WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Venkateshwara Distributor Private Limited./ PrivacyProtect.org

Case No. D2010-2231

1. The Parties

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

The Respondent is Venkateshwara Distributor Private Limited. of Mumbai, Maharashtra, India; PrivacyProtect.org of the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <swaorvski.com> is registered with Tirupati Domains and Hosting Pvt Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2010. On December 21, 2010, the Center transmitted by email to Tirupati Domains and Hosting Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On December 24, 2010, Tirupati Domains and Hosting Pvt Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on December 28, 2010 and December 29, 2010 respectively.

The Center verified that the Complaint together with the amendments 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 January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.

The Center appointed Nicholas Weston as the sole panelist in this matter on January 27, 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

The Complainant operates a business with production facilities in 19 countries, distribution to 43 countries, and a presence in more than 120 countries under the brand SWAROVSKI. Its operations sell products through 1,014 of its own boutiques and 819 partner-operated businesses worldwide with approximate global revenue in 2009 of EUR 2.25 billion. The Complainant is the owner of a number of trademarks consisting of, or including the word SWAROVSKI, in respect of jewelry especially crystal, cut glass items, glass chandeliers, clothing and several registrations that cover India the first of which dates from April 20, 1988 and others in various and many countries including the following:

The Complainant owns numerous domain names incorporating the SWAROVSKI trademark including the domain name <swaorovski.com> registered in 1996 and operates a website relating to its products at that domain name.

The Respondent registered the disputed domain name <swaorvski.com> (the “Disputed Domain Name”) on August 18, 2006.

Until recently, the Respondent used the Disputed Domain Name for click-through or pay-per-click (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <swaorvski.com> was typed in, it redirected traffic to a PPC landing page containing links for Swarovski Crystals, jewelry, beads, and other goods including a link to the Complainant’s own website at “www.swarovski.com”.

5. Parties’ Contentions

A. Complainant

The Complainant cites its registrations of the trademark SWAROVSKI, in India and elsewhere, as prima facie evidence of ownership.

The Complainant submits that each of its trademarks is distinctive and well-known and that its rights in these marks predate the Respondent’s registration of the Disputed Domain Name <swaorvski.com>. It submits that the Disputed Domain Name is confusingly similar to their trademarks, because the Disputed Domain Name Incorporates a word that is confusingly similar to the trademark SWAROVSKI (citing Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872) and that the similarity is not removed by transposition of the letters “o” and the “r”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks and is not commonly known by that name (citing Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that because “it is not uncommon for consumers, such as the Complainant’s customers, to mistype a domain name or use an alternate spelling” (citing Specialty Store Services, Inc. v. Horoshiy, Inc., & LaPorte Holdings, Inc., WIPO Case No. D2005-0015), the Disputed Domain Name was registered in a deliberate attempt to confuse consumers by typo-squatting (citing Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775) and presumably to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website in contravention of paragraph 4(b)(iv) of the Policy. On the issue of use, the Complainant contends that the Respondents use the Disputed Domain Name for directing traffic to a page containing sponsored links or sponsored advertisements and that such use constitutes the kind of opportunistic bad faith considered in cases like Telstra Corporation Limited v. Nuclear Marshmallows, supra and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identification of Respondent

The Panel must be satisfied that any orders made will address the appropriate Respondent or Respondents.

Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant’s original Complaint named as Respondent a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.

The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.>On December 24, 2010, in response to a request, the registrar Tirupati Domains and Hosting Pvt Ltd., sent an email to the Center advising the following Registrant contact information:

Venkateshwara Distributor Private Limited.

([…]@venkateshwaradpl.com)

Caas Serviced Office solutions,

B / 12 Synthofine Estate, Off Arrey Road,

Behind Virwani, Goregaon (E)

Mumbai

Maharashtra,400063

India

“Venkateshwara Distributor Private Limited” was then named as co-Respondent in the Complainant’s amended Complaint. This Panel finds that in light of the record the named Respondent Venkateshwara Distributor Private Limited is a proper Respondent and that PrivacyProtect.org is also a proper Respondent. They will be referred to, jointly and severally, as the Respondent.

Having regard to the Complainant’s submissions which indicate that the location of the principal office of the Registrar and the address of the Registrant are in the same city, it appears that the applicable mutual jurisdiction is Mumbai, India.

Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the joined Respondent by reasonable means. Prima facie evidence of this is the usual Center correspondence.

B. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SWAROVSKI in India, Denmark and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark SWAROVSKI in India pursuant to Indian Registration No’s. 489520, 489521 and 1296119. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark SWAROVSKI.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the SWAROVSKI trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark SWAROVSKI; (b) with the letters “o” and “r” transposed; and (c) the top level domain suffix “.com” all in one continuous domain name.

It is well-established that the top-level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “swaorvski”.

It is also well-established that confusing similarity can result from the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation from a famous mark (see LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201) or a deliberate misspellings of a trademark (see Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. WIPO Case No. D2000-0587).

In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. This Panel finds force in the Complainant’s submission that that the Disputed Domain name is “not one traders would legitimately choose unless seeking to create an impression of an association” with the complainant (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). Having regard to all of the above factors, this Panel finds therefore that the Disputed Domain Name is confusingly similar to the SWAROVSKI trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see: World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the SWAROVSKI mark. Further, the Respondent’s name is not “Swaorvski” and there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The issue is not whether the Respondent has any rights or legitimate interests in the trademark SWAROVSKI. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making the bona fide offering of a product or service called “swaorvski”.

It is well-established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, “Swaorvski” is not a dictionary word and this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, paragraph 2.2).

The Complainant provided evidence, in the form of screen captures, that typing in the Disputed Domain Name diverts traffic to a PPC website for “Swarovski Crystals” and related products and services including rings, jewelry, glass beads and containing further links to unrelated categories of goods and services from “airline tickets” to “hotels” to “real estate training”. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a search engine composed of sponsored links in connection with the Complainant’s mark and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark SWAROVSKI. In Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 the panel found that using the domain name to mislead users by diverting them to a search engine “does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.”

This Panel finds that the Respondent is making a non-legitimate commercial use of the Disputed Domain Name to misleadingly divert consumers and opportunistically using the Complainant’s mark in order to attract Internet users to its website (see Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313).

The Panel finds for the Complainant on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc.v. Rarenames, Webreg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The trademark SWAROVSKI is so well-known in India for glass jewelry that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating these marks without knowing of them.

Further, a gap of ten years between registration of the Complainant’s trademark and Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct registration in India for the trademark SWAROVSKI, Indian Registration No. 489520 from 1988 predating its rights from the Respondent’s by 18 years.

The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The PPC business model in this case, is that the Respondent passively collects click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Swarovski glass jewelry and other products and services in connection with and unrelated to glass jewelry. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra; and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra).

This Panel finds that the Respondent has taken the Complainant’s widely known trademark SWAROVSKI and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a webpage hosted by “Domainsponsor.com” for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Disputed Domain Name <swaorvski.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Dated: February 10, 2011