WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. PrivacyProtect.org / Suleyman Sarac
Case No. D2013-0847
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is PrivacyProtect.org of Queensland, Australia / Suleyman Sarac of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <swarovskiturkey.com> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 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 May 31, 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 June 3, 2013.
On May 31, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On June 3, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.
The Center appointed Selma Ünlü as the sole panelist in this matter on July 3, 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 a corporation organized under the laws of Liechtenstein and uses the SWAROVSKI mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.
The Complainant is producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, and distribution to 42 countries.
The Complainant has registered numerous SWAROVSKI marks in many countries, including Turkey. The Complainant’s Turkish registration no. 2005 41119 is dated July 3, 2008 and International registration no. 527385 is dated March 7, 1988.
The Complainant has websites under the domain names <swarovski.com> and <swarovski.net>.
The Respondent has registered the disputed domain name on January 10, 2013, which resolves to an English and Turkish pay-per-click website containing links to third-party commercial websites and images of crystal-studded buttons (Annexes N and M to the Complaint).
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. The disputed domain name was registered and is being used in bad faith.
(i) Identity or Confusingly Similarity
The Complainant submits that the Respondent is using the disputed domain name to confuse consumers into believing that the Respondent’s website is an official Swarovski website and/or the Respondent is affiliated with or authorised to sell products by the Complainant. The Respondent does not identify itself as being independent from the Complainant.
The Complainant submits that the Respondent has used the SWAROVSKI mark in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Swarovski approved websites. Internet users who intend to purchase Swarovski products online may type “Swarovski Turkey” into the address bar on their web browser, as a reference to Swarovski jewellery in Turkey and the website at the disputed domain name appears in the first 10 of the search results. The Complainant states that this type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalises on the Complainant’s goodwill in the SWAROVSKI mark to divert Internet traffic to the disputed domain name. At this point, the Complainant refers to the decision of Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166.
The Complainant submits that the addition of the term “turkey” as a suffix to the SWAROVSKI mark does not prevent the confusing similarity between the disputed domain name and the Complainant’s mark. At this point, the Complainant refers to Swarovski Aktiengesellschaft v. Siqi Ai AKA aisiqi, WIPO Case No. D2010-2057 where the panel stated that “the geographical name ‘China’ does not assist in distinguishing the disputed domain name from the Complainant’s mark.”
Finally, the Complainant submits that previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
(ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no relationship with or authorization from the Complainant to use the SWAROVSKI mark in any domain name, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not been commonly known by the disputed domain name.
The Complainant also states that the Respondent has used the SWAROVSKI mark to create the impression that it is associated with the Complainant.
Moreover, the Complainant states that, the Respondent seeks to gain commercial benefit from the Complainant’s goodwill and reputation by providing links to third party commercial websites.
(iii) Registered and Used in Bad Faith
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI marks. The Complainant states that it was inconceivable that the Respondent was unaware of the Complainant’s trademarks as they are well-known in Austria, Turkey and worldwide.
The Complainant states that the selection of the disputed domain name, which wholly incorporates the SWAROVSKI mark, cannot be a coincidence as “Swarovski” is not a descriptive or generic term. The Complainant submits that the registration of a famous mark, like SWAROVSKI, as a domain name by an entity that has no relationship with the mark is itself sufficient to demonstrate bad faith.
The Respondent had offered to sell products identical to or similar to Swarovski products without valid consent. In short, the Complainant asserted that the Respondent is using the disputed domain name to intentionally gain commercial benefit by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
The disputed domain name’s registration agreement is in Turkish and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. However, the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Given the provided submissions and circumstances of this case, the Center has notified the parties that it would proceed as follows:
1) accept the Complaint as filed in English;
2) accept a response filed in either Turkish or English;
3) appoint a panel familiar with both languages mentioned above, if available.
The Center also notified the parties that the power to decide the language of the proceedings lay with the panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the parties both in English and Turkish.
The Complainant has submitted its Complaint and supporting evidence in English and, therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceedings in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989, Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, and is of the opinion that both parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that one the languages of the website to which resolves the disputed domain name is English. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English.
6.2 Substantive Elements of the Policy
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled.
A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.
First of all, previous UDRP panels have found that neither the beginning of the URL (i.e. “http://”), nor the generic top-level domain (gTLD) have any distinguishing significance under the Policy and do not typically remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515 and The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491. Therefore, the Panel is of the opinion that the suffix “.com” has no significance under this element.
The Panel considers that the Complainant has clearly established its rights in the SWAROVSKI trademarks as evidenced by the trademark registrations submitted with the Complaint. Besides, previous UDRP panels also held that SWAROVSKI is well-known internationally. See e.g. Swarovski Aktiengesellschaft v. A.S., WIPO Case No. D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No. D2012-2267; Swarovski Aktiengesellschaft v. Derk Hond, WIPO Case No. D2013-0005).
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has successfully proven its rights in the SWAROVSKI trademark. The Complainant has had a trademark registration for the “swarovski” term in Turkey since 2008, well before the registration date of the disputed domain name.
In relation to the incorporation in the disputed domain name of the generic or descriptive geographical indicator “turkey”, the Panel finds that the inclusion of such indicator together with a trademark does not contribute to distinguishing the disputed domain name from the Complainant’s trademark.
Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark does not negate the confusing similarity between the mark and the domain name. See e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 where the panel sated that “the addition of the characters “-korea” does not prevent the domain name from being confusingly similar to the Complainant’s trademark. Internet users would be confused into thinking that the domain name was associated with the Respondent, and in particular with the business of the Respondent in Korea.”
Therefore, the Panel finds that due to the high distinctiveness of the SWAROVSKI trademark of the Complainant, the addition of the merely generic or descriptive geographical indicator “turkey” in the disputed domain name does not avoid a finding of confusing similarity in this case.
Indeed, the inclusion of a generic or descriptive geographical indicator together with a trademark in the disputed domain name may increase the risk of confusion for Internet users taking into account that the Respondent is using the disputed domain name to provide links to third party websites. This may lead Internet users to believe that the website associated with the disputed domain name is in fact a genuine operation of the Complainant in that country.
Hence, the Panel is of the opinion that the requirement of paragraph 4(a)(i) of the Policy is met by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate its rights or legitimate interests in the disputed domain name.
In the light of the evidence submitted, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier rights in the SWAROVSKI trademark. Therefore, the Panel finds on the current record that the Complainant has proved rights in the SWAROVSKI trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the SWAROVSKI trademark and the Respondent is not an authorized service provider for SWAROVSKI products.
Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the SWAROVSKI mark in the disputed domain name.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name’s 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark SWAROVSKI, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey, was aware of the Complainant and its SWAROVSKI trademark. See e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.
Consequently, the Panel is of the opinion that:
(i) the Respondent did not offer any response and remained in default;
(ii) the Complainant’s trademark has a strong reputation and is well-known all around the world, including in Turkey;
(iii) the Respondent has not provided any evidence of good faith use, instead, it has actively hidden its real name and contact details through a proxy registration service.
Although using privacy services as in this case is not accepted as a sole sign of bad faith, it is found in many cases that such usage may be in connection with bad faith. See, WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033. Also, it is noteworthy to mention that even the UDRP panels who did not find the usage of privacy services as an indication of bad faith, they accepted that “privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere”. See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
In view of the renown of the Complainant’s trademarks and the Respondent’s use of the disputed domain name (see Section 4), it is difficult for the Panel to imagine any good faith use to which the disputed domain name can be put.
Therefore, in light of the above-mentioned conditions of the present case, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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 <swarovskiturkey.com> be transferred to the Complainant
Date: July 12, 2013