WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. WhoisGuard Protected / Person, Peter D
Case No. D2014-0585
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard Protected of Panama, Panama / Person, Peter D of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskioutlets.biz> is registered with eNom (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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 23, 2014.
The Center verified that the Complaint together with the amendment to 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 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2014.
The Center appointed Andrew Mansfield as the sole panelist in this matter on May 23, 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 is a corporation organized under the laws of the Principality of Liechtenstein, with its principal place of business at Triesen, Liechtenstein. The Complainant uses the SWAROVSKI Mark in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries.
Complainant has registered the SWAROVSKI Mark globally. Among the long list of nations in which the SWAROVSKI Mark is registered, Panama, the European Union, and the United States of America are each represented.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant's official website, located at "www.swarovski.com." The Swarovski website enables Internet users to access information regarding Swarovski and its merchandise and to purchase genuine Swarovski products.
The Respondent registered the disputed domain name on February 8, 2014 and is operating an online shop in the English language that offers for sale various purported Swarovski products, including, but not limited to, "Swarovski Pendants", "Swarovski Bangles", and "Swarovski Earrings."
5. Parties' Contentions
The Complainant states that it is the exclusive owner of famous and well known registered trademarks in Panama, the United Kingdom, the United States and globally, one of which is the trademark in the word SWAROVSKI (the "SWAROVSKI Mark"). The Complainant further alleges that the disputed domain name contravenes paragraph 4(a)(i) of the Policy as it is identical or confusingly similar to the trademark in which the Complainant has rights. The Complainant argues that the Respondent is in contravention of paragraph 4(a)(ii) of the Policy because the Respondent has no rights or legitimate interests in the SWAROVSKI Mark. Finally, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith in contravention of paragraph 4(a)(iii) of the Policy.
The Complainant relies upon previous WIPO UDRP administrative panels which have found that coupling a common word with the Complainant's mark or even a word similar to the Complainant's mark in a domain name, especially a well-known mark like the SWAROVSKI Mark, creates confusion based on the similarity of the disputed domain name and the trademark. The Complainant refers to Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139 in support of this proposition.
The Complainant says the disputed domain name is being used to advertise purported products of the Complainant and misdirects Internet traffic to a website which wrongly suggests a connection with the Complainant. It says that such a use is contrary to a bona fide offering of goods or services or a legitimate interest and relies upon previous cases such as Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.
The Complainant requests that the Panel issue a decision that the registration of the disputed domain name should be transferred to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The disputed domain name is identical with or confusingly similar to a trade mark 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.
Even when a respondent defaults, as is the case here, a complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Further, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate."
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark SWAROVSKI. The submitted evidence establishes the Complainant's products have been sold on a world-wide basis under this trademark and are very well known. The Complainant has a wide range of registered trademarks for the word "SWAROVSKI". Of most relevance to this matter is the word mark SWAROVSKI, referenced in this decision as the SWAROVSKI Mark.
The Domain Name is confusingly similar to the SWAROVSKI Mark. Prior UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name". See, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark. DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694.
It is also established that the addition of a generic term (in this case, the word "outlets", which simply suggests a discount business of the Complainant) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. The simple addition of a generic or descriptive term to a trademark does not minimize the likelihood of confusion. PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.
Accordingly the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent must carry the burden of demonstrating a right or legitimate interest in the disputed domain name. By matter of default, the Respondent has failed to do so, and the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel finds that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant's rights in the SWAROVSKI Mark, as it is inconceivable that the Respondent was unaware of the Complainant's rights in the SWAROVSKI Mark. In this finding, the Panel is in accord with prior UDRP decisions, such as Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779. The Panel agrees with the Complainant that the selection of the disputed domain name, which wholly incorporates the SWAROVSKI Mark, cannot be a coincidence.
The Panel finds that the disputed domain name is also being used in bad faith. The Respondent expends no effort to indicate that it is not associated with the Complainant. The Panel joins in the UDRP decisions of other panels that have found that the use of a domain name by a registrant for the sale of products that are similar or identical to the Complainant's products is consistent with the finding of bad faith use under the Policy. See, e.g., Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170.
The Panel finds that the use of the SWAROVSKI Mark in the disputed domain name was undertaken and is, in fact, creating a likelihood of confusion with the Complainant's SWAROVSKI Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website by the Complainant. This is often referred to as initial interest confusion and is a sufficient basis upon which this Panel finds that the disputed domain name was registered and is being used in bad faith under 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 <swarovskioutlets.biz> be transferred to the Complainant.
Date: June 6, 2014