WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. liruilian

Case No. D2013-0414

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is liruilian of Mianyang, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <swarovskioutletonline.net> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2013, 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 March 4, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 4, 2013, the Complainant requested that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 10, 2013. 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, Swarovski Aktiengesellschaft, is a producer of cut crystals, genuine gemstones and created stones with productions facilities in 18 countries and a presence in over 120 countries. In 2011, the Complainant’s products were sold in 1218 of its own boutiques and through 1,000 partner-operated boutiques worldwide at revenue of EUR 2.87 billion.

The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – SWAROVSKI, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; Community trademark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community trademark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005; Chinese Trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987, and many more.

Through extensive use around the world, the SWAROVSKI trademark has generated vast good will and has become well-known in connection with crystals and jewelry.

The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names which contain the name “Swarovski”. For example: <swarovski.com> and <swarovski.net>.

The disputed domain name <swarovskioutletonline.net> was registered on August 21, 2012.

The disputed domain name resolved to a website offering jewelry for sale and included tabs that contain the trademarks of the Complainant and the name “Swarovski”.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI trademark and name. The Complainant further contends that the addition terms “outlet” and “online” does avoid a finding of confusing similarity.

The Complainant further argues that the SWAROVSKI trademark has generated vast good will through the Complainant’s extensive use around the world and specifically in China and has become a well-known trademark.

The Complainant further argues that the public associates the mark SWAROVSKI exclusively with high quality items by the Complainant.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its SWAROVSKI trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official Swarovski website.

The Complainant further argues that the disputed domain name used to resolve to an online market place, purportedly offering products of the Complainant. The Complainant contends that the Respondent used the web site under the disputed domain name to confuse consumers to believe that it is the official website of the Complainant or that it is affiliated with the Complainant or that the Complainant authorized it to sell the Complainant’s products.

The Complainant further argues that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s famous and well know trademark when registering the disputed domain name.

The Complainant further argues that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent had incorporated the Complainant’s trademarks in the website to which the disputed domain name resolved.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – SWAROVSKI, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; Community trademark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community trademark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005; Chinese Trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987, and many more.

Also, the Complainant’s rights in the SWAROVSKI mark have been established in numerous UDRP decisions (see e.g. Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353, and Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139).

The disputed domain name <swarovskioutletonline.net> differs from the registered SWAROVSKI trademark by the additional words “outlet” and “online” and the additional gTLD “.net”.

The disputed domain name integrates the Complainant’s SWAROVSKI trademark in its entirety, as a dominant element.

The additional words “outlet” and “online” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are common terms in the Complainant’s field of business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “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” (Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028).

Indeed, “The disputed domain name entirely incorporates the SWAROVSKI trademark, adding the suffix ‘outletsale’. The addition of such generic suffix is not enough to avoid similarity, nor does it add anything to avoid confusion” (Swarovski Aktiengesellschaft v. flushy, flushy kitty, WIPO Case No. D2012-0898).

Also, “the addition of a generic term (such as here the words ‘onlineoutlets’ which simply suggest an online sales operation of some kind) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark” (Swarovski Aktiengesellschaft v. Ming Robot, WIPO Case No. D2012-1200).

The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.net” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the SWAROVSKI trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SWAROVSKI trademark since the year 1965. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval:

“The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. ‘Swarovski’ is not a descriptive or generic term; it is a famous and well-known trade mark. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. 2009-0947).

See also: “is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage” (Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent’s use of a highly distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:

“By registering and using the Domain Name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent” (See Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’“ (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Complainant submitted evidence proving that the Respondent was using the disputed domain name to promote goods that are on their face identical to the goods being offered by the Complainant.

Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.

Further, the Panel finds that the Respondent has incorporated the SWAROVSKI marks on its website in order to attract consumers for commercial gain by purporting to sell Swarovski’s products: “Respondent’s bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as ‘necklaces’, ‘bracelets’ and ‘earrings’ using an identical name to the Complainant’s trademark. That past practice confirms not only the Respondent’s awareness that the advertised products were ‘Swarovski’ products, but also the Respondent’s actual use of the Complainant’s name in bad faith”(See Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170).

The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <swarovskioutletonline.net> be transferred to the Complainant

Jonathan Agmon
Sole Panelist
Date: April 24, 2013