WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. cao zhiming
Case No. D2012-1028
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is cao zhiming, Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <cheapswarovskionline.com> (the “Domain Name”) is registered with Xin Net Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2012, 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 May 16, 2012, the Center transmitted an email to the Parties in both the Chinese and English languages regarding the language of the proceeding. On May 17, 2012, the Complainant confirmed its request that English be the language of the proceeding. On May 21, 2012, the Respondent sent an email reply that the website under the Domain Name (the “Website”) is selling “55ya” branded jewellery made by original Swarovski elements, which are supplied by an authorized supplier.
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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on June 14, 2012. 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 leading producer of cut crystal, genuine gemstones and created stones, with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. The Complainant uses the SWAROVSKI mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.
The Complainant invests substantial time, effort and financial resources in advertising and promoting the SWAROVSKI mark throughout China and worldwide. As a result, the Complainant has developed an enormous amount of goodwill in the SWAROVSKI mark and the public has come to associate the SWAROVSKI mark exclusively with high quality items marketed by the Complainant.
The Complainant has registered a number of SWAROVSKI marks worldwide, inter alia, Chinese Trademark Registration No. 384001 and No. 3520173 in class 14.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website to enable Internet users to access information regarding the Complainant and its merchandise and to purchase genuine Swarovski products.
The Domain Name <cheapswarovskionline.com> was registered on August 23, 2011 and the Respondent has used the Domain Name to direct Internet users to an online shop selling products which are claimed to be made by “original Swarovski elements”.
5. Language of the Proceedings
Under paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant initially filed its Complaint in English and later requested for English to be the language of the proceedings for the following reasons:
(a) the Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language;
(b) the Complainant is an international brand with registered marks in multiple jurisdictions, including China but whose international business primarily operates in English;
(c) conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having to translate the Complaint and annexes into Chinese; and
(d) the Website is in English which clearly demonstrates that the Respondent has proficiency and is able to communicate in English.
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notes that the Complainant is a company registered in Liechtenstein and operates its business in multiple jurisdictions and whose international business primarily operates in English.
The Panel also notes that the Website displays all its contents in English, and there is no version of the Website with contents in Chinese. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so. Moreover, the Respondent sent an email in the English language to the Center on May 21, 2012.
The Panel has also taken into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as its annexes would be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as its annexes into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its SWAROVSKI marks. The Respondent has used the SWAROVSKI marks in the Domain Name so as to cause confusion among Internet users between the Website and the marks and approved websites of the Complainant. The addition of generic words “cheap” and “online” to the SWAROVSKI marks in the Domain Name is not enough of a differentiation from the SWAROVSKI marks to avoid a finding of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any express or implied license or consent from the Complainant to use the SWAROVSKI marks in a domain name or in any other manner. Moreover, the Respondent has never been known by the Domain Name and has no legitimate interests in the SWAROVSKI marks or the name “swarovski”. The Respondent has used the SWAROVSKI marks in the Website and offers purported “Swarovski elements” products for sale which supports the contention that the Respondent chose the Domain Name only because he was seeking to create an association with the Complainant.
The Complainant finally contends that the Respondent has registered and is using the Domain Name in bad faith. The SWAROVSKI marks are well-known in China and worldwide and it is inconceivable that the Respondent was unaware of the SWAROVSKI marks at the time of registering the Domain Name. Registration of a Domain Name which includes the SWAROVSKI mark by the Respondent who has no legitimate relationship with the marks is itself sufficient to demonstrate bad faith. In addition, the Respondent has done nothing to identify itself as being independent from the Complainant. The registration and use of the Domain Name by the Respondent creates “initial interest confusion”, which attracts Internet users to the Website because of its purported affiliation with the Complainant. Moreover, the provision of inaccurate WhoIs information shows evidence of bad faith registration and use. Furthermore, it is unlikely that the Respondent can prove good faith use of the Domain Name because it is difficult to conceive of a use that would not infringe the SWAROVSKI marks. Finally, the Respondent is attempting to attract consumers for commercial gain to the Domain Name by utilizing the SWAROVSKI marks.
The Respondent did not submit formal response. On May 21, 2012, the Respondent, upon receiving the notification of the language of the proceeding from the Center, sent an email in English stating that the Website is selling “55ya” branded jewellery made by “original SWAROVSKI elements”, which are supplied by an “authorized supplier” named “新光贸易有限公司” (Xinguang Trading Co., Ltd)”. The Respondent also provided a certification issued by Swarovski (Guangzhou) Trading Co., Ltd, purporting to certify that Xinguang Trading Co., Ltd is qualified as a recommended authorized wholesaler of Swarovski elements. The certification was in any event itself stated to be valid from November 2010 to December 2011.
7. Discussion and Findings
To succeed in a complaint, a complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has introduced evidence demonstrating its established rights in the SWAROVSKI marks. The Complainant’s SWAROVSKI marks are protected as trademarks and the Complainant holds registrations for the SWAROVSKI marks worldwide, inter alia, Chinese Trademark Registration No. 384001 registered as early as in 1987 and Registration No. 3520173 registered in 2004, covering goods in class 14. The registration of the SWAROVSKI trademarks predates the creation date of the Domain Name.
The Domain Name <cheapswarovskionline.com> consists of three words “cheap”, “swarovski” and “online”. The word “swarovski”, identical to the marks of the Complainant, has no special meaning in English and therefore is not a generic or descriptive word while here the words “cheap” and “online” are generic.
The Panel finds, by analyzing the constitution of the Domain Name, that the addition of the generic words “cheap” and “online” is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s SWAROVSKI mark in the Domain Name. See Wal-Mart Stores, Inc v. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”).
The Panel holds that the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s marks. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s SWAROVSKI trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent is not connected or affiliated with the Complainant and that the Respondent has not received any license or consent to use the trademarks of the Complainant in a domain name or in any other manner as contended by the Complainant.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel notes that the Respondent did not submit any formal response, however sent an email stating that the Website is selling “55ya” branded jewellery made by “original Swarovski elements”, which are supplied by an authorized supplier named Xinguang Trading Co., Ltd. The Panel also notes that the Respondent provided a Certification issued by Swarovski (Guangzhou) Trading Co., Ltd, purporting to certify that Xinguang Trading Co., Ltd is qualified as a recommended authorized wholesaler of SWAROVSKI elements.
The Panel however notes that the Certification has already been expired since December 31, 2011. Additionally, the Respondent failed to indicate the identity of Swarovski (Guangzhou) Trading Co., Ltd and its connection with the Complainant as well as to provide the authorization certification between the Respondent and Xinguang Trading Co., Ltd.
In view of the above reasons, the Panel holds that the Respondent failed to present sufficient evidence to prove its rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
Besides, the Panel holds that the Respondent’s use of the Domain Name to direct Internet users to the Website selling products which are claimed to be made by original Swarovski elements creates a likelihood of confusion with the Complainant’s SWAROVSKI marks as to the source, sponsorship, affiliation, or endorsement of the Website, which precludes a bona fide offering of goods and services.
For all of the above reasons, and in considering all of evidence in the case file, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 domain name; or
(ii) circumstances indicating that the respondent registered the 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the 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.
Upon reviewing the case, the Panel finds there is no evidence that the Respondent has used or intends to use the Domain Name for purposes of bona fide offering of goods or services. To be bona fide, one of the minimum requirements is for the respondent to accurately disclose its relationship with the trademark holder, while in the current case, the Respondent uses terms like “SWAROVSKI bangles”, “SWAROVSKI bracelets”, “SWAROVSKI elements”, “SWAROVSKI elements crystal” etc. on the Website. Although there is a statement underneath the description of each product on the Website that there is no SWAROVSKI logo tags and box and the jewellery is “55ya” brand, the Panel notes that the statements are in small font compared to other descriptions of the products which may be omitted by consumers directed to the Website, therefore the statements themselves are insufficient to demonstrate that the Website is independent from the Complainant. In this age of the Internet, the Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to the Website that incorporates the Complainant’s marks and may most likely be confused into believing that the Website is an official site of the Complainant and/or the Respondent is affiliated with or authorized to sell products of the Complainant, which is contrary to fact. The Panel is therefore satisfied that bad faith is established by the Respondent’s use of the Domain Name to trade on the Complainant's reputation so as to internationally attempt to attract, for commercial gain, Internet users to the Website, by creating a likelihood or confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Website or of the products being offered for sale there.
The Panel also holds that, even if the statement underneath the description of each product on the Website is not omitted by consumers directed to the Website, initial interest confusion may well apply in this case. Numerous UDRP panels have found the fact that a consumer realizes once they have arrived at a website under a domain name that it is not the trademark holder’s domain name does not detract from the fact that the respondent’s use of the trademark in the domain name is what initially attracted the user to the domain name in the first place. See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645.
Given the reputation of the Complainant and its SWAROVSKI marks, the Panel views that it is inconceivable that the Respondent was unaware of the SWAROVSKI marks when registering the Domain Name. Besides, the Respondent’s offer for sale of products which are claimed to be made by original SWAROVSKI elements on the Website further indicates that it knew of both the Complainant and its SWAROVSKI marks. Incorporation of the SWAROVSKI marks in the Domain Name without any reasonable justification is sufficient evidence of bad faith by the Respondent. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy.
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 <cheapswarovskionline.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: July 6, 2012