WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard / WB Wicky Blown
Case No. D2012-2268
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard of Los Angeles, California, United States of America; and WB Wicky Blown of Liverpool, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <swarovskisalestore.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 disputed domain name. On November 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 22, 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.
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 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on December 24, 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 has produced elaborate and detailed evidence, which remains unchallenged since the Respondent did not file any response or communication to the Complaint. The Panel therefore accepts the following facts as true for purposes of this Policy proceeding.
The Complainant is a producer of jewelry products, such as cut crystal, genuine gemstones and created stones. It manufactures its products in its own facilities located in 18 countries, with distribution facilities serving 42 countries, and its products are sold in more than 120 countries. The Complainant produces, distributes, promotes and sells its jewelry products under several SWAROVSKI trademarks. In 2011 its SWAROVSKI jewelry products were sold in 1,218 of its own boutiques and through 1,000 partners operated boutiques throughout the world which activities generated worldwide revenue of approximately EUR 2.87 billion.
The Complainant has registered five SWAROVSKI trademarks in the United States, the first one was registered in May 1972, in association with products in classes 14 and 21, a second SWAROVSKI trademark registered in December 1992, in association with products, again within classes 14 and 21, and furthermore with products in classes 8, 11, 18 and 25. The next three trademarks were registered in United States in 1993, 2000 and 2010. The SWAROVSKI trademark was first registered at the international level in November 2004 in association with products in 19 different classes (herein after the “SWAROVSKI Trademarks”). Furthermore the Complainant has registered, in the United States, a representation of a Swan in stylized form first in 2007, in association with products in 15 classes, and the same stylized swan logo form in 2012 in association with products in 2 other classes (herein after the “Swan logo Trademark”):
The Complainant invested time, effort and money to advertise and promote its SWAROVSKI Trademarks in the United States and in other countries around the world, as illustrated by such articles as “MULTIFACE(T)S: Style Yourself With Jewelry” in Harper’s Bazaar in October 2012, and “ Crystal That Look Into The Future”, in the New York Times in August 2012.
The Complainant has registered numerous domain names such as <swarovski.com> and <swarovski.net> which direct visitors to its official website of “www.swarovski.com” at which Internet users may access information in respect of the Complainant and its merchandises as well as purchase genuine SWAROVSKI products.
The disputed domain name was registered on June 26, 2012. The website at the disputed domain name, promotes and offers for sale jewelry products in the same lines of products as the Complainant. The home page of the website at the disputed domain name has several references to SWAROVSKI and the following representation “All Swarovski Jewelry are coupled with exquisite detailing which ensures Swarovski Crystal become one of the most popular fashion items on the global market. Here Swarovski Sales Stores will give you the easiest way to buy Swarovski jewelry on line at unbelievable prices.” (Complaint, Annex J ).
The Complainant has not licensed, nor authorized, the Respondent to use or incorporate its SWAROVSKI Trademarks in registering the disputed domain name or to operate its business at the Respondent’s website. According to the Complainant, the Respondent is not a representative, nor an authorized dealer, or distributor of the Complainant’s products.
For fear that upon receiving a cease and desist letter from the Complainant, the Respondent would act as previous respondents, in similar proceedings (see Complaint, Annex A ) to which the Complainant had sent a cease and desist letter and subsequently observed that the recipient not only failed to reply to the said letter, but rapidly transferred the disputed domain name to other party, in the present case, the Complainant did not send a cease and desist letter but rather commenced the present administrative proceedings.
Prior to the present proceedings, the Complainant has initiated many similar UDRP proceedings to obtain the transfer of a domain name incorporating its SWAROVSKI Trademark.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
(i) Relying on its production facilities in 18 countries, distribution of jewelry products to 42 countries, and their presence in more than 120 countries, it is a world leading producer of cut crystal, genuine gemstones and created stones which it markets and sells in association with its SWAROVSKI Trademarks and its Swan logo Trademark, all registered in its name in the United States and at the international level.
(ii) By further reason of its substantial time, effort, investment in advertising and promoting its SWAROVSKI Trademarks and their mention in Harper’s Bazaar and the New York Times, as well as its association with Yoko Ono, and Diageo in China, the SWAROVSKI Trademarks have become famous and well known in the United States. As a result of the Complainant promoting its jewelry products under the SWAROVSKI Trademarks on its official website “www.swarovski.com”, the said promotion and advertising has resulted in EUR 2.87 billion of worldwide revenue in 2011.
(iii) The disputed domain name incorporates the whole of the Complainant’s SWAROVSKI Trademark and the addition of the terms “sale” and “store” as suffixes does not diminish the confusing similarity between the disputed domain name and the SWAROVSKI Trademark as this has been acknowledged by numerous panels in UDRP decisions. See Swarovski Aktiengesellschaft v. hanguo, WIPO Case No. D2012-0749; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022. The coupling of common words with its SWAROVSKI Trademark reinforces the similarity; see Swarovski Aktiengesellschaft v. Xue Yan Yang, WIPO Case No. D2012-1041; and Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139. This confusing similarity between the disputed domain name and the SWAROVSKI Trademark which is entirely incorporated therein has also been acknowledged by UDRP panels. See Swarovkski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028; Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067; Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445; Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, WIPO Case No. D2012-0979.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) Since the Respondent has no connection or affiliation with the Complainant and had not receive from the latter any license or consent, expressed or implied, to use the SWAROVSKI Trademark in the disputed domain name or in any other manner; and further the Respondent was never known by the disputed domain name nor has any legitimate interests in the name “Swarovski”, the Respondent has no rights or legitimate interests in the disputed domain name.
(ii) The Respondent is using the disputed domain name to advertise jewelry products as if they were genuine SWAROVSKI products, and also uses the disputed domain name to misdirect Internet users to the Respondent’s website that bears numerous representations of the SWAROVSKI Trademark and of the Swan logo Trademark. Such use is not a bona fide offering of goods and services or a legitimate interest as found by the panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.
(iii) The Respondent’s use of the SWAROVSKI Trademark in the title bar throughout its website, and its offering of products for sale as if they were SWAROVSKI jewelry, demonstrate that the Respondent selected the disputed domain name in order to create an association with the Complainant. This misappropriation of the disputed domain name is no accident, but rather a deliberate choice to mislead consumers into believing that the Respondent and its website are associated with, or approved by, the Complainant when one considers the famous and well known status of the SWAROVSKI Trademarks. This further supports the conclusion that the Respondent does not have a legitimate interest in the SWAROVSKI Trademark or the disputed domain name.
(iv) The Respondent’s choice of incorporating the well known SWAROVSKI Trademark in the disputed domain name without the Complainant’s authorization cannot be considered as a bona fide offering of services and in this respect, relying on prior UDRP decisions: General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; and The Marigny Corporation v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354.
(c) The disputed domain name was registered and is being used in bad faith:
(i) It is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Trademarks and therefore the disputed domain name was registered in bad faith as held in earlier UDRP decisions involving the Complainant. See Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080; and Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241.
(ii) This bad faith is further confirmed by the fact that the incorporation in the disputed domain name of the SWAROVSKI Trademark is not a coincidence when one considers that the term SWAROVSKI is not a descriptive or generic term, it is rather a famous and well known trademark and such incorporation in a domain name without any legitimate relationship within a trademark is sufficient to demonstrate bad faith. See Swarovski Aktiengesellschaft v. Liu Ji, supra; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, supra.
(iii) Relying on two other UDRP decisions, the Complainant sees in the present case an analogy with the Telstra case in which the Panel held that the wide reputation in the name “Telstra” left no other possible interpretation of the respondent’s registration of the domain name <telstra.org> other than that of bad faith, and that there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052.
(iv) There are in evidence several circumstances pointing to the Respondent’s awareness of the Complainant’s SWAROVSKI Trademarks upon registering the disputed domain name, namely when considering how the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI Trademark. See Swarovski Aktiengesellschaft v. Liu Ji,supra.
(v) A review of the website at the disputed domain name reveals the absence of any element to convey that the Respondent is independent from the Complainant. Rather, throughout the website, the SWAROVSKI Trademarks and the Swan Trademark are incorporated in such a way to cause the viewer to believe that SWAROVSKI products are offered for sale by the Complainant. See Swarovski Aktiengesellschaft v. Liu Ji, supra; and Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364.
(vi) An earlier UDRP decision also considered that using the exact SWAROVSKI Trademarks to lure consumers to the Respondent’s website is a further demonstration of bad faith use under the Policy. See Swarovski Aktiengesellschaft v. lin, supra.
(vii) The use of the disputed domain name is causing harm to the Complainant. This must have been expected since the disputed domain name is “obviously indicative” of the Complainant’s products and services, and that such use would inevitably lead to confusion of some sort and cause disruption to the Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy. See AT&T Corp. v. Woppies, WIPO Case No. D2000-1724.
(viii) Such use of the disputed domain name in attracting traffic that would otherwise not have come to its website must be for the purpose of obtaining commercial gain in contravention of paragraph 4(b)(iv) of the Policy. The Respondent utilises the SWAROVSKI Trademarks and some official SWAROVSKI advertising material throughout its website and offers for sale products that are identical or similar to the Complainant’s products. This type of behaviour is indicative of bad faith, as held by prior UDRP panels. See Nikon Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.
The Complainant explains the deliberate absence of sending any cease and desist letter to the Respondent because of its concern about a possible cyber-flight. The Complainant has experienced in earlier instances this negative behaviour of respondents which, on request, are unwilling to discontinue any use of the SWAROVSKI Trademark. The Complainant states that this action is likely because such registrants are already aware of their wrong doing and often transfer a domain name to another registrant, which would cause other delays in the process and counter the Complainant’s efforts to resolve the dispute rapidly.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(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.
A. Identical or Confusingly Similar
The Complainant has clearly established that it has used the Trademark SWAROVSKI since at least May 1972, when it obtained the first of five registrations in the United States, and has been expanding its use through various classes of products. It also obtained an international registration for the same SWAROVSKI Trademark in 2004. The evidence is impressive in respect of the worldwide activities starting with production, distribution and the number of boutiques in over 100 countries to cumulate in 2011 with worldwide revenue of EUR 2.87 billion. The Panel finds that the Complainant has rights in the SWAROVSKI Trademark and furthermore, by reason of this extensive worldwide use, advertising and promotion, a substantial goodwill is associated to this SWAROVSKY Trademark and, in agreement with earlier UDRP panels that had considered this Trademark, the Panel has no hesitation in stating that it is a famous trademark.
This disputed domain name is comprised of the SWAROVSKI Trademark in its entirety, to which two generic terms “sale” and “store” have been added. The Panel considers that the incorporation of the whole of a trademark in itself, particularly upon considering the exceptional linguistic, non-generic and non-descriptive term that comprise the trademark, is most indicative of confusing similarity. The disputed domain name would be identical to the SWAROVSKI Trademark if it were not for the terms “sale” and “store” and the gTLD suffix. In further agreement with panels in UDRP cases cited by the Complainant, the addition of the terms “sale” and “store” does not diminish the confusing similarity between the disputed domain name and the SWAROVSKI Trademark.
The first criterion under the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized Respondent to make any use of the Complainant’s Trademarks.
As the Complainant has represented, its rights in the SWAROVSKI Trademark have been recognized by many UDRP panels. In this case, as in earlier cases involving the same Complainant, the Panel finds that there is a situation of a clear choice to use a well-known or famous trademark to create an impression of association with the Complainant by the Respondent.
By way of a few examples, the Panel has noted the following from the Complaint, Annex J, which is a print out of the Respondent’s website on November 19, 2012:
1. Page heading representation of the Swan logo followed with the SWAROVSKI trademark
2. Announcement of one third page size: “NEW ARRIVAL SWAROVSKI BRACELETS, 15% OFF”.
3. Featured products all presented with the heading: “Swarovsky” Crystal, followed with the product specified, then ,” Retail Price” and “Our Price”.
4. All price reductions listed are of at least 50% to 70%.
The panel has no hesitation in seeing in this a commercial activity and certainly not a legitimate one in this instance under the circumstances.
It is not within the mandate of a panel in this type of proceeding to comment, approve or disapprove a statement of trademark infringement as the Complainant represents, but this Panel, upon considering the evidence about the activities of the Respondent, concludes that this Respondent, which is not commonly known by the disputed domain name, and has never been known by that name or trademark nor had any license to use the Complainant’s Trademark, has engaged in a predominant way in commercial activities conducted with its website at the disputed domain name. Without going as far as concurring with the trademark infringement qualification submitted by the Complainant, the Panel concludes that the Respondent is engaged in obvious and deliberate commercial activities for profits as will be further emphasized in considering the third criterion under the Policy.
The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
Considering the nature of the SWAROVSKI Trademark, analogous to a coined or fanciful rather than descriptive or generic word, the extensive use of the SWAROVSKI Trademark throughout the world as acknowledged herein, on the one hand, and the content of the website at the address of the disputed domain name as further considered herein, on the other hand, it is unconceivable to this Panel that the Respondent was not aware of the existence of this famous SWAROVSKI Trademark. The way in which all steps from the registration of the disputed domain name, under privacy protection service, and its use to direct Internet users to the Respondent’s website and potentially confusing them to believe that they are visiting a website of the Complainant is evidence to the Panel of a deliberate plan to capitalize on the fame and renown of the SWAROVSKI Trademark and thereby benefit for capital gain.
The Panel finds that the disputed domain name was registered in bad faith.
The Panel has considered in detail the evidence such as Annex H of the Complaint which represents four pages from the website of the Complainant and Annex J, also consisting of four pages from the website of the Respondent, all printed on November 19, 2012. Both versions of the website at the disputed domain name start with a headline incorporating the Swan trademark, followed with the SWAROVSKI Trademark, then the presentation of all items for sale with illustrations, a short description of the items such as bracelets, brooches, pendants and underneath the price. Each item displayed on the website at the disputed domain name preceded by “Swarovski Crystal“ and then a descriptive characteristic followed by the retail price and a lower price such as “NOW: £12.3” which, in each instance, indicates that it is a special sales price and thereby corresponding to the descriptive terms “sale” and “store” embodied in the disputed domain name.
To this Panel, it is not exceptional but rather normal or expected, to think that the viewer would believe that he or she had reached a special reduction price website for the products of the Complainant. It is hard to imagine how a visitor can find or think that this is not a website associated with or approved by the Complainant.
The Panel agrees that the disputed domain name and the related website of the Respondent are “obviously indicative” of the Complainant’s products and such use would “inevitably lead to confusion of some sort” as held by the panel in AT&T Corp. v. Woppies, WIPO Case No. D2000-1724, with which this Panel concurs.
Further confirmation of this bad faith use by the Respondent is found, not only by the use of the WhoisGuard privacy service in itself, but with further misinformation as to the address in Liverpool, in United Kingdom where the DHL delivery system was not able to locate the Respondent. Further an incorrect telephone and fax number were provided, to which the Center could not forward by fax a Notice of the Complaint although these coordinates were provided by the said privacy service. Why engage in such cover up when one is acting in good faith, one may ask.
It is clear to this Panel that this is the result of a well planned and carried scheme to register and use of the disputed domain name in bad faith and the Panel so finds.
The third criterion of the Policy has been met.
The Panel concludes that:
(a) the disputed domain name <swarovskisalestore.com> is confusingly similar to the Complainant’s SWAROVSKI Trademarks; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name <swarovskisalestore.com>; and
(c) the disputed domain name <swarovskisalestore.com> has been registered and is being used in bad faith.
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 <swarovskisalestore.com> be transferred to the Complainant.
J. Nelson Landry
Date: January 7, 2013