WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. liu ji
Case No. D2011-0353
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Liechtenstein represented by Ali LegalBase (Pvt) Limited of Sri Lanka.
Respondent is liu ji of People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-crystal.org> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 23, 2011, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 24, 2011, Todaynic.com, Inc. transmitted by email to the Center confirming that the Respondent is listed as the registrant and providing the contact details but not responding to the other verification requests. On February 24, 2011, the Center transmitted to Todaynic.com, Inc. a further email asking that Todaynic.com, Inc. respond to the additional items included in the verification request. On February 24, 2011, Todaynic.com, Inc. responded to the further email confirming that the UDRP applies to the domain name, confirming that the domain name would be locked, and requesting clarification regarding information needed concerning the registration agreement. On February 28, 2011, the Center sent an email to Todaynic.com, Inc. requesting that Todaynic.com, Inc. confirm the language of the registration agreement. On March 1, 2011, Todaynic.com, Inc. responded to the Center’s email asking whether a copy of the agreement was required. On March 3, 2011, the Center sent an email to Todaynic.com, Inc. confirming that a copy of the agreement was not required and asking Todaynic.com, Inc. to confirm the language of the registration agreement. On March 3, 2011, Todaynic.com, Inc. sent an email to the Center confirming that the language of the registration agreement is Chinese.
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 March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on March 30, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 5, 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.
The Complaint was submitted in the English language. According to the response received from the Registrar, the language of the registration agreement for the disputed domain name is Chinese. On March 3, 2011, the Center transmitted by e-mail to both parties a communication regarding the language of the proceeding requesting that Complainant provide reasoning by March 6, 2011 as to why the proceedings should be conducted in English. This communication also invited Respondent to submit comments in response to any communication transmitted by Complainant regarding the language of the proceedings by March 8, 2011. On March 3, 2011, Complainant responded to the Center’s communication requesting that English be recognized as the language of the administrative proceedings. No communication in objection to this request was submitted by Respondent. On March 9, 2011, the Center issued a communication confirming that the Complaint was accepted in the English language and offered the Respondent the opportunity to reply in the English or Chinese both languages. Since no reply was submitted by Respondent and the present circumstances do not include a prejudice to the Respondent, this decision is written in the English language.
4. Factual Background
Complainant is based in Liechtenstein and is a producer of cut crystal, gemstones, and other decorative items. Complainant has provided details of its European Community and International registrations for its SWAROVSKI mark, its Swan device mark, and its crystallized mark which cover a broad range of goods and services. Complainant has also provided copies of registration certificates corresponding to its trademarks in China including Registration No. 384001 for SWAROVSKI registered on July 30, 1987, Registration No. 385013 for SWAROVSKI (in Chinese) registered on August 30, 1989, Registration No. 361346 for SWAROVSKI (in Chinese) registered on September 20, 1989, and Registration No. 3520173 for SWAROVSKI Design (in English and Chinese) registered on November 7, 2004. Complainant also owns domain names incorporating its SWAROVSKI trademark including <swarovski.com> and <swarovski.net>, which were created on January 11, 1996 and April 16, 1998, respectively.
Respondent liu ji created the <swarovski-crystal.org> domain name on January 23, 2010.
5. Parties’ Contentions
Complainant claims to be the world’s leading producer of cut crystal, genuine gemstones, and created stones and claims to have production facilities in 19 countries, distribution to 43 countries, and a presence in over 120 countries. Complainant estimates that its 2009 worldwide revenue was EUR2.25 billion. Complainant claims to advertise its SWAROVSKI trademark worldwide and throughout China, and has provided a copy of a 2010 article from Fashion Wear Today announcing its use of a Chinese fashion model as an ambassador for its goods in China as evidence of its notoriety in this jurisdiction. Complainant has also provided a copy of a 2009 judgment issued by the Beijing high court confirming that its marks are well-known and have a reputation among consumers in China. In addition to these materials, Complainant has provided copies of an article from “In Style” magazine in the United Kingdom of Great Britain and Northern Ireland and a “Newswire” press release concerning the use of its goods in recent motion pictures as evidence of promotion of the goods sold under the SWAROVSKI mark and the public’s association of the SWAROVSKI mark with these goods.
Complainant has provided an example of a webpage featured on the disputed domain name <swarovski-crystal.org> which appears to be a domain name registry holding page featuring links to external websites. Complainant claims that the use of its SWAROVSKI trademark in the disputed domain name will lead to initial interest confusion and diversion of web traffic from its <swarovski.com> and <swarovski.net> domain names. Additionally, Complainant maintains that the addition of the term “crystal” to its trademark in the disputed domain name does not lessen the confusing similarity between the domain name and Complainant’s SWAROVSKI trademark because the term “crystal” is generic and relates to the goods produced by Complainant. Finally, Complainant affirms that there is no connection or affiliation between Respondent and Complainant, and that Respondent has not received a license or consent to use Complainant’s trademarks in any manner.
Complainant alleges that Respondent has a history of registering infringing domain names relating to registered trademarks and has provided numerous examples of domain name registrations held by Respondent found through reverse WhoIs searches, including other domain names incorporating Complainant’s SWAROVSKI trademark. Furthermore, Complainant maintains that it is inconceivable that Respondent was unaware of Complainant’s rights when registering the <swarovski-crystal.org> domain name given that the SWAROVSKI trademark is famous and well-known.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel has reviewed the Complaint and annexes to the Complaint. The Panel’s findings are set forth below.
A. Identical or Confusingly Similar
The disputed domain name <swarovski-crystal.org> includes Complainant’s SWAROVSKI trademark in its entirety. The question is whether the inclusion of the term “crystal” in the disputed domain name creates a sufficiently different impression from the SWAROVSKI trademark as a whole.
The Panel is not entirely convinced that the term “crystal” is necessarily a generic term in contexts. Because the term “crystal” may have more than one definition, for this Panel its meaning would not be immediately apparent when viewed alone. However, the use of “crystal” with Complainant’s SWAROVSKI trademark as featured in the disputed domain name <swarovski-crystal.org> has a descriptive function given that crystal is provided under Complainant’s SWAROVSKI trademark. Prior cases have held that the addition of a descriptive term to a distinctive trademark such as SWAROVSKI does not create a domain name which is distinguishable from the trademark. See, e.g., Nintendo of America, Inc v. Gray West International, WIPO Case No. D2000-1219 (holding that the addition of “-games” to the domain name <pokemon-games.com> did nothing to reduce confusing similarity with the POKEMON trademark) and Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627 (Holding that domain names including <gilbeys-vodka.com>, <gordonsvodka.com>, and popov-vodka.com> were confusingly similar to the GILBEYS, GORDONS, and POPOV trademarks in which complainant had established rights because the word “vodka” is descriptive of the goods offered by complainant under these marks).
Based on the descriptive characteristics of the term “crystal” when combined with Complainant’s established SWAROVSKI trademark, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices. A review of trademark office records and the annexes to the complaint indicate that Complainant has rights in its SWAROVSKI dating back to 1965 and established rights in the mark in the People’s Republic of China, the jurisdiction identified in Respondent’s contact information, as early as 1987. Additionally, Complainant has provided evidence of its Chinese registration for the SWAROVSKI word mark and other trademarks in China incorporating the Chinese language version of the SWAROVSKI trademark which were registered in 1989 and 2004. Complainant’s <swarovski.com> and <swarovski.net> domain names were created on January 11, 1996 and April 16, 1998, respectively.
The disputed domain name <swarovski-crystal.org> was created on January 23, 2010. Complainant’s trademark rights in SWAROVSKI precede this domain name registration. Additionally, Complainant’s domain names <swarovski.com> and <swarovski.net> were created prior to the disputed domain name.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s SWAROVSKI trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “swarovski”. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent’s contact address is located in the People’s Republic of China. Complainant has provided a copy of a decision issued by a Chinese court which acknowledges that the SWAROVSKI trademark is well-known and recognized by consumers in this jurisdiction. Based upon the distinctiveness of Complainant’s SWAROVSKI trademark and the established notoriety of the trademark, it is difficult to believe that Respondent was unaware of Complainant’s business when registering the disputed domain name <swarovski-crystal.org>. Any doubt in favor of Respondent is further minimized when considering Respondent ‘s use of the term “crystal” in the domain name, a term descriptive of goods provided by Complainant under its well-known SWAROVSKI trademark.
The webpage submitted with the Complaint features a passive registrar holding page with links to third party websites which was at one time featured at <swarovski-crystal.org>. There is no evidence in the record to indicate that Respondent has used the <swarovski-crystal.org> domain name to promote a bona fide intent to offer goods or services. The only evidence of use of the domain name is for the passive registrar holding page submitted with the Complaint. As established in Telstra Corporation Limited v. Nuclear Marshmallows ( WIPO Case No. 2000-0003), the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) if the circumstances of the Respondent’s behavior are indicative of bad faith. In this case, Respondent has registered a domain name composed of a distinctive and well-known trademark and a term descriptive of the goods provided under that trademark. Moreover, there is evidence in the record indicating that Respondent has registered similarly composed domain names. The Panel is of the opinion that Respondent’s pattern of domain name registration behavior is indicative of bad faith regardless of whether the use is active or passive. Additionally, a simple Internet search for “Swarovski crystal” illustrates that the two terms are commonly used in reference to Complainant’s products, indicating that registration and use of the disputed domain name <swarovski-crystal.org> has the potential to divert web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names regardless of the content featured on the associated website.
Having considered the Complaint and related materials, the Panel finds it difficult to imagine a scenario where Respondent’s use of the domain name could coexist with Complainant’s trademarks and domain names without consumer confusion given the well-known status of Complainant’s SWAROVSKI trademark and the common use of Complainant’s trademark with the term “crystal” in reference to Complainant’s goods. Furthermore, Respondent’s pattern of registration of similar domain names contributes to a finding of bad faith. Finally, Respondent’s lack of any legitimate commercial or fair use of the domain name support a finding in Complainant’s favor. This Panel notes that prior panels have found for complainants in similar scenarios involving well-known marks and passive domain names, See, e.g., Pizza Hut, Inc. v. RJ, Inc., WIPO Case No. D2000-0939 (finding bad faith given that respondent had not made, nor taken any preparatory steps to make, any legitimate commercial or fair use of the domain name) and Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243 (finding bad faith, noting that it was difficult to see how the trademark could have been registered and used in good faith given its reputation).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <swarovski-crystal.org> be transferred to the Complainant.
Kimberley Chen Nobles
Dated: April 19, 2011