WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard, Inc. / Person, Johnny D
Case No. D2013-1450
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Person, Johnny D of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskiok.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 21, 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 August 22, 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 August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2013.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 18, 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 world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2012, Swarovski’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. The Swarovski Group’s approximate worldwide revenue in 2012 was EUR 3.08 billion.
The Complainant has registered the SWAROVSKI marks globally and notably in Panama, where its trademark SWAROVSKI No. 16082601 is registered.
The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI marks in Panama and worldwide, including China.
The Complainant also owns registrations for the domain names <swarovski.com> since January 11, 1996 and <swarovski.net> since April 16, 1998, from which it operates its official website and sells its genuine Swarovski products.
The disputed domain name was created on June 14, 2013.
At the time of submission of the Complaint, the Respondent was operating an online shop in English language, offering for sale various purported Swarovski products, e.g., “Swarovski Necklaces”, “Swarovski Bracelets”, “Swarovski Pendants” (…).
The disputed domain name has been registered using a privacy service, with a P.O. Box address in Panama. Pursuant to the request for registrar verification, the Registrar disclosed the identity of the Registrant and his address:
“Person Johnny D
Outside US & Canada
5. Parties’ Contentions
The Complainant contends that the disputed domain name contains the word “swarovski” and it is therefore confusingly similar to the trademark SWAROVSKI in which the Complainant has long established and reputed rights based on a number of registrations valid throughout the world, and in Panama and in China. The addition of the generic term “ok” as a suffix does not have any significant impact on the overall impression of an Internet user, because “swarovski” as instantly recognizable is the dominant part of the disputed domain name.
The Respondent is using the disputed domain name to confuse consumers into believing that the website displayed at the disputed domain name is an official Swarovski website and/or the Respondent is affiliated with or is authorized to sell products by Swarovski.
The “About Us” section of the Infringing Website states that the online shop offers “good quality” merchandise and the promise to offer “only the best consumer goods”. Furthermore, the “Home Page” of the Infringing Website states “you can buy the Swarovski Jewelry at a low price but in good quality, because we have the Swarovski Outlet”. However, the Respondent is not an authorized reseller of Swarovski products, and Swarovski does not guarantee the authenticity or quality of the products that are being sold on the Infringing Website.
The Respondent does not at any point identify himself as being independent from the Complainant. The Respondent has not only used the trademark SWAROVSKI in the disputed domain name, but also operates an online shop and uses the sign SWAROVSKI throughout, displays the Swarovski swan logo on the home page, in the “title bar”, uses identical marketing material published by Swarovski and offers for sale goods that are similar to those sold by Swarovski.
The Respondent is creating the impression that its website is an official Swarovski website and that the Respondent is an authorized seller of Swarovski products.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, that he has no connection or affiliation with the Complainant and that the Respondent has not received any license or consent to use the trademark SWAROVSKI in a domain name or in any other manner.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. “Swarovski” is not a descriptive or generic word, contrariwise it is a famous mark and it is inconceivable that the Respondent was unaware of the mark at the time of registering the disputed domain name.
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 trademark, as it is inconceivable that the Respondent was unaware of Complainant’s rights in the SWAROVSKI trademark. The selection of the disputed domain name, which wholly incorporates the trademark SWAROVSKI cannot be a coincidence.
Registration of a famous mark, like the SWAROVSKI trademark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. The Complainant relies on Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ ning ning, WIPO Case No. D2012-0979.
The Respondent has done nothing to identify himself as being independent from the Complainant. On the contrary, the Respondent had incorporated the mark SWAROVSKI in the disputed domain name, throughout the infringing website and attempts to attract consumers for commercial gain by purporting to sell Swarovski products. See, Swarovski Aktiengesellschaft v. Luca Vogler, WIPO Case No. D2013-0664.
The purpose of the Respondent’s use of the trademark SWAROVSKI in the disputed domain name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy. See, Microsoft Corporation v. Source One Management Services, Inc. WIPO Case No. D2005-0508.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To have the disputed domain name transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):
(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 Complainant has rights in the SWAROVSKI trademark, which is a famous and worldwide well-known trademark.
The disputed domain name consists of the combination of the trademark SWAROVSKI and of the descriptive word “ok”.
It has been consistently held that mere addition of descriptive or generic words to a registered trademark is insufficient to avoid confusing similarity (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc./John Bragansa, WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057).
The Panel thus finds that the disputed domain name is confusingly similar to the SWAROVSKI trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not filed a Response, and there is nothing in the case file suggesting that the Respondent might have any rights or legitimate interests in the disputed domain name.
The Respondent is using the trademark SWAROVSKI to divert Internet users to a website offering infringing products for sale and using the Complainant’s signs in order to be considered as an official website.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, 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 you have registered or you have acquired the disputed 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 Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
Respondent chose to add to the well-known trademark SWAROVSKI the descriptive term “ok” to operate a website offering infringing goods for sale.
The Respondent cannot have ignored the Complainant’s rights when he registered the disputed domain name.
He chose to register the disputed domain name using a privacy service and the address that has been disclosed is apparently not correct. Such behaviour, in connection with using a well-known trademark for offering purported Swarovski products is bad faith behaviour.
Therefore, the Panel believes that the Respondent has registered the disputed domain name in bad faith, in the meaning of paragraph 4(b)(iii) of the Policy.
The disputed domain name is being used for commercial purposes, to divert Internet users
by creating a likelihood of confusion with the SWAROVSKI trademark, to benefit from the trademark’s goodwill and to achieve a commercial gain.
Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy is satisfied.
For the above reasons, the Panel finds that paragraph 4(a)(iii) is satisfied in this case and that the registration and use of the disputed domain name has been made in bad faith.
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 <swarovskiok.com> be transferred to the Complainant.
Date: October 2, 2013