WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou
Case No. D2010-2022
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is jianxin ou aka jianxinou of Putian, Fujian, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-crystal-jewelry.net> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2010, 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 November 29, 2010, the Center issued a notice to the parties in both Chinese and English languages regarding the language of proceedings. On December 1, 2010, the Complainant filed an amendment to the Complaint and confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding 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 December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 12, 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 is the owner of numerous trademarks consisting of or comprising the word Swarovski. These registrations include Chinese Trademark Registration No. 384001 for the word mark SWAROVSKI which was registered on July 30, 1987 and renewed upto date in respect of imitation jewelry under Class 14 and Chinese Trademark Registration No. 3520173 comprising the word Swarovski, the swan logo device and the Chinese transliteration of the English mark which was registered on November 7, 2004 in respect of “clocks, watches, watch glasses, watch cases, natural gemstones, synthetic gemstones, genuine jewellery, imitation jewellery, decorative jewellery ornaments, pendants for watch chains” under Class 14.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid SWAROVSKI mark occurred well over 20 years before the registration of the disputed domain name <swarovski-crystal-jewelry.net> on August 14, 2010.
The Complainant has also registered the domain name <swarovski.com> on January 11, 1996 and <swarovski.net> on April 16, 1998 (Annex I to the Complaint).
Other than the particulars shown on the printout of the data base searches conducted by the Complainant of the WhoIs database (as provided in Annex A to the Complaint), the website to which the disputed domain name resolves as provided in Annex J to the Complaint, the WhoIs database search results updated to December 6, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:-
The Complainant has rights in the trademark SWAROVSKI which is registered in China and globally. It claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution to 43 countries and presence in over 120 countries. Products were sold in its own 1,014 boutiques and through 819 partner-operated boutiques worldwide with revenue of EUR 2.25 billion in 2009. The Complainant has used the mark SWAROVSKI in connection with crystal jewelry stones and crystalline semi-finished goods for fashion goods, jewelry, home accessories, collectibles and lighting. The mark SWAROVSKI has become well-known in China due to its devotion of substantial time, effort and money to advertise and promote the mark.
The disputed domain name has incorporated the SWAROVSKI mark in its entirety. The addition of the words “crystal” and “jewelry” does not avoid confusion but aggravates the likelihood of confusion especially when Swarovski manufactures crystal and jewelry. Contents of the website to which the disputed domain name resolves create the impression that the Respondent is authorized by or affiliated with the Complainant but in fact it is not. The disputed domain name is identical or confusingly similar to the Complainant’s SWAROVSKI mark.
The Respondent has no legitimate interests or rights in the disputed domain name. It has never been known as such. Use of the website to which the disputed domain name resolves to advertise purported Swarovski products and misdirect Internet traffic to it does not constitute bona fide offering of goods even if they were genuine Swarovski goods. The Complainant has not licensed the Respondent to use the Swarovski mark in a domain name or in any other manner.
As the Complainant’s SWAROVSKI mark is well known and not a generic term, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI mark at the time of registration. Further, the offering of goods of the same types as those being sold by the Complainant supports the contention that the Respondent was aware of Complainant’s mark and products at the time of registration and use.
The purpose of the Respondent’s use of the disputed domain name is to obtain commercial gain by attracting Internet users to the site to which the disputed name resolves where purported Swarovski products are offered for sale. The Complainant’s official advertising materials and trademarks were used throughout the website without the consent or license of the Complainant. Such use of the disputed domain name must be expected to cause harm to the Complainant and disruption to its business.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex A to the Complaint and the WhoIs search results updated to December 6, 2010 as provided by the Center.
Such contact details also concur with those provided by the Registrar to the Center on November 25, 2010.
On December 6, 2010, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier, facsimile and e-mail with copies to the Registrar.
Although there were included in the case bundle supplied by the Center (a) fax transmission reports showing that the fax communications were unsuccessful and also (b) a UPS track shipment report indicating that the delivery by courier was unsuccessful, all these are due to no fault or omission on the part of the Center.
It is noted that there was no undeliverable email notice shown in relation to the Center’s Notifications to Respondent by email to the email address as provided for the domain name registrant, technical contact, administrative contact and billing contact in respect of the disputed domain name.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of November 29, 2010 to both parties on the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on December 1, 2010.
Paragraph 11(a) of the Rules provides:
“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.
In support of its request, the Complainant has inter alia argued that:
(a) The Complainant is not familiar with the Chinese language. It operates in multiple jurisdictions primarily in English. The Complainant will suffer disadvantages in costs and inconvenience if Chinese is used.
(b) The content of the website to which the disputed domain name resolves is in English and with no Chinese version. It demonstrates that the Respondent has sufficient capacity to communicate and present its case in English.
The Panel has taken into consideration the above submissions, the fact that the disputed domain name consists of English alphabets and the Respondent has provided contact details to the Registrar in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default as aforesaid, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark SWAROVSKI by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional hyphen followed by the word “crystal” which is then followed by another hyphen and the word “jewelry” and the generic top-level domain “.net”.
The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The English words “crystal” and “jewelry” are indistinctive. The fact that crystal and jewelry are two important types of goods being manufactured and sold by the Complainant and marketed under their mark SWAROVSKI as shown in Annexes G and H to the Complaint referred to in point 3 below will make actual confusion among consumers even more likely.
It is well established practice to disregard the top-level part of the domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing said indistinctive elements and the generic top-level domain, only the word “Swarovski” is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark SWAROVSKI prior to the Respondent’s registration of the disputed domain name <swarovski-crystal-jewelry.net> on August 14, 2010. The Complainant has confirmed that the Respondent is not a licensee or authorized seller of the Complaniant. The Respondent was not authorized to register or use the disputed domain name.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “Swarovski” in its domain name.
While the website to which the disputed domain name resolves apparently used the disputed domain name as the name of a company as referred to in point 3 below, there is no evidence before the Panel to suggest that the Respondent is commonly known as <swarovski-crystal-jewelry.net>. In fact, the Panel notes that the names of the Registrant and the Registrant Organization do not correspond in any way with the disputed domain name.
There is also no evidence available to demonstrate any bona fide offering of goods or services, legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves are genuine Swarovski goods, it does not provide in this Panel’s view the owner of such website the right to use the Complainant’s trademark and materials in that website. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
The printout of the disputed website as shown in Annex J to the Complaint contained the following information or materials:
(a) the descriptive line “Swarovski Jewellery (Jewelry) Wholesale, swarovski Necklace, Earrings, Ring, Bracelet” at the top left corner of the web page;
(b) the swan logo device of the Complainant as well as its word mark SWAROVSKI immediately above the disputed domain name, also at the top left corner of the web page;
(c) a whole range of product names under the heading entitled “Categories” and column entitled “Best Sellers” are preceded by the word Swarovski;
(d) under the paragraph entitled “Swarovski Jewelry Sets” it was claimed that “Our Austrian Crystal Jewelry Collection features beautiful crystal necklaces, crystal bracelets and crystal earrings… The Swarovski name ensures that our Austrian crystal jewelry sets and singles have superior quality than other fashion holiday and bridal jewelry sets… so you can be assured you are receiving the best quality Austrian crystal on the market. Plus, because we buy direct we can offer you these glamorous Austrian crystal jewelry sets for unbelievable prices!”;
(e) in the section entitled “conditions of use”, the Respondent claimed that “all the information posted on swarovski-crystal-jewelry.net such as statement, diagram, sign, button icon, image, audio document segments, digital download, data edit and software belong to the property of swarovski-crystal-jewelry.net or its affiliated companies”;
In view of the Complainant’s unequivocal assertion that the Respondent is not its licensee or an authorized agent, the claim for being a SWAROVSKI wholesaler shown in the top left corner of the disputed website would be a false claim. Similarly, the implied claim of legitimately using the Complainant’s swan logo and SWAROVSKI trademark on the disputed website by putting them prominently immediately above the disputed domain name is also a false claim. Since the swan logo and the trademark SWAROVSKI belong to the Complainant, the claim that these belong to the property of the disputed domain name <swarovski-crystal-jewelry.net> must also be false.
The choice of the word Swarovski with the use of the descriptive words “crystal” and “jewellery” which are exactly the products which the Complainant is famous for as well as the claim of Austrian origin of the goods, clearly demonstrate the Respondent’s knowledge of the Complainant and its trademark at the time of registration of the disputed domain name.
The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the site to which the disputed domain name resolves, to use it primary for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator of the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affliction, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <swarovski-crystal-jewelry.net> be transferred to the Complainant.
C. K. Kwong
Dated: January 26, 2011