WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. bingbing chen
Case No. D2011-1524
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is bingbing chen of Guangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskibijoux.net> (the “Disputed Domain Name”) is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Disputed Domain Name. On September 13, 2010, Melbourne IT Ltd. 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 September 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on October 18, 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. The Complainant has registered and uses several trademarks comprised of the “Swarovski” name (hereinafter the SWAROVSKI Mark) in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. The Complainant is one of the world’s leading producers of cut crystal, genuine gemstones and created stones, with production facilities in 19 countries, distribution to 43 countries, and a presence in more than 120 countries. In 2009, The Complainant’s products were sold in 1014 of its own boutiques and through 819 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2009 was EUR 2.25 billion.
The Complainant has registered the SWAROVSKI Mark globally particularly in France and China, including:
1. Swarovski International Reg. No. 303389A registered on October 9, 1965;
2. Swarovski Community Trade Mark Reg. No. 120576 registered on October 15, 1998;
3. 施华洛世奇 China 385013 registered on August 30, 1989;
4. 施华洛世奇 China 361346 registered on September 20, 1989.
The Complainant has also registered a great number of domain names, including <swarovski.com> and
<swarovski.net>, which point to Swarovski’s official website, located at “www.swarovski.com”.
The Disputed Domain Name was registered on September 6, 2010. At the time of filing of the Complaint, the website associated with it redirects to the website “www.swarovskibijoux.info” which is used to sell jewelry products under the Swarovski brand (in the French language).
5. Parties’ Contentions
The Complainant claims that the SWAROVSKI Mark have become famous and well-known in China and world-wide, that the Disputed Domain Name is confusingly similar to the SWAROVSKI Mark and that the Respondent has used the SWAROVSKI Mark in the Disputed Domain Name to cause confusion among Internet users between the Respondent’s website and the Complainant’s website, whereby the addition of the term “bijoux”, which means jewelry in French, as a suffix to the SWAROVSKI Mark does not lessen the confusing similarity between the Disputed Domain Name and the Complainant’s Mark, but is obviously intended to create an association with the Complainant and its business.
The Respondent has no rights or legitimate interests in the Disputed Domain Name given that it has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the SWAROVSKI Mark in the Disputed Domain Name or in any other manner. The Respondent has never been known by the Disputed Domain Name and has no legitimate interest in the SWAROVSKI Mark or the name Swarovski. The Disputed Domain Name is being used to advertise purported Swarovski products and misdirects Internet traffic to the Respondent’s website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
The Disputed Domain Name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Mark at the time of registration. The selection of the Disputed Domain Name, which wholly incorporates the SWAROVSKI Mark, cannot be a coincidence, given that SWAROVSKI is not a descriptive or generic term but is a famous trademark. Furthermore, the coupling of the SWAROVSKI Mark with a descriptive word like “bijoux” only strengthens the association with the Complainant. The SWAROVSKI Mark has further been used in the Disputed Domain Name to create the impression that the Respondent’s website is associated with the Complainant. Furthermore, the Disputed Domain Name points to a third party website where purported Swarovski products are offered for sale, which supports the contention that the Disputed Domain Name was chosen only for the purpose of creating an association with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the SWAROVSKI Mark in various jurisdictions and particularly in China where the Respondent is based.
A comparison between the Disputed Domain Name and the trademarks owned by the Complainant shows that the Disputed Domain Name is clearly confusingly similar to them to the extent that it reproduces the SWAROVSKI Mark. In this respect, the addition of the descriptive term “bijoux” in the final part of the Disputed Domain Name does not affect this finding of confusing similarity. Quite to the contrary, the addition of this term rather increases the risk of confusion with the SWAROVSKI Mark of the Complainant, given that it directly refers to the products of the Complainant (i.e. jewelry products).
As a result, based on the rights of the Complainant in the SWAROVSKI Mark and on the confusing similarity between these trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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 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.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which fully integrates the SWAROVSKI Mark owned by the Complainant in a way which can only be explained by reference to the Complainant’s products and business activities. The addition of the term “bijoux” further reinforces the impression of an intended reference to the Complainant’s products.
The Complainant has also stated without being contradicted that the Respondent has no rights in the Disputed Domain Name, that he is not authorized or licensed to use the SWAROVSKI Mark of the Complainant and that the Respondent has not been commonly known by the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name, which has not been done given Respondent’s absence of participation in these proceedings.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding 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.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the SWAROVSKI Mark is distinctively identifying the Complainant and the Complainant’s products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to these trademarks owned by the Complainant. A finding of bad faith registration is further evidenced by the use of the word “bijoux” in the Disputed Domain Name which directly refers to the Complainant’s products. In addition, the Respondent’s use of the Disputed Domain Name in selling goods under the SWAROVKSI Mark without authorization from the Complainant is a sign of the Respondent’s bad faith use of the Disputed Domain Name. The Panel also notes that the Respondent was a party to a previous proceeding evidencing comparable bad faith circumstances. See Swarovski Aktiengesellschaft v. Bingbing Chen, WIPO Case No. D2010-1736.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, thus the condition of paragraph 4(a) (iii) of the Policy is met.
For 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 <swarovskibijoux.net> be transferred to the Complainant.
Jacques de Werra
Dated: November 1, 2011