilities in 19 countries and a presence in over 120 countries. In 2009, the Complainant's products were sold at revenue of 2.25 billion Euros.

The Complainant markets its products worldwide through its boutiques and through partner-operated boutiques and employs around 24,841 employees worldwide.

Since its establishment in 1895, the Complainant has manufactured and sold various crystal products under the trademark SWAROVSKI.

The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – Swarovski, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; Community trademark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community trademark registration No. 000120501 – SWAROVSKI (logo), with the registration date of October 27,1999; Community trademark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005; International trademark registration No. 663366 – SWAROVSKI, with the registration date of October 17, 1996, designated for Armenia, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, China, Cuba, Czech Republic, Croatia, Hungary, and others; Community trademark registration No. 6865794 – SWAROVSKI (logo), with the registration date of February 5, 2009; and many more.

Through extensive use around the world, the SWAROVSKI trademark has generated vast good will and has become famous in connection with jewelry.

The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the name “Swarovski”. For example: <swarovski.com> and <swarovski.net>.

The disputed domain name <swarovskischmuckde.com> was registered on May 10, 2010.

The disputed domain name currently redirects to the domain name <swarovskischmuckdesale.com>, which resolves to a website offering jewelry for sale and includes tabs that contain the name “Swarovski”.

The Complainant sent a cease and desist letter to the Respondent on July 9, 2010, informing the Respondent of the Complainant’s intellectual property rights in the mark SWAROVSKI and demanding that the Respondent discontinue its use in the disputed domain name. The Respondent failed to reply to the Complainant’s letter. Consequently, the Complainant sent an additional cease and desist letter to the Respondent on August 6, 2010. The Respondent did not reply to this letter either.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the SWAROVSKI trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole. The Complainant further argues that the additional descriptive suffixes in the disputed domain name-“schmuck” (“jewelry” in German) and “de”, (an abbreviation for Germany), are insufficient to avoid confusing similarity between the SWAROVSKI trademark and the disputed domain name.

The Complainant further argues that the Respondent’s use in the disputed domain name is not a legitimate use.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its SWAROVSKI trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that it has established tremendous goodwill in the SWAROVSKI mark and that the SWAROVSKI mark has become well-known for high quality jewelry.

The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.

The Complainant further argues that it is unlikely that the Respondent was not aware of the SWAROVSKI marks upon registering the disputed domain name and thus acted in bad faith in registering and using the disputed domain name.

The Complainant further argues that the use the Respondent is making in the SWAROVSKI mark along with the descriptive word “schmuck” (jewelry in German) and the abbreviation “de” demonstrate the Respondent's attempts to associate the disputed domain name with the Complainant and the Complainant’s mark.

The Complainant further argues that the Respondent is using the disputed domain name to sell goods that are identical or similar to Swarovski products in order to mislead consumers and obtain commercial gain.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless 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 language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English. Alternatively, the Complainant requested that the language of proceedings should be German.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain names consist of Latin words, letters and numbers, and do not consist of any Chinese letters or words;

b) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

c) English is a widely known language, and it is therefore presumable that both the Complainant and the Respondent understand English and are able to conduct the proceedings in English.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark SWAROVSKI. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – SWAROVSKI, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; Community trademark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community trademark registration No. 000120501 – SWAROVSKI (logo), with the registration date of October 27,1999; Community trademark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005; International trademark registration No. 663366 – SWAROVSKI, with the registration date of October 17, 1996, designated for Armenia, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, China, Cuba, Czech Republic, Croatia, Hungary, and others; Community trademark registration No. 6865794 – SWAROVSKI (logo), with the registration date of February 5, 2009; and many more.

The disputed domain name <swarovskischmuckde.com> differs from the registered SWAROVSKI trademark by the additional words “schmuck”, the abbreviation “de” and the additional gTLD “.com”.

The disputed domain name integrates the Complainant’s SWAROVSKI trademark in its entirety, as a dominant element.

The additional word “schmuck” (“jewelry” in German) does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's SWAROVSKI trademark, as it refers directly to the goods regularly sold by the Complainant under the SWAROVSKI trademark. The abbreviation “de”, which stands for the country - Germany, is also insufficient to avoid confusing similarity, as it is a non-significant element that is somewhat connected with the Complainant, which markets its products, among others, in Germany.

Previous WIPO UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See
F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its SWAROVSKI trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

The Panel notes the goods sold on the website at the disputed domain name appear to be the Complainant’s genuine branded goods. This potentially indicates that the Respondent may have rights or legitimate interests in the disputed domain name, provided that the Respondent is able to prove that it is a reseller or distributor of the Complainant’s trademarked products only, and that it meets certain other requirements (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in which the Oki Data case is cited as representative of the majority view of WIPO panelists). The WIPO Overview also notes a minority view in which panels have found that, without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name. See X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. This Panel is more inclined towards the minority view, but in any event finds that in this case, the Respondent does not meet the relevant burden of proof under either approach.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the SWAROVSKI trademark at least since the year 1965. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. ‘Swarovski’ is not a descriptive or generic term; it is a famous and well-known trade mark. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. 2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved to.

The disputed domain name leads Internet users to a website that engages in the marketing of jewelry. Moreover, one of the jewelry categories offered in the website is called “Swarovski Baureihe” (“Swarovski Series” in German). The Respondent’s use of the term “Swarovski” to promote similar or identical goods to the goods being offered by the Complainant clearly evidences that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its well-known SWAROVSKI trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent makes of the disputed domain name to offer quasi-identical goods to the ones being offered by the Complainant constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Panel also notes that the Respondent has failed to reply to the Complainant's cease and desist letters. The Respondent’s default may be taken into account in appropriate circumstances as additional indicia of the Respondent’s bad faith (Alstom v. Stockmarket Domains, WIPO Case No. D2008-1542).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name, the similarity between the disputed domain name and the Complainant’s mark and the Respondent’s default in responding to the cease and desist letters, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 domain name <swarovskischmuckde.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 9, 2010.