WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Johnny Person D / WhoisGuard Inc.
Case No. D2013-1562
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Johnny Person D of Nanjing, China / WhoisGuard Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <swarovskicharms.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 11, 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 September 12, 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 September 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2013.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on October 24, 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 member of the Swarovski group based in Austria, which is active mainly in the production and the distribution of cut crystal, genuine gemstones and created stones. It has production facilities in 18 countries and is present in more than 120 countries worldwide. In 2012, the Swarovski group generated a worldwide revenue of more than EUR 3 billion.
The Complainant owns the trademark SWAROVSKI, which is protected in many countries around the world, in particular in China, where the Respondent is located. It also holds various domain names incorporating the trademark SWAROVSKI which point to Swarovski’s official website, located at “www.swarovski.com”.
The Complainant’s trademarks and domain names put forward in the Complaint were registered long before the registration of the disputed domain name <swarovskicharms.com>. The disputed domain name was registered on June 22, 2013.
On the website “www.swarovskicharms.com”, the Respondent appears to offer goods which are identical or similar to those offered by the Swarovski group. In addition, the Respondent designates the goods offered for sale on the aforementioned website by the distinctive sign SWAROVSKI.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its SWAROVSKI trademarks. It stresses the fact that the disputed domain name entirely comprises the aforementioned distinctive sign.
Furthermore, the Complainant states that the Respondent is not affiliated or related to it in any way, and that it did not authorize the Respondent to use the trademark and trade name in question. The Complainant also states that the Respondent is not generally known by the disputed domain name and that it has not acquired any trademark rights in it.
Lastly, the Complainant contends that the Respondent uses the disputed domain name and the website operated under the domain name in a way to create confusion with the Complainant’s trademark SWAROVSKI, and with the purpose of generating revenue by selling purported SWAROVSKI products, which in its view constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name registered by the Respondent 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; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several word marks for SWAROVSKI. These trademarks are registered for various goods and services, in various classes, in many countries of the world. Initially believing that the Respondent resides in Panama, the Complainant provided evidence for trademark registrations for said country, but not for China. Upon the Registrar revealing that the actual registrant of the disputed domain name resides in China, and not in Panama, the Complainant amended its complaint, without however delivering additional information on the protection of the SWAROVSKI trademark in China. This Panel is knowledgeable, though, that the Complainant owns several trademarks for SWAROVSKI in China. The trademarks put forward by the Complainant and those known by this Panel are sufficient to ground the Complaint.
Under the UDRP, the identical or confusingly similar requirement under paragraph 4(a) of the Policy only requires identity or confusing similarity between the Complainant’s trademarks and the disputed domain name. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. / Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485).
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e. “swarovski”, is identical with the Complainant’s very distinctive trademark SWAROVSKI. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain name, would believe the domain name and/or the attached website belongs to or is associated with the Complainant. The incorporation of a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a trademark (RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059). The other element of the disputed domain name, i.e. the element “charms”, is not sufficient to avoid confusing similarity. Indeed, the addition of merely generic wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043).
As far as the gTLD “.com” is concerned, this element has a technical function and therefore does not need to be taken into account when assessing the issue of identity or confusing similarity.
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has shown that it owns SWAROVSKI trademarks, and it has explicitly contested having granted the Respondent any right to use its trademarks. Whether SWAROVSKI is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark SWAROVSKI is well known. SWAROVSKI being a global brand, this is the case also for China where the SWAROVSKI trademark is also protected. As the Complainant rightly points out, UDRP panels found in previous decisions that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of a disputed domain name may reasonably be claimed (Lego Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
As indicated by the Complainant, the Respondent offers for sale goods identical or similar to those offered by the Complainant’s groups, by using the distinctive sign SWAROVSKI. Since the Complainant neither alleges nor demonstrates that the goods offered on the Respondent’s website which is operated under the disputed domain name are counterfeits, the Panel must consider the hypothetical (but rather unlikely) case that the goods offered are genuine, and therefore examine whether the web site meets the Oki Data criteria (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
While the Respondent (possibly) meets the first two requirements, namely that (i) it must be offering the goods or services at issue and (ii) that it must use the website to exclusively offer goods under the trademark contained in the disputed domain name, it clearly fails to overcome the hurdle of the third requirement. The third requirement is that the website must accurately disclose the Respondent’s relationship with the Complainant. In the present case, this is far from being the case, as Respondent’s website does not contain any indications whatsoever clarifying the identity and the relationship of the Respondent with the Complainant (e.g,. as an authorised distributor). To the contrary, its website creates the false impression that the Internet user is on the trademark owner’s website, thus causing confusion. As a result, the Respondent does not show any legitimate use made by it as a distributor of (possibly) genuine Swarovski goods.
Since no other legitimate use is likely, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant, and has no license or other authorization to use the Complainant’s trademark or name.
The Respondent registered the disputed domain name well after the Complainant’s mark was in use and became well-known. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when registering the disputed domain name. It is highly improbable to this Panel that given the reputation and fame of the SWAROVSKI trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name.
The Respondent’s choice of the disputed domain name, which incorporated the SWAROVSKI trademark, and its offering of goods identical or similar to Complainant’s under the latter’s trademark SWAROVSKI, indicates that the Respondent was aware of the existence of the Complainant’s trademark SWAROVSKI. The Panel also notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562). Given the fact that the SWAROVSKI trademark is well-known, registration in bad faith can be inferred.
Even in the unlikely event that the Respondent offers genuine Swarovski goods (e.g. as a non-authorised reseller) rather than counterfeits, the misleading of Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by Complainant, also indicates bad faith (Swarovski Aktiengesellschaft v. bingbing chen, WIPO Case No. D2011-1524).
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of 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 <swarovskicharms.com> be transferred to the Complainant.
Date: November 7, 2013