WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Simon Zhang
Case No. D2013-1034
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase, Sri Lanka.
Respondent is Simon Zhang of Shenzhen, Guangdong, China.
2. The Domain Names and Registrar
The disputed domain name <swarovskishine.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2013. On June 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 11, 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
Complainant is a major international purveyor of crystals, gemstones, and created stones. Complainant is the owner of marks for SWAROVSKI as well as related design marks around the world, including in China, where Respondent lists his address of record (Chinese Registration No. 384001 (registered 1997)).
Due to extensive use, advertising, and revenue associated with its SWARVOSKI mark worldwide, Complainant enjoys a high degree of renown around the world, including in China.
Complainant owns the registration for domain names that include its registered SWAROVSKI mark, and Complainant runs a website at the URL associated with <swarovski.com>, which it registered on January 1, 1996. Complainant uses this domain name to connect to a website through which it informs potential customers about its SWAROVSKI mark and its crystals, gemstones, and other products.
The disputed domain name <swarovskishine.net> was registered on February 20, 2013. Respondent has no affiliation with Complainant. Respondent has set up a website at the URL associated with the disputed domain name, with information about sales of Complainant’s own Swarovski products. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) <swarovskishine.net> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <swarovskishine.net> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark SWAROVSKI, and merely adds the descriptive word “shine”. The Panel finds that the added word would be perceived by Internet users as descriptive of a website where they could find information about the Complainant’s well-known “shiny” crystals and related products.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to its own website which is unaffiliated with Complainant or Complainant’s goods.
To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of retaining the mark under the UDRP, this Panel finds it is not. The majority view is expressed in paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). As stated therein, a reseller may be considered to have rights or legitimate interest in a mark, provided certain requirements are met. These generally include that: (i) the site is used only to sell the trademarked goods; (ii) the site accurately and prominently discloses the registrant’s relationship to the mark holder; and (iii) respondent does not try to “corner the market” in domain names that reflect the mark. Id. See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038.
This Panel finds that while it appears that Respondent uses the disputed domain name only to sell Complainant’s goods, Respondent has not clearly disclosed on the website its relationship, or lack thereof, with Complaint. Complainant has stated that Respondent is not an authorized reseller of its goods, and Respondent has not rebutted that claim. There is no notation to this effect on the website. Nor does the website state that Respondent is not affiliated with Complainant. The website states as follows:
Welcome to Swarovski Crystals Shop. We are offering our customers to receive the greatest selection of only the highest quality fine jewelry at great prices. All our Swarovski jewelry are made with distinctive design and high-quality materials, building the best crystal pieces to enhance your beauty. We take great pride in our large volume of repeat business and customer referrals, because serving our customers is the most important part of our business. Meanwhile, fast shipping and good customer service will bring you better shopping experience here. [sic]
This Panel finds that considering the circumstances presented overall, Respondent has not shown rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a website at the URL associated with the disputed domain name, from which it sells or offers to sell Complainant’s products. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the high degree of renown of Complainant’s SWAROVSKI marks around the world, and the fact that the website associated with the disputed domain name refers to those products, it may be presumed that Respondent was aware of Complainant’s rights in Complainant’s marks when registering the disputed domain name. Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 <swarovskishine.net> be transferred to Complainant.
Dated: July 17, 2013