WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. yuefang wu
Case No. D2013-0741
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is yuefang wu of YunNan, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskischmuckoutlet.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 24, 2013. On April 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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.
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 April 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on May 28, 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 is the well-known manufacturer of crystal products including a substantial range of jewellery. It operates in more than 120 countries worldwide and in 2011 had global revenue of EUR 2.87 billion. The Complainant owns registered trade marks in numerous countries for its trade mark SWAROVSKI including a registered word mark 384001 in China dating from 1987 and Community Trade Mark 007462922 for the word mark SWAROVSKI which dates from 2009. The Complainant operates its official website for online sales at the domain name “www.swarovski.com”.
The Respondent registered the disputed domain name on August 10, 2012 from which it operates an online shop with content in the English and German languages.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights in the SWAROVSKI word mark as set out above and that as a consequence of the very substantial global distribution of its products and of considerable advertising it is a well-known mark. It further says that the disputed domain name is confusingly similar to its trade mark on the basis that its SWAROVSKI mark is wholly contained within the disputed domain name, the word “schmuck” means jewellery in German which is a generic and non-distinctive term and the term “outlet” is equally generic and non-distinctive in English.
The Complainant says that it has neither authorised nor given the Respondent any licence or consent to use its SWAROVSKI mark in the disputed domain name. It submits that the Respondent is not known by the SWAROVSKI mark or by the disputed domain name and has no rights or legitimate interests in it. The Complainant says that the Respondent’s use of the disputed domain name is not legitimate as it is using it to confuse and divert Internet customers to an online shop from which the Respondent is making further unauthorised use of the SWAROVSKI mark to sell purported SWAROVSKI jewellery products. The Complainant says this cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
As far as bad faith is concerned the Complainant submits that the SWAROVSKI mark is both highly distinctive and very well-known and that the Respondent must have known of its brand and products at the date of registration of the disputed domain name being in August 2012. It is apparent, according to the Complainant, from the variety of SWAROVSKI products advertised on the online shop website to which the disputed domain name resolves (including items such as “Swarovski Necklaces”, “Swarovski Pendants” and “Swarovski Earrings”) that the Respondent must have known of the SWAROVSKI brand and jewellery product lines. In summary the Complainant says that it is self-evident, based on the Respondent’s use of the disputed domain name to resolve to a website selling unauthorised products under the SWAROVSKI trade mark, that the Respondent knew of the well-known SWAROVSKI mark and chose to incorporate it purposefully into the disputed domain name.
The Complainant submits that the Respondent’s use of the disputed domain name, incorporating the SWAROVSKI mark, to confuse Internet users and to divert them to an online shop from which the Respondent purports to sell a range of jewellery products under the SWAROVSKI mark, without in any way distinguishing itself from the Complainant is clearly indicative of use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in the SWAROVSKI mark, in particular in China under the registered word mark 384001 and in terms of Community Trade Mark 007462922. Without it being necessary to find that the SWAROVSKI mark is very well known or not, the Panel accepts that it is at the very least an extremely well-reputed mark based on the number of countries in which products are available under the mark and on the very substantial global turnover of products sold under the SWAROVSKI mark.
The disputed domain name wholly incorporates the Complainant’s SWAROVSKI mark together with the terms “schmuck” and “outlet”. Previous UDRP panels have found that the wholesale incorporation of the term SWAROVSKI in a disputed domain name is a sufficient basis for a finding of confusing similarity, for example see Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028.
The Panel notes that the term “outlet” is a common English word which is entirely non-distinctive and that the term “schmuck” has been accepted by previous UDRP panels in the context of complaints brought by this Complainant as meaning “jewellery” in the German language (see for example Swarovski Aktiengesellschaft v.NetNames Hostmaster, WIPO Case No. D2010-1735). Consequently this Panel adopts a similar approach in relation to the use of “schmuck” in the disputed domain name in this case and concludes that it is an entirely non-distinctive addition to the Complainant’s mark. It seems to the Panel that either a German, or an English speaking audience (it is noted that the website to which the disputed domain name resolves is in both German and English), would consider both additional terms to be non-distinctive and would assume some kind of connection, affiliation or authorisation by the owner of the highly distinctive and very well reputed SWAROVSKI mark. Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI mark.
As a result the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submissions that it has not authorised or licensed the Respondent to use the SWAROVSKI mark. Further there is no evidence before the Panel to suggest that the Respondent is commonly known by the SWAROVSKI mark or the disputed domain name. In the circumstances in which the disputed domain name is being used by the Respondent as described under Part C below, the Panel finds that the Respondent is not using the disputed domain name in relation to any bona fide goods or services. In that its main purpose of use appears to be to confuse and divert Internet users to its online shop by trading off the goodwill attaching to the SWAROVSKI name and mark, there is nothing legitimate in its use.
The Complainant has accordingly made out its prima facie case under this head and in the absence of any response from the Respondent there is nothing before the Panel to rebut this case. As a result the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
This case involves the blatant registration and use of the Complainant’s very well-reputed mark to confuse and divert Internet users to an online shopping website at which the Respondent purports to sell a range of jewellery products under the SWAROVSKI mark. Having reviewed the website in question, the Panel accepts the Complainant’s submission that it is apparent that the Respondent must have known of the SWAROVSKI mark and of the Complainant’s jewellery business under that mark and the Panel infers that the Respondent purposefully sought to register the disputed domain name in order to confuse and divert Internet users to the online shopping site to which the disputed domain name resolves. Once there, Internet users are offered an array of jewellery products, ostensibly under the SWAROVSKI mark and as if those products are being sold or are authorised by the Complainant. There appears to be no attempt by the Respondent on the website to differentiate itself from the Complainant and there is no explanation before the Panel of the Respondent’s conduct which appears to be a blatant example of use in bad faith. In all the circumstances the Panel finds that the elements of paragraph 4(b)(iv) of the Policy have been made out, namely that Respondent has made an unauthorised use of the disputed domain name in order to attract consumers for commercial gain to the disputed domain name by confusing them as to the sponsorship, affiliation or ownership of the disputed domain name, which is indicative of both registration and use in bad faith.
The Complainant has been involved in a long history of UDRP cases involving similar circumstances to this case. In fact there have been so many cases and the Complainant is so experienced, that as a strategic matter, it chose not to issue a letter of demand prior to these proceedings in order to avoid the risk of cyberflight. In the particular circumstances of such a blatant unauthorized use of the Complainant’s trade mark and in a case that is a quintessential example of cybersquatting and where there would appear to be a real risk of cyberflight, the Panel, although not usually endorsing this approach, notes that it has considerable sympathy with the Complainant’s strategy.
Accordingly the Panel finds that the disputed domain name was both registered and is being used in bad faith and the Complaint succeeds under the third element of 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 disputed domain name <swarovskischmuckoutlet.com> be transferred to the Complainant.
Date: June 11, 2013