WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Noe Man
Case No. D2014-0586
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Noe Man of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskimalaysia.com> (the "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 April 10, 2014. On April 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 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 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2014.
The Center appointed Tee Jim Tan, S.C. 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
4.1 The Complainant is Swarovski Aktiengesellschaft, a corporation organized under the laws of Liechtenstein, with its principal place of business in, Liechtenstein. It is the proprietor of a number of International and Community Trademark registrations for the word mark SWAROVSKI (the "Mark") as well as device marks bearing the Mark (both the Mark and the device marks will collectively be referred to as the "SWAROVSKI Marks") in Class 14. In particular, in China and Malaysia, it has been the registered proprietor of the SWAROVSKI Marks in Class 14 since 1987. The Complainant also owns several domain names, such as <swarovski.com> and <swarovski.net>. These domain names resolve to the Complainant's official website located at "www.swarovski.com" which was owned by the Complainant since 1996.
4.2 The Complainant uses the SWAROVSKI Marks in respect of crystal jewelry stones and crystalline semi-finished products for the fashion, jewelry, home accessories, collectibles and lighting industries. It has production facilities in 18 countries, distributes its products in 42 countries and has a presence in more than 120 countries.
4.3 In 2012, the Complainant sold its products in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. In 2012, the approximate worldwide revenue of the SWAROVSKI group of companies is EUR 3.08 billion. In support of its claim that it had expended substantial time, effort and money in advertising and promoting the SWAROVSKI Marks in China, Malaysia and worldwide, the Complainant exhibited with its Complaint extracts from publications concerning its products.
4.4 The Respondent is the registrant of the Domain Name at which the website "www.swarovskimalaysia.com" is located (the "Website"). The Website purportedly operates an online shop offering products bearing the SWAROVSKI Marks to customers located in Malaysia. The Domain Name was registered on January 11, 2014.
5. Parties' Contentions
Amongst others, the Complainant contends as follows:
5.1 It has very strong rights in the SWAROVSKI Marks based on (a) its extensive use of the marks, including in connection with the Website and (b) the numerous trademark registrations for the SWAROVSKI Marks. The Mark is a made-up word, not a descriptive or generic word, to which the Complainant has clear rights as confirmed by the decision of Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857.
5.2 The Domain Name is identical or confusingly similar to the Mark.
5.2.1 The Domain Name incorporates in its entirety the Mark. This is sufficient to establish that the Domain Name is identical or confusingly similar for purposes of the Policy.
5.2.2 Given the reputation and renown of the Mark, most Internet users who see the Domain Name are likely to immediately recognize the Mark and assume that the Domain Name is owned, controlled or approved by the Complainant. In addition, consumers and other third parties who search the Internet for legitimate information about the Complainant and its SWAROVSKI products may be directed to the Internet address incorporating the Domain Name, creating a probability of confusion.
5.2.3 There is nothing more than the geographical name "Malaysia" to distinguish the Domain Name from the Mark. However, the addition of a geographical name or indicator to the Mark does not negate a finding of confusing similarity but serves to reinforce the similarity.
5.3 The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
5.3.1 There is no evidence that the Respondent has rights or legitimate interests in the Domain Name. The Respondent registered the Domain Name after the Complainant had made extensive use of the SWAROVSKI Marks and after the Complainant had obtained registrations for its SWAROVSKI Marks in countries around the world.
5.3.2 At no time did the Complainant ever authorize or permit the Respondent's registration of the Domain Name, and there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization for the Respondent to use or register the Domain Name.
5.3.3 The Complainant believes that the Respondent's only use of the Domain Name is to confuse consumers into believing that the Website is an official website of the Complainant and/or that the Respondent is affiliated with or is authorized to sell the Complainant's products, especially to customers located in Malaysia.
5.3.4 There is nothing in the Website that advises consumers that the Website is not sponsored by or affiliated with the Complainant.
5.3.5 There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.
5.4 The Domain Name was registered and used in bad faith for the following reasons:
5.4.1 Given that the Respondent has never been authorized by the Complainant to use the SWAROVSKI Marks, the fact that the Respondent registered the Domain Name establishes use and registration of the Domain Name in bad faith. As the Complainant's SWAROVSKI Marks enjoy wide recognition, it is inconceivable that the Respondent was unaware of the SWAROVSKI Marks when it registered the Domain Name. By using and registering the Domain Name, the Respondent is relying on the established goodwill and consumer recognition of the SWAROVSKI Marks to drive traffic to the Website and to offer for sale products that are similar to the Complainant's products.
5.4.2 The Respondent's registration and use of the Domain Name is to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the SWAROVSKI Marks in relation to the source, sponsorship, affiliation or endorsement of the Website or of a product or service offered on the Website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(1) The Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in absence of exceptional circumstances, decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
6.1 The Complainant has provided evidence of its trademark registrations for the SWAROVSKI Marks in several countries including Malaysia. The Complainant has also provided evidence showing that the SWAROVSKI Marks are widely recognized and enjoy goodwill and reputation. On the basis of the evidence, the Panel is satisfied that the SWAROVSKI Marks are distinctive of the Complainant's products and that the Complainant has rights in the SWAROVSKI Marks.
6.2 It is noted that the Domain Name incorporates the Mark in its entirety. Thus, in the Panel's view, the Domain Name is substantially similar to the Mark in visual and aural terms, and the similarity is likely to mislead the public and Internet users to believe, and to act on the belief, that the Domain Name belongs to the Complainant or is in some way associated with the Complainant. Further, the likelihood of confusion is likely to be increased due to the fact that the Website of the Respondent operates an online shop offering products which not only have the SWAROVSKI Marks but are also identical with or similar to the products sold by the Complainant under the Marks.
6.3 The Panel agrees that the likelihood of confusion is unlikely to be dispelled by the addition of the geographical name "Malaysia". In this regard, it also agrees with the panel in Swarovski Aktiengesellschaft v. jiogabnkya jvnhyjnxb, WIPO Case No. D2013-1705 which held, in relation to the domain name <www.swarovskijapan.com>, that the addition of a geographical name or indicator to a trademark, and in particular to the SWAROVSKI trademark, does not serve to differentiate the domain name from the trademark. There are several other decisions which held to similar effect in UDRP cases involving offending domain names containing the mark or name SWAROVSKI: see, e.g., Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022; and Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067. In the Panel's view, these decisions are further supported by the fact that the distinctive and dominant element in the Domain Name is the word or mark SWAROVSKI. The addition of the geographical name (such as "Japan" and "Malaysia") would in fact increase the likelihood of confusion.
6.4 Hence, the Panel is satisfied that the Domain Name is likely to be confused with the SWAROVSKI Marks and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
6.5 Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant's rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent's use 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 before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(3) 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.
6.6 Regrettably, the Respondent has not filed a Response, and the Panel does not therefore have before it any evidence of the circumstances set out above or any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name.
6.7 Generally speaking, once a complainant makes a prima facie showing based on available evidence, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. The consensus position on this point is well-stated in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110:
"While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complainant in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4(c) of the Policy."
6.8 In addition, the Panel notes paragraph 14 of the Rules which states:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate."
6.9 When applying this provision, previous UDRP panels have generally concluded that the respondent's default does not automatically result in a decision in favour of the complainant. Nevertheless, a panel may draw negative inferences from the respondent's default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. Indeed, several cases decided under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant's claims, it may be inferred that the claims are true and that the respondent knows its website at the disputed domain name is misleading: see, e.g., Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, where the panel inferred the lack of response as "indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights".
6.10 In the present case, the Panel would make the same inference, especially as there is also no evidence that prior to its registration of the Domain Name, the Respondent is or has been known by the name "Swarovski" or that it has used or registered trademarks that are identical with or similar to the name. On the contrary, the Panel accepts that the SWAROVSKI Marks have been widely used and recognised prior to the date of registration of the Domain Name such that at that date, the Respondent knew or must have known that the Complainant owns the rights to the SWAROVSKI Marks. Moreover, the Panel notes that the Website does not accurately and prominently disclose the relationship between the Complainant and the Respondent.
6.11 For the above reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.12 In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name; or
(ii) Circumstances showing that the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.
6.13 By failing to file a Response to the serious claims of the Complainant, the Respondent did not take the opportunity to demonstrate that it had legitimate reasons to register and use the Domain Name and to assist the Panel to consider if the claims are legitimate and properly made out. If the Respondent legitimately registered and/or used the Domain Name in good faith, there is no reason for it to fail to submit a response and challenge the Complainant's claims. In the Panel's opinion, the failure to file a Response is itself indicative of the fact that the Domain Name was registered and is being used in bad faith by the Respondent.
6.14 Numerous cases decided under the Policy indicate that a finding of bad faith may be made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name: see, e.g., Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038.
6.15 In the present case, the Complainant has registrations of the SWAROVSKI Marks worldwide (as well as in China and Malaysia) which pre-date the Respondent's registration of the Domain Name on January 11, 2014. It has also provided documentary evidence and extracts from its website "www.swarovski.com" showing its use of the SWAROVSKI Marks in relation to its products for several years. Hence, it is implausible that the Respondent was unaware of the SWAROVSKI Marks prior to January 11, 2014.
6.16 In these circumstances, it can be inferred from the Respondent's choice of the Domain Name that its intent was or must have been to create a false impression of an association with the Complainant and/or the Complainant's products. This inference is enhanced by the Website which operates an online shop utilizing the SWAROVSKI Marks and offering for sale products that are similar to the Complainant's products.
6.17 The Panel is satisfied on the balance of probabilities that the Domain Name was registered and is being used in bad faith. It therefore finds for the Complainant in relation to paragraph 4(a)(iii) 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 Domain Name <swarovskimalaysia.com> be transferred to the Complainant.
Tee Jim Tan, S.C.
Date: June 3, 2014