WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Susan Kelly
Case No. D2013-0709
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Susan Kelly of Wuhan, Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewelryoutlet.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2013, 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 April 19, 2013, 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 April 19, 2013.
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 April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2013.
The Center appointed Edoardo Fano as the sole panelist in this matter on May 27, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Swarovski AG, the world’s leading producer of cut crystal, genuine gemstones and created stones with presence in more than 120 countries and owning many trademark registrations for SWAROVSKI all over the world. Among the valid trademark registrations there are:
- International Trademark Registration No. 303.389 SWAROVSKI, registered in 1965;
- United States Trademark Registration No. 934915 SWAROVSKI, registered in 1972;
- Community Trademark Registration No. 007462922 SWAROVSKI, registered in 2009.
The Complainant provided evidence in support of the above.
The disputed domain name <swarovskijewelryoutlet.com> was registered on June 29, 2012. The disputed domain name was redirected to an online shop at the domain name <swanjewelry-outlet.com> with the offer of purported Swarovski products, and is now leading to a default webpage.
5. Parties’ Contentions
The Complainant states that the disputed domain name <swarovskijewelryoutlet.com> is confusingly similar to its trademark SWAROVSKI, being a combination of the generic words “jewelry” and “outlet” with the Complainant’s trademark SWAROVSKI.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to reserve the disputed domain name or to register and/or use its trademark within the disputed domain name and it is not commonly known by the disputed domain name. The use of the disputed domain name to advertise purported Swarovski products and to misdirect Internet traffic to the corresponding website is contrary to a bona fide offering of goods or services.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further asserts that its trademark SWAROVSKI enjoys worldwide fame and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights, especially considering the offer to sell a variety of the Complainant’s purported products in the redirected website.
Moreover, the Respondent was using the disputed domain name to redirect the Internet users to a website in which are sold purported Complainant's products, without doing anything to identify itself as being independent from the Complainant and therefore attempting to attract consumers for commercial gain by creating “initial interest confusion”.
The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 Panel finds that the Complainant is the owner of the trademark SWAROVSKI both by registration and acquired reputation and that the disputed domain name <swarovskijewelryoutlet.com> is confusingly similar to the trademark SWAROVSKI.
Regarding the addition of the generic words “jewelry” and “outlet”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the words “jewelry” and “outlet” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a top-level domain suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Should the products sold in the website to which the disputed domain name was redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the current state of Panel decisions in relation to the disputed issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the Panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the present case, the Panel is of the opinion that while someone may be legally entitled to offer for sale/resale a trademark owner’s genuine trademarked products, that does not necessarily extend to the right to do so through a domain name that is virtually identical to that trademark owner’s trademark. Moreover, the Oki Data conditions have generally been applied by Panels in cases involving authorised resale or distributorship arrangements.
When there is no authorisation, the combination of an identical/confusingly similar trademark in a domain name together with the likelihood of initial interest confusion alone ought to be sufficient to demonstrate that Respondent has no legitimate interest. Furthermore, the Respondent was not accurately and prominently disclosing its relationship with the Complainant.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy, has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark SWAROVSKI in the field of jewelry is clearly established and the Panel finds that the Respondent clearly knew that the disputed domain name <swarovskijewelryoutlet.com> was confusingly similar to the Complainant’s trademark. This is also confirmed by the fact that the content of the website to which the disputed domain name was redirecting the Internet users consisted of advertising for the sale of various purported Complainant’s products.
In fact, the disputed domain name was also used in bad faith since in the redirected website, the Respondent was offering various purported Complainant’s products knowingly taking advantage from the initial interest confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all 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 <swarovskijewelryoutlet.com> be transferred to the Complainant.
Date: June 10, 2013