WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. John Zamora
Case No. D2013-1857
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is John Zamora of San Antonio, Texas, United States of America (the “USA”).
2. The Domain Names and Registrars
The disputed domain names <swarovski-australia.com>, <swarovski-canada.com>, <swarovskigioielli.com>,
<swarovski-india.com>, <swarovskioutlet-uk.com> and <swarovskisingapore.com> are registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On October 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4 and November 5, 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 November 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on December 9, 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 manufactures and sells products using cut crystal, gemstones and created stones. It is the owner of a large number of trademark registrations for the name SWAROVSKI, including a European Community trademark registration number 3895091, which was registered on August 23, 2005 and a US trademark registration number 1739479, which was registered on December 15, 1992. The disputed domain names were all registered on July 22, 2013. The Complainant markets its products through a number of domain names, notably <swarovski.com>, registered on January 11, 1996 and <swarovski.net> registered on April 16, 1998.
The disputed domain names were all registered by the Respondent on the same date. They all contain the Complainant’s trademark SWAROVSKI. The Panel concludes that it is appropriate to deal with complaint as a single case in the interests of efficiency.
5. Parties’ Contentions
This section contains the Complainant’s submissions with which the Panel may or may not agree.
The Respondent is operating websites at the disputed domain names, advertising for sale various of the Complainant’s products or items that purport to be them, using the Complainant’s marks. The Respondent does not indicate that he is independent of the Complainant.
The addition of the terms “outlet” and “gioielli”, the Italian word for jewellery, and the addition of geographic terms such as “Canada”, “India”, “Singapore”, the “UK” and “Australia” to the Complainant’s trademark in the disputed domain names does not differentiate the disputed domain names sufficiently to prevent confusion among consumers or lessen the similarity between the dispute domain names containing these words and the Complainant’s mark. The addition of a geographic name or indicator or a common word to a trademark does not differentiate the dispute domain name from the Complainant’s trademark.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s trademark, SWAROVSKI, in any manner. The Respondent has never been known by the disputed domain names and has no legitimate interest in the Complainant’s trademark, SWAROVSKI. The selection of domain names that incorporate such a well-known trademark has clearly been done to mislead consumers into believing that the Respondent is associated with and approved by the Complainant.
The Respondent clearly knew of the Complainant’s trademark when registering the disputed domain names. The Complainant’s trademark is extremely well-known worldwide and the Respondent has proceeded to use to sell goods from its websites using that trademark. “Swarovski” is not a descriptive or generic term. The Respondent has sought to use the Complainant’s trademark to attract consumers to his websites in order to sell them products for consumer gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove with respect to each disputed domain name that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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
Four of the disputed domain names involve the addition of a country’s name to the Complainant’s trademark and the necessary generic Top-Level Domain (“gTLD”) “.com”. One involves the addition instead of the Italian word for jewelry and another, the English word “outlet”, a hyphen and the initials “uk” denoting the United Kingdom. The Complainant’s trademark is a well-known but made-up name. The addition to the Complainant’s trademark of generic words or the names of countries and the gTLD “.com” to form the disputed domain names does not detract from the otherwise clearly confusing similarity between the disputed domain name and the Complainant’s trademark, SWAROVSKI. For these reasons, the Panel concludes that all of the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Swarovski” or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name .
C. Registered and Used in Bad Faith
The Complainant’s trademark is a well-known, distinctive made-up word with no independent meaning. The Respondent clearly knew of its existence when registering the disputed domain name because shortly after registering that disputed domain names, he was already using the Complainant’s trademark to sell products through the websites to which the disputed domain names resolve. The Respondent is still using the disputed domain names to sell what purport to be the Complainant’s products.
It seems apparent from this that the Respondent registered the disputed domain names to divert customers seeking the Complainant’s products to the Respondent’s websites and online shops contained in them. There, he hoped to sell products using the Complainant’s trademark.
For these reasons, the Panel concludes that the Respondent registered and has been using each of the disputed domain names 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 names <swarovski-australia.com>, <swarovski-canada.com>, <swarovskigioielli.com>, <swarovski-india.com>, <swarovskioutlet-uk.com> and <swarovskisingapore.com> be transferred to the Complainant.
Date: December 18, 2013