WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. sun gs

Case No. D2013-1704

1. The Parties

The Complainant is Swarovski Aktiengesellschaft, of Triesen, Liechtenstein (“Complainant”), represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is sun gs, of wuxi, China (“Respondent”).

2. The Domain Name and Registrar

The disputed domain name <swarovskicrystals.org> (the “Disputed Domain Name”) 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 October 2, 2013. On October 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 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 October 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2013.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 6, 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 states that it “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 1250 of its own boutiques and through 1100 partner-operated boutiques worldwide. The Swarovski Groups’ approximate worldwide revenue in 2012 was EUR 3.08 billion.”

Complainant further states that it is “the exclusive owner of famous and well known registered trademarks in China and globally.” In support thereof, Complainant provided “an excerpt of a selection of registrations” for marks that consist of or include the mark SWAROVSKI, as well as copies of certificates of registration for various marks in China, including Reg. No. 384,001 for “imitation jewelry” (registered July 30, 1997). These marks are referred to collectively hereafter as the “SWAROVSKI Trademark.”

The Disputed Domain Name was created on October 27, 2011. Complainant states that the Disputed Domain Name is being used in connection with a website that “displays content that is unrelated to the Complainant’s business, i.e., blogs relating to a number of luxury brands, including Christian Louboutin, Abercrombie, Ralph Lauren as well as phone brands, including HTC, Apple and Blackberry.” This statement is supported by a web page printout.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the SWAROVSKI Trademark because, inter alia, “[t]he addition of the term ‘crystals’ as a suffix to the SWAROVSKI® Marks does not lessen the confusing similarity between the Infringing Domain Name and the Complainant's Marks. Swarovski is well known for the sale of its crystal jewellery products, therefore the addition of the term ‘crystals’ does not differentiate the Infringing Domain Name from the Complainant’s mark.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI® Marks in a domain name or in any other manner”; “Respondent has never been known by the Infringing Domain Name and has no legitimate interest in the SWAROVSKI® Marks or the name ‘Swarovski’”; and “Respondent’s use of the SWAROVSKI® Marks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by Swarovski.”

- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “it is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI® Marks”; “Registration of a famous mark, like the SWAROVSKI® Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith”; “Respondent’s registration and use of the Infringing Domain Name creates ‘initial interest confusion’, which attracts internet users to the Infringing Website because of its purported affiliation with Swarovski”; and “it is difficult to conceive of a use that would not infringe the SWAROVSKI® Marks.”

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as the accompanying copies of trademark registration certificates, it is apparent that Complainant has rights in and to the SWAROVSKI Trademark. This conclusion is further supported by previous decisions under the Policy regarding the same complainant and trademark, e.g., Swarovski Aktiengesellschaft v. David Chons, WIPO Case No. D2013-1607 (“the Complainant’s rights in the SWAROVSKI mark have been established in numerous UDRP decisions”).

As to whether the Disputed Domain Name is identical or confusingly similar to the SWAROVSKI Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “swarovskicrystals”), as it is well-established that the top-level domain name (i.e., “.org”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

The addition of certain words, as here (that is, “crystals”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).

Here, because the word “crystals” is associated with the SWAROVSKI Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

This same conclusion has been reached by other Panels under nearly identical circumstances, that is, disputed domain names that also contained the SWAROVSKI Trademark as well as the word “crystals” (or a variation thereof). See, e.g., Swarovski Aktiengesellschaft v. Luly Stephanie, WIPO Case No. D2013-0846 (transfer of <swarovskicrystal-shop.com> and <swarovskisale-jewelry.com>); and Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779 (transfer of <swarovskizcrystals.com>).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI® Marks in a domain name or in any other manner”; “Respondent has never been known by the Infringing Domain Name and has no legitimate interest in the SWAROVSKI® Marks or the name ‘Swarovski’”; and “Respondent’s use of the SWAROVSKI® Marks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by Swarovski.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not specify which, if any, factor set forth above establishes bad faith. However, “the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.” DreamWorks Animation L.L.C. v. African American Film Network, WIPO Case No. D2013-1482 (internal punctuation and citations omitted).

In any event, the Panel agrees with a recently issued decision under the Policy involving a nearly identical domain name, <swarovskizcrystals.com>, in which the panel there wrote:

“For the Complainant, it is inconceivable that the Respondent could have been unaware of the Complainant’s trademark rights in the term “Swarovski” at the time of registration of the disputed domain name.

In light of the global and longstanding use of the SWAROVSKI mark, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame of a well-known mark like SWAROVSKI. This circumstance alone is sufficient to prove bad faith registration of the disputed domain name. See Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well-known trademark, the very use by someone with no connection with the complainant suggests opportunistic bad faith.)

Furthermore, by diverting traffic away from the Complainant’s official websites, to promote the sale of goods unrelated to the SWAROVSKI mark, the Respondent can be said to be profiting from the confusion that the disputed domain name creates among Internet users seeking to enter a Complainant-approved portal. The Respondent’s such conduct squarely falls within the bad faith use scenario laid down by Policy paragraph 4(b)(iv) above.”

Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779.

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

7. Decision

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 <swarovskicrystals.org> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: November 19, 2013