WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Simon Zhang
Case No. D2014-0583
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Simon Zhang of Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskisave.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 April 10, 2014. On April 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2014, 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2014.
The Center appointed Charles Gielen as the sole panelist in this matter on May 20, 2014. 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 owns several registrations of the trademark SWAROVSKI in the world and also in China. Among others, the following registrations in China are mentioned in the Complaint: registrations numbers 384001, 346372, 3520173 and 3520173, registered on July 30, 1987, April 20, 1989 and (the last two on) November 7, 2004 respectively. These marks were registered for goods in class 14.
The disputed domain name <swarovskisave.com> was created on February 20, 2013.
5. Parties’ Contentions
The Complainant furthermore 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, the Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. The approximate worldwide revenue of the group to which the Complainant belongs in 2012 was EUR 3.08 billion.
The Respondent registered the disputed domain name on February 20, 2013 and is operating an online shop in the English language, that offers for sale various purported Swarovski products e.g., “Swarovski Pendants”, “Swarovski Bangles”, “Swarovski Earrings” and more.
The Respondent is using the disputed domain name to confuse consumers into believing that the website displayed at the disputed domain name is an official Swarovski website and/or the Respondent is affiliated with, or is authorized to sell products by the Complainant.
However, the Respondent is not an authorized seller of Swarovski products, and the Complainant does not guarantee the authenticity or quality of the products that are being sold on the website of the Respondent.
The Respondent does not at any point identify himself as being independent from the Complainant. The Respondent has not only used the SWAROVSKI trademarks in the disputed domain name, but also operates an online shop which utilizes the SWAROVSKI trademarks throughout, displays the Swarovski swan logo on the home page, and offers for sale goods that are similar to those sold by the Complainant which according to the Complainant is a blatant infringement of the SWAROVSKI trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark SWAROVSKI based on different trademark registrations in China. This trademark is a strong and very distinctive mark. The disputed domain name contains this trademark as the first word. The other part of the disputed domain name (the word “save”) could be seen as referring to “save” in the meaning of “save money” and in that sense is descriptive. The addition of this word to the word “swarovski” does not change the conclusion that there is confusing similarity between the trademark SWAROVSKI of the Complainant and the disputed domain name. In making the comparison between the trademark and the disputed domain name the generic Top-Level Domain (“gTLD”) suffix is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademarks. Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First of all, the Respondent makes a commercial use of the disputed domain name by offering products, identical with, or similar to the products offered for sale by the Complainant under its SWAROVSKI trademarks. It is unclear whether the products offered by the Respondent are genuine Swarovski products; however the Complainant made it clear that it did not give permission to the Respondent to use any of the SWAROVSKI trademarks and the Complainant also states that the products are being sold by the Respondent without there being any control by the Complainant over the quality of the such products. Even if the Respondent would only sell original Swarovski products (which has not become clear in this case because the Respondent did not file a response), this would not automatically give him the right to use the trademark in the disputed domain name. One of the factors that UDRP panels have held as being relevant in this context is that the respondent’s website accurately and prominently discloses the relation with the trademark owner, which in this case has not been done.
The Respondent did not present any allegations or evidence of rights or legitimate interests he might have in the disputed domain name. In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls that the trademark SWAROVSKI is a globally well-known trademark and is used and registered before the disputed domain name was registered. It must be held that the Respondent knew of the existence of the trademark at the time of its registration, which is clearly reflected by the fact that he offers for sale products identical or similar to the products offered for sale by the Complainant and using the SWAROVSKI trademarks. In doing this the Respondent creates the impression of being connected to the Complainant which is not the case. Under paragraph 4(b)(iv) of the Policy registration and use of the disputed domain name in order to intentionally attract customers by creating a likelihood of confusion with the trademarks of the Complainant is a clear indication of bad faith registration and use of the disputed domain name. The Complainant points at the case Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 (<swarovski-crystal.cc>) in which the panel stated that “By registering and using the disputed domain name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead 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 the Complainant. None of which the Panel can find, on the basis of the record in the Case File, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.” This Panel is of the opinion that such reasoning equally applies in the case. The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <swarovskisave.com> be transferred to the Complainant.
Date: June 3, 2014