WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Marzena Marzena
Case No. D2011-0980
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Marzena Marzena of Krakow, Poland.
2. The Domain Name and Registrar
The disputed domain name <swarovskioutlets.com> is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2011. On June 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2011, 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.
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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2011.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on July 22, 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 a corporation organized under the laws of the Principality of Liechtenstein and is one of the world’s leading producer of cut crystal, genuine gemstones and created stones and owns several trademark registrations in Poland and globally, such as International Registration No. 663366 for the mark SWAROVSKI in classes 8,9,11,14,18,21,25 and 26, granted on October 17,1996.
The Respondent registered the disputed domain name <swarovskioutlets.com> on December 21, 2010.
5. Parties’ Contentions
The Complainant claims to be the world’s leading producer of cut crystal, genuine gemstones and created stones and that it uses the SWAROVSKI trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectives and lighting industries worldwide.
The Complainant further claims that it has attempted to resolve this matter informally with the Respondent by requesting that the Respondent voluntarily agree to discontinue the use of the disputed domain name and that the Respondent did not respond to Complainant’s cease and desist letter.
The Complainant’s contentions and requests may be summarized as follows: (i) that the Complainant is the exclusive owner of trademark rights in the SWAROVSKI trademarks; (ii) that the disputed domain name is confusingly similar to the SWAROVSKI trademarks; (iii) that the Respondent has no right or legitimate interest in or with respect to the disputed domain name; and (iv) that the Respondent has registered and used the disputed domain name, which is confusingly similar to the SWAROVSKI trademarks, in bad faith.
Therefore, the Complainant requests that the Panel issue a decision that the registration of the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant owns several trademark registrations for SWAROVSKI.
The disputed domain name <swarovskioutlets.com> is formed by the Complainant’s SWAROVSKI trademark and the generic term “outlets” which is not sufficient to avoid confusion with Complainant’s trademark. The use of the word “outlets” along with the SWAROVSKI trademark creates the impression that the disputed domain name contains information and products from the Complainant. See Coach, Inc. v. Zongxin Trade Co Ltd., WIPO Case No. D2010-1995
Therefore, the Panel considers that the Complainant has met the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of production shifts to the respondent who must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
There is no evidence that the Respondent is commonly known as or identified by the term “swarovskioutlets” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a legitimate business or any other legitimate organization under the disputed domain name.
Moreover, the Complainant has contended that the disputed domain name has been used to advertise without authorization purported Swarovski products, that such use misdirects Internet traffic to the Respondent’s website and creates the impression that it is associated with Complainant. The Respondent has failed to contest the Complainant’s statements.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has proved to the satisfaction of the Panel that the trademark SWAROVSKI is well-known in the international market and that there is no doubt that the reason why the Respondent registered and uses the disputed domain name is to attract Internet users to its website to benefit from the prestige of the Complainant’s well-known trademark by creating a false association with the Complainant for commercial gain.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark SWAROVSKI before registering the disputed domain name <swarovskioutlets.com> on December 21, 2010 which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <swarovskioutlets.com> be transferred to the Complainant.
Miguel B. O'Farrell
Dated: August 5, 2011