WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Frank Jackie
Case No. D2012-2265
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Frank Jackie of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewelry-cheap.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2012. On November 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 23, 2012, so that the Complaint refers exclusively to the Respondent.
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 November 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2012.
The Center appointed William P. Knight as the sole panelist in this matter on December 21, 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 Lichtenstein corporation which has established a worldwide reputation in respect of its crystal jewellery and other fashion, home decoration and other products using the trademark SWAROVSKI. The Complainant owns many trademark registrations around the world in respect of these goods and other goods and services, which include SWAROVSKI as a significant component, including in the United States of America, referred to in the Complaint.
The Domain Name was created on May 14, 2012, and was registered with a privacy service by the Respondent at the time the Complaint was filed. The Respondent uses the Domain Name as the address for a website which appears to be devoted to the sale of the Complainant’s products.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the SWAROVSKI trademark in that the dominant component of the Domain Name is the word “swarovski”, the additional words “jewelry-cheap” and the top level domain “.com” not being sufficient to render the Domain Name distinct from the Complainant’s trademark.
The gist of the Complainant’s case is that the Respondent has never been known by the Domain Name and, since the Respondent must have been aware of the Complainant’s trademark rights, in conjunction with the fact that the Respondent is not licensed or authorized by the Complainant to use its trademarks in the Domain Name, both registration and use of the Domain Name must ipso facto be in bad faith
The Complainant argues that the Respondent’s registration and use of the Domain Name must be for the purpose of misleading Internet users as to a connection of some kind between the Complainant and the Respondent and is accordingly use in bad faith. The Complaint is made based on the premise that there is no conceivable use of the Complainant’s SWAROVSKI trademark in a Domain Name by a person other than a licensee of the Complainant that would not be an infringing use.
The Complaint adds that “[the] Respondent’s attempt to attract consumers for commercial gain to the ... Domain Name by creating confusion among consumers by utilizing the SWAROVSKI [trademark] is compounded by the efforts to mislead consumers into believing the site was operated or authorized by the Complainant. The Respondent, without valid consent, utilises the SWAROVSKI [trademark] and official Swarovski advertising material throughout the [Respondent’s website].” However, no specific instances of this use of the Complainant’s advertising material or supporting evidence of any kind is provided for this assertion.
Finally, under the heading “The Complainant’s Attempt to Resolve the Dispute Informally”, the Complainant’s states that there has been no such attempt. This is because, it is twice stated, the Complainant is concerned about “cyberflight”. Indeed, the statements in the Complaint referring to the Respondent’s website offering “purported Swarovski products” would suggest, not the offering of counterfeits but rather that no inquiry has been made one way or the other as to the Respondent or the products offered by the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant; see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in SWAROVSKI. The Complainant has provided evidence of registration of the trademark SWAROVSKI in a number of countries. This is sufficient to establish the Complainant’s rights to make the Complaint under the Policy; see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s SWAROVSKI trademark in that the dominant component of the Domain Name is the word “swarovski” and the words “jewelry-cheap” and the top level domain “.com” in the Domain Name are not distinctive; see paragraph 1.2 of WIPO Overview 2.0.
The first element of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Complainant says that the Respondent has never been known by the Domain Name. Of course, it is difficult for any complainant to know this, or to prove a negative proposition, but reasonable conclusions may be drawn from the information that is available, such as the identity of the Respondent as disclosed by WhoIs searches and from any available website, as well as any correspondence with the Respondent. It is up to the Complainant to make some effort in this regard, to the extent reasonable and practicable.
In this case, the Complaint fails to address the fact that, in the Respondent’s website that is exhibited to the Complaint, the Respondent, or the operator of the website if different, describes itself as “Swarovski Star”. It would have been possible, for example, at little cost, to show Japanese company or business name searches for these names.
The further question of whether the Respondent has a legitimate interest in the Domain Name is not as simple as the Complainant states.
The Panel finds with certainty that the Respondent was fully aware of the Complainant’s reputation and trademark rights at the time of acquiring the Domain Name. There is no doubt, it would appear from an inspection of the Respondent’s website at the time the Complaint was made, that the Respondent’s website was devoted exclusively to promoting the Complainant’s products for sale.
However, the Complainant’s assertions in the Complaint that, in doing so, the Respondent must intentionally be setting out to mislead Internet users as to some connection with the Complainant disregards the fact that it is permissible in certain circumstances under the UDRP to use a trademark in a domain name in good faith for the purpose of referring to the trademark owner’s goods or services, as reflected by the majority of panel decisions under the Policy and stated in paragraph 2.3 of the WIPO Overview 2.0.
The arguments of the Complainant, and the authorities to which it refers, do not assist it, or the Panel, in making a decision in a case such as this. As a result, the Panel must have reference to other decisions. In Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, the learned panel observed:
“Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP . . . Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy [paragraph] 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result.”
Here, for a reseller of a complainant’s products to have such a legitimate interest in registering and using a domain name in respect of the supply of such products, the consensus of prior panel decisions is that the respondent must meet four criteria, as collected from an earlier decision by the UDRP panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:
a. Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
b. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).
c. The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
d. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.
The Complaint addresses none of these issues, other than by saying, under the heading of bad faith registration and use, that “[t]he Respondent has done nothing to identify itself as being independent from the Complainant.” In fact, this is not an obvious conclusion from the Respondent’s website at all. Just because the Respondent is not related to the Complainant or licensed by it, does not establish that it is not a reseller of the Complainant’s products and entitled, in that capacity, to use a domain name incorporating a reference to the Complainant’s products, if fair. The Respondent appears to be identifying itself as a reseller of the Complainant’s products, not the Complainant itself, and the Complaint does not help the Panel further by providing any additional evidence than the Respondent’s website or any specific analysis of that website.
In the “About Us” section of the Respondent’s website, the following is stated:
“Our website is a professional online shopping website for Swarovski items. We offer quality fashional and beautiful products at affordable price for global buyers. And our buyers are from the U.S., Canada, Europe, Australia, Japan and other main courtries [sic] or regions. On our website, you can buy whatever you want that is fashional [sic] and beautiful promptly, and you can pay for the products by Paypal, credit cards (VISA, Master Card ane [sic] etc.). On receipt of your orders and payment, we'll send you the products as soon as possible, delivery by EMS, UPS, DHL etc.
In addition to offering a dedicated and knowledgeable customer service team, we also offer a quick-and-easy online shopping process. We guarantee a safe and secure shopping environment. We have successfully taken out the risk of online shopping-from product ordering, secure payment and delivering.”
In the Panel’s assessment, no-one could conclude these statements, including the bizarre vocabulary, grammar and typographical errors, that the Respondent is anything other than a reseller of the Complainant products.
Although this is not mentioned in the Complaint, there is one striking feature of the Respondent’s website as exhibited in part to the Complaint, but much more obvious from a proper inspection of the Respondent’s website, which leads the Panel to the view that the Respondent should have made much more clear exactly what its relationship is to the Complainant. In this case, it is obvious that the Respondent’s website has copied the images from the Complainant’s website, in particular the striking landing page images, and adopted the appearance and layout of the Complainant’s websites, so as to impersonate the Complainant. In such case, the Respondent should have made clear its independence from the Complainant. Otherwise an Internet user could easily believe that he or she has landed on the Complainant’s website; see, for example, Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260.
The Panel therefore concludes that the Respondent has failed the third criterion of the Oki Data test, that there is no other basis for the Panel to find that the Respondent has rights or legitimate interests in the Domain Name, and therefore finds that the Respondent does not have rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. Notwithstanding the unsupported contentions of the Complaint, none of the specific examples given in paragraph 4(b) of the Policy appear to the Panel to be found here, but previous decisions under the Policy have made clear that the examples given in paragraph 4(b) of the Policy are not exhaustive and other conduct may be taken into account to show registration and/or use in bad faith, as required by the Policy; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This decision, and others like it, has concerned the issue of non-use of a domain name.
What these authorities establish is that a combination of circumstances and behaviors on the part of a respondent may give rise to a finding of registration and use of a domain name in bad faith. In the Nuclear Marshmallows decision referred to above, and cited by the Complainant, the panel found the required bad faith in:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Considering these criteria in this case, the Panel is satisfied that the Complainant’s trademark SWAROVSKI is a well-known mark, and must have been known by the Respondent at the time of acquiring the Domain Name, but notes the apparent intention of the Respondent to use the Domain Name in a potentially legitimate manner, namely in respect of the supply of genuine products of the Complainant.
Again, the absence of proper attention to the relevant issues in the Complaint makes a decision on this matter very difficult.
However, based on the slender observation that the Respondent appears to have mimicked the Complainant’s own website and the absence of a clear identification of the Respondent on the website under the Domain Name, the Panel is prepared to conclude, in the absence of the Respondent’s reply, and on the balance of probabilities, that the Domain Name was registered and is being used in bad faith.
In the light of the findings above, the Panel accordingly determines in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name <swarovskijewelry-cheap.com> be transferred to the Complainant.
William P. Knight
Date: December 27, 2012