WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Jun Qiao
Case No. D2013-1617
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Jun Qiao of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskijewelrywholesale.com> 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 September 13, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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 September 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2013.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 31, 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 sells crystal jewelry stones and goods for the fashion jewelry, home accessories and lighting industries.
The Complainant has registered the trademark SWAROVSKI in a number of countries, and attaches supporting trademark registration certificates to the Complaint. The Complainant registered SWAROVSKI as a trademark in China on July 30, 1987 in Class 14 (No. 384001).
The disputed domain name was registered on April 21, 2013.
5. Parties’ Contentions
The Complainant contends that the coupling of SWAROVSKI with the terms “jewelry” and “wholesale” does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark. Further, the Complainant contends that coupling common words with a complainant’s mark or even a word similar to the complainant’s mark, in particular where the mark is well-known as is the case here, serves to reinforce confusing similarity. The Complainant cites a number of UDPR decisions in support of these propositions, and points out that in any case panels have concluded that a domain name is confusingly similar to a complainant’s mark where it includes a complainant’s trademark in its entirety.
The Complainant also asserts that it has rights in the SWAROVSKI mark as evidenced by its trademark registration certificates for that mark. Further, the Complainant contends that the Respondent has no connection or affiliation with Swarovski and asserts that the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark in a domain name or in any other manner. The Respondent is said not to have any existing legitimate interests in the Complainant’s trademark and has not been known by that mark.
Further the Complainant contends that the use of a domain name to attract consumers to a website that advertises purported Swarovski products is contrary to bona fide offering of goods or services and does not represent a legitimate interest. No rights or legitimates interest can be created by using another’s trademark to falsely suggest an association with the trademark’s legitimate owner. According to the Complainant, the SWAROVSKI trademark is also used throughout the associated website, further reinforcing the inference that the Respondent chose the disputed domain name in order to create the false impression of an association between the relevant website and the Complainant.
Further, the Complainant contends that the Respondent’s registration of the disputed domain name was not an accident, since the Complainant’s trademark is so well-known and famous. Clearly, the choice was made so as to mislead consumers into thinking there is a connection with the Complainant. Since the Respondent is clearly, according to the Complainant, seeking to trade off the goodwill of the Complainant, there can be no question of bona fide or any legitimate interest. Choosing to incorporate a well-known trademark in a domain name without authorization cannot result in a bona fide offering of goods or services, according to the Complainant.
Further, the Complainant submits that the disputed domain name was registered in bad faith, as it is inconceivable that the Respondent was unaware of the Complainant’s rights. The Complainant’s trademarks are well-known in China as elsewhere, and the disputed domain name is confusingly similar to the Complainant’s mark. The Respondent would not have chosen this particular domain name, were it not for the fact that the Respondent was aware of the Complainant’s trademark and its reputation. SWAROVSKI is not a generic or descriptive term, and, according to the Complainant, cannot therefore have been chosen coincidentally. Furthermore, the Complainant contends that if unaware of the Complainant’s trademark, the Respondent would not have been advertising purported Swarovski products on its website.
Further, according to the Complainant, registering a domain name that wholly incorporates another’s trademark where there is no legitimate relationship with the trademark owner, in itself amounts to bad faith. No interpretation other than bad faith is consistent with the Respondent’s actions in choosing to register the disputed domain name in its particular form, and further coupling it with a number of generic terms as is the case here. Further, the misleading suggestion that results from the incorporation of the Complainant’s trademark in the disputed domain name is itself an indication of bad faith.
The Complainant also asserts that the Respondent has done nothing to identify itself as being independent of the Complainant. On the contrary, the Respondent has incorporated the Complainant’s trademark in the disputed domain name, has included it throughout the infringing website and purports to sell Swarovski marked goods. It has previously been stated by UDRP panels, according to the Complainant, that the use of a domain name for the sale of products that are similar or identical to the Complainant’s products is consistent with a finding of bad faith. The method used here of luring consumers to a website because of its purported affiliation with the Complainant demonstrated bad faith. The initial interest confusion the disputed domain name creates is a further indication of bad faith. According to the Complainant the Respondent would not be able to demonstrate good faith use, as it is impossible to conceive of any good faith use ever existing in the circumstances. The Respondent must have been aware that its actions would result in harm to the Complainant because of the confusion and disruption to its business that would be caused.
Further, the Complainant contends that the Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilizing the Complainant’s trademark is compounded by the efforts to mislead consumers into believing the site was operated or authorized by the Complainant.
Finally, the Complainant indicates that it did not contact the Respondent in relation to this matter, because in the Complainant’s experience respondents in similar circumstances are in any case unwilling to voluntarily discontinue use of the relevant trademarks. They are in any case already very well aware that what they are doing is illegal and constitutes trademark violation. Furthermore, being put on notice by an approach from a Complainant they have the opportunity to cause the disputed domain name to be transferred, to the detriment of that Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark SWAROVSKI. However, it incorporates the Complainant’s trademark in its entirety as its initial and most prominent part, as well as the purely descriptive English terms “jewelry” and “wholesale”. These are both generic terms and taken together represent a understandable concept. The combination of those terms with the distinctive trademark SWAROVSKI does not distinguish the disputed domain name from the Complainant’s trademark. The mark SWAROVSKI is very distinctive and the message inherent in the disputed domain name that it is concerned with the wholesale provision of Swarovski jewelry is clear. The combination of terms has no other meaning that can reasonably be contended for. In any case, UDRP panels have consistently decided that the inclusion of generic terms, certainly where they are descriptive of the goods and business of a Complainant whose distinctive trademark is also included, results in a confusingly similar domain name.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark SWAROVSKI.
B. Rights or Legitimate Interests
The Complainant asserts that it has not licensed nor authorized the Respondent to use its SWAROVSKI trademark or incorporate it in a registered domain name. Nor is the Respondent an authorized reseller or wholesaler of Swarovski goods, according to the Complainant. The Respondent is not known by the name “Swarovski” or anything approximating it, nor is there any evidence that it has acquired rights in such a name by registration or any other legitimate means. The unauthorized incorporation of a well-known mark in the disputed domain name, which is then used to direct consumers to a website where goods purportedly emanating from the trademark owner are advertised or supplied, does not give rise to rights or legitimate interests. This is because it rests on a misleading suggestion of some legitimate association, rather than on a genuine authority or license.
As indicated, the Respondent is not an authorized reseller or wholesaler, nor is it in any case apparent from the material before the Panel that the goods advertised at the contested website are genuine goods of the Complainant. Further, the unauthorized incorporation of a Complainant’s trademarks on a website such as the one to which the disputed domain name resolved at the time, is also not apt to vest rights in the operator of the website, since it is clear that authorization or license is required for such a practice. By this method, the Respondent has done nothing other than reinforce the misleading suggestion of an official association already inherent in the disputed domain name, which is entirely inconsistent with the vesting of rights or legitimate interests in it. The Panel notes that at the time it accessed the website to which the disputed domain name resolves on November 7, 2013, all that appeared was a notice in the following terms: “This site has stepped out for a bit”. This development is also not consistent with the vesting of rights or legitimate interests.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
On the material before the Panel, it is apparent that SWAROVSKI is a well-known trademark in relation to jewelry and related goods. It is, as the Complainant submits, inconceivable that the Respondent was not aware of the Complainant’s mark and its reputation in the field of jewelry at the time of registration. The mark is distinctive and has no inherent or generic meaning in the present context. Further, the fact that purported Swarovski goods were offered at the relevant website indicates that the Respondent was fully aware of the Swarovski mark’s distinct reputation and association with the Complainant. There is no reason to choose such a distinctive mark, and also to include other terms in a domain name that are suggestive of the very business of the Complainant, other than a bad faith attempt to ride on the coattails of the trademark owner. The fact that on the material before the Panel, the Respondent also incorporated unauthorized representations of the Complainant’s mark in the associated website, further indicates use in bad faith. The conclusion is that the Respondent intended to benefit from the false suggestion of an association with the Complainant by deriving some financial benefit from the confusion it would generate in the minds of web users and consumers.
Therefore the Panel holds that the disputed domain name was registered and is being used 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 <swarovskijewelrywholesale.com> be transferred to the Complainant.
William A. Van Caenegem
Date: November 14, 2013