WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Simon Zhang
Case No. D2013-1731
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Simon Zhang of Shenzhen, Guangdong Province, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskistorellc.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 October 8, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2013.
The Center appointed Martine Dehaut as the sole panelist in this matter on November 5, 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 corporation organized under the Laws of the Principality of Liechtenstein and 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 boutiques worldwide. According to the Complainant, the Swarovski Group approximate worldwide revenue in 2012 was EUR 3.08 billion.
The Complainant uses the SWAROVSKI marks in connection with crystal jewellery stones and crystalline semi-finished goods.
The SWAROVSKI marks have been registered in many countries all over the world including trademark registrations in China which date back to 1987.
Furthermore, The Complainant registered and is using several domain names such as <swarovski.com> and <swarovski.net>. These domain names point to the official website of the Complainant where Internet users can access information and purchase genuine Swarovski products.
The disputed domain name was registered on February 20, 2013.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the SWAROVSKI trademarks in that the mere addition of the terms “store” and “llc”, as suffixes, fails to distinguish the signs at issue.
The Complainant further alleges that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has never been authorized to use the SWAROVSKI trademarks any way. No license has been granted. The Respondent has never been known by the disputed domain name.
Yet, the Respondent is operating an online shop under the disputed domain name so as to advertise and to offer for sale purported Swarovski products, namely Swarovski necklaces, bracelets and pendants. Besides the Respondent displays on the home page of his website the Swarovski Swan logo leading the consumers to falsely believe that they are connected with the official website of the Complainant.
Such a use that wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI trademarks is a clear evidence of the Respondent’s bad faith which exploits the Complainant’s goodwill to misdirect the Internet users to his website in order to take advantage of the SWAROSKI trademarks reputation and to obtain commercial gain.
Furthermore, the Respondent was already involved in a dispute relating to the Complainant’s SWAROVSKI trademarks and despite the decision of transfer of the disputed domain name <swarovskimall-online.com> delivered by the panel in that previous case (Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2013-1068), the Respondent has chosen to maintain the registration and to continue the use of the disputed domain name <swarovskistorellc.com>.
The Complainant further states that the Respondent must have been aware of the Complainant’s marks and domain names at the time of the registration of the disputed domain name as the SWAROVSKI trademarks are well-known in China.
Such circumstances, among others indicate that the disputed domain name has been registered and used in bad faith and damage the Complainant’s goodwill and reputation in the SWAROVSKI trademarks.
The Complainant requires the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the Paragraph 4 (a) of the policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the dispute domain name:
(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 interest 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
Having taken into consideration the list of trademark registrations submitted by the Complainant and the corresponding certificates of such registrations namely in China, the Panel finds that the Complainant has duly proved its rights in the trademark SWAROVSKI which in any case predate the date of registration of the disputed domain name.
The disputed domain name totally includes the SWAROVSKI trademark. The Panel is of the view that the mere addition of the term “store” and of the suffix “llc” is not likely to distinguish the disputed domain name from the Complainant’s trademark. Indeed, the term “store” is a generic term to designate a location where products are offered for sale; The suffix “llc” is the abbreviation of limited liability company and thus is descriptive of the legal form of a corporation.
Consequently such signs cannot play any role to avoid the confusion between the SWAROSVKI trademark and the disputed domain name <swarovskistorellc.com>.
Such a position has been held by numerous UDRP panels particularly in the following cases, EAuto, L.L.C. v. Triples S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Swarovski Aktiengesellschaft v. Johnny Person D / WhoisGuard Inc., WIPO Case No. D2013-1562. Based on the foregoing, the Panel holds that the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a)(ii) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
Paragraph 4(c) of the Policy lists numerous, although unbounded, circumstances likely to demonstrate that the Respondent has rights or legitimate interest in a domain name, namely:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a 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.
In the present case, the Complainant asserts not to have granted to the Respondent any authorization to use the trademark SWARKOVSKI whatsoever nor to have granted any license giving the right to the Respondent to use the disputed domain name. Besides the Complainant states that the Respondent has never been known by the disputed domain name. The Complainant is in no way associated or affiliated with the Respondent.
The Panel has now to consider the arguments of the Complainant related to the content of the website operating under the disputed domain name, presented as offering for sale goods similar to and purport to be those produced and sold by the Complainant.
In effect, if the content of a website is usually disregarded to assess the risk of confusing similarity, it could play a significant role in evaluating whether the disputed domain name is used in connection with a bona fide offering of goods and services or whether the Respondent is making a legitimate or fair use of the disputed domain name without seeking to misleadingly divert consumers for commercial gain. It has to be borne in mind that the resale of genuine trademarked goods, even by an unauthorized dealer, is not necessarily considered as an illegitimate offering of goods.
Asserting that the disputed domain name is used to sell infringing goods could be judged as an insufficient argumentation if not supported by strong evidence. Indeed, the Panel shall be convinced that the goods displayed on the disputed website are not genuine. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A.v. Chunchai Zhang, WIPO Case No. D2012-0136.
As evidence to support its assertions the Complainant has submitted a screenshot of the home page of the Respondent’s website operating under the disputed domain name. The goods displayed on the home page are presented as Swarovski goods offered for sale at discounted prices. The Panel cannot infer from this sole evidence that the displayed goods are infringing goods. Such a position was held by the Panel in charge of the complaint Swarovski Aktiengesellschaft v. Johnny Person D / WhoisGuard Inc., supra.
In any event, the Panel finds that the home page of the Respondent’s website does not contain any notice informing the Internet users that it is not related to the official Swarovski website. On the contrary, the home page of the Respondent’s website operating under the disputed domain name is giving the impression that the website is the official website of the Complainant as it reproduces the SWAN logo trademark of the Complainant. Such circumstances are usually regarded as evidencing the lack of bona fide offering, e.g Houghton Miffin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211. Moreover the association of the term “store” to the SWAROVSKI trademark will most likely confuse the consumers into thinking that they are directed to an official website.
Besides, the allegations mentioned at the bottom of the home page such as: “Swarovski Outlet Online Store, provides online shoppers in the best value and a superior customer experience” reinforce the impression that this website is an official website or at least that it is linked with the Complainant’s official website.
The Respondent is likely to be regarded by Internet users as affiliated to the Complainant. In effect, the sign Swarovski appears to be used as a tradename. Moreover, the mention of a copyright “Swarovski crystals sale. All right reserved” will be also a source of confusion.
Considering the above, the Panel takes the view that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. On the contrary, the Respondent seeks to falsely divert the consumers to the Respondent’s website in taking advantage of the goodwill and the reputation in the SWAROVSKI trademark. It has been concluded in that way in the decision Swarovski Aktiengesellschaft v. Johnny Person D / WhoisGuard Inc., supra.
The Respondent has failed to respond to the Complaint and thus has not taken this opportunity to challenge the Complainant’s assertions and to demonstrate any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers that the Complaint complies with the conditions set forth in the paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the policy, the Complainant is invited to prove that the Respondent has registered and used the disputed domain name in bad faith. The paragraph 4(b)(iv) of the Policy gives examples of circumstances likely to constitute evidence of both bad faith registration and bad faith use. The paragraph 4(b)(iv) of the Policy particularly cites as possible circumstances:
“the use of a domain name intentionally to attempt to attract, for commercial gain Internet users to the Respondent website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent website or location or of a product or service on the Respondent’s website or location”.
In the present case, the Complainant has declared and has submitted evidence to support the allegation that the SWAROVSKI trademark enjoys a strong reputation throughout the world and particularly in China prior to the registration of the disputed domain name.
The Panel, in light of the press articles published in Chinese newspapers relating to fashion and luxury goods, considers as very unlikely that the Respondent would not have been aware of the SWAROVSKI mark and of the products line developed by the Complainant at the time he registered the disputed domain name.
Moreover, as stated by the Complainant, while the Respondent was aware of the decision of transfer of the other domain name <swarkovskimall-online.com> he registered, Swarovski Aktiengesellschaft v. Simon Zhang, supra, the Respondent has maintained the disputed domain name registration and has not given up its use. It is also to be noted that the disputed domain name is now redirected to the domain name <swarovskistorellc.net> which points to a website the home page of which is totally identical to that of the challenged Respondent’s website.
In the present case, it results from the information and documents submitted by the Complainant that the disputed domain name was used in connection with a website offering for sale “purported” Swarovski products. As stated above, no indication is to be found on the home page of the Respondent’s website likely to inform the Internet users that it is not associated with the Complainant.
Consequently, the Panel is of the view that the disputed domain name is used in bad faith in order to attract the consumers likely to be confused in believing that they are directed to the official Swarovski online store or at least to that of an affiliate’s, particularly when the Complainant’s SWAN logo trademark is illegitimately reproduced.
Failure to reply to the Complaint, the Respondent has not given any information likely to legitimate his registration and use of a domain name incorporating a famous trademark, while he does not appear to have had any business and/or legal relationship with the Complainant.
Such a use aims to mislead the Internet users for his own commercial gain and cannot be regarded as a legitimate noncommercial or fair use. Such a use constitutes bad faith under the precited paragraph 4(b)(iv) 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 <swarovskistorellc.com> be transferred to the Complainant.
Date: November 19, 2013