WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. swarovskiclearance.com swarovskiclearance.com
Case No. D2014-0857
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is swarovskiclearance.com swarovskiclearance.com of Austria.
2. The Domain Name and Registrar
The disputed domain name <swarovskiclearance.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2014.
The Center appointed James Bridgeman as the sole panelist in this matter on June 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.
The Complaint states that the name of the Respondent is "swarovskiclearance.com swarovskiclearance.com swarovskiclearance.com" i.e. the disputed domain name repeated three times, whereas the WhoIs information states that the disputed domain name is registered to "swarovskiclearance.com swarovskiclearance.com" i.e. the domain name repeated twice. As the Panel finds below that on the balance of probabilities this is a false name, this Panel has amended the title of this Complaint on his own motion, and notes that this would appear merely to be an inconsequential matter that reflects the various contact information fields allowed by the registrar, but that in any event there is no question as to the Respondent's identity as confirmed by the registrar.
4. Factual Background
The Complainant which has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries, owns and uses the SWAROVSKI trademark in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries.
The Complainant owns a large portfolio of trademark and service mark registrations for the SWAROVSKI mark including the following Community Trade Mark and international trademark registrations in Portugal, which is the jurisdiction of the Respondent:
CTM SWAROVSKI registration number CTM 007462922, registered on July 21, 2009 for goods and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 15, 16, 17, 19, 20, 22, 23, 27, 28, 29, 30, 31, 32, 33, 34, 36, 37, 38, 39, 40, 42, 43, 44, 45
CTM SWAROVSKI registration number CTM 003895091 registered on August 23, 2005 for goods and services in classes 2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28, 34, 35, 41.
Austrian trademark Swarovski, registration number 55481, dated August 19, 1965 for use in relation to goods in classes 20, 21, 24, 26 and 27.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which resolve to the Complainant's official website at "www.swarovski.com".
The disputed domain name was registered on January 3, 2014 and is being used as the address of an English language website for an online shop that offers for sale various purported SWAROVSKI brand products such as "Pendants", "Bangles", "Earrings", "Bracelets".
5. Parties' Contentions
The Complainant relies on its rights in the abovementioned trademark registrations and submits that it has established an enormous amount of goodwill in the Complainant's SWAROVSKI trademark internationally through its sales, promotion and advertising of its goods and services bearing the mark. In 2012, the Complainant's products were sold in 1250 of the Complainant's own boutiques and through 1100 partner-operated boutiques worldwide. In 2012 the Complainant's group had approximate worldwide revenue of EUR3.08 billion.
The Complainant submits that the disputed domain name is confusingly similar to the SWAROVSKI mark and argues that the addition of the word "clearance" does not render the disputed domain name any less confusingly similar to the Complainant's trademark. In this regard, the Complainant cites the decision of the panel in Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name arguing that the Complainant has exclusive rights to use the SWAROVSKI mark, that the Respondent has not received any license or consent, express or implied, to use the Complainant's SWAROVSKI trademark in a domain name or in any other manner and that the Respondent has no association or affiliation with the Complainant. In this regard the Complainant cites the decisions of previous panelists in Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043 and Swarovski Aktiengesellschaft v. Luly Stephanie, WIPO Case No. D2013-0846.
The Complainant further argues that the Respondent has never been known by the disputed domain name and has no legitimate interest in the Complainant's SWAROVSKI trademark or the name "Swarovski". See, Marriott Int'l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 ("no legitimate interest can be claimed by a respondent when there is no evidence that a respondent is commonly known by the domain name.")
The Complainant further argues that the Respondent has not acquired any rights or legitimate interests in the disputed domain name through its use of the disputed domain name. The Complainant submits that the disputed domain name is being used to misdirect Internet traffic as the address of a website that purports to sell the Complainant's SWAROVSKI brand products. Such a use is not a bona fide offering of goods or services or a legitimate interest. See Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyProtect.org, WIPO Case No. D2013-0643 ("Moreover, the corresponding website operating in association with the disputed domain name <myswarovskisale.com> is using Complainant's SWAROVSKI mark to promote the goods purportedly offered by Respondent. Infringement of another's trademark mark can never create rights or legitimate interests in a corresponding domain name.")
The Complainant alleges that the Respondent is using the disputed domain name to confuse consumers into believing that the website to which it resolves is an official website of the Complainant and/or that the Respondent is affiliated with or is authorised to sell products by the Complainant.
The "About Us" section of the website to which the disputed domain name resolves states: "At 'www.swarovskiClearance.com', our merchandise goes through an extensive quality control process, to ensure that our customers only receive jewelry of the highest quality."
The Complainant submits that the disputed domain name was registered in bad faith because it was registered without the permission of the Complainant and with knowledge of the Complainant's rights in the Complainant's SWAROVSKI trademark. The Complainant argues that it is inconceivable that the registrant was unaware of the Complainant's rights in the SWAROVSKI mark when the disputed domain name was registered. See Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779 ("In light of the global and longstanding use of the SWAROVSKI mark, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame of a well-known mark like SWAROVSKI. This circumstance alone is sufficient to prove bad faith registration of the disputed domain name.")
The Complainant argues that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademark at the time of the registration of the disputed domain name, the selection of the disputed domain name, which wholly incorporates the SWAROVSKI mark cannot be a coincidence, the word "Swarovski" is not a descriptive or generic term, and the Complainant's mark is well known in Portugal and worldwide.
Furthermore, the website to which the disputed domain name resolves offers for sale a variety of Swarovski branded products such as "Pendants", "Bangles", "Earrings" and the Complainant argues that the Respondent would not have advertised products purporting to be the Complainant's products if he/she was unaware of the Complainant's business and reputation. See Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638 .
The Complainant argues that the registration of a famous mark, like the Complainant's SWAROVSKI trademark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. See Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ ning ning, WIPO Case No. D2012-0979.
Given the fame of the Complainant's SWAROVSKI trademark, the Complainant argues that there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith. See Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052. .
Furthermore, in Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 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."
The Complainant furthermore submits that the disputed domain name is being used in bad faith.
The Complainant alleges that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated Complainant's SWAROVSKI trademark in the disputed domain name, throughout the website to which it resolves and attempts to attract consumers for commercial gain by purporting to sell SWAROVSKI products. See Swarovski Aktiengesellschaft v.Luca Vogler, WIPO Case No. D2013-0664 ("The Panel also finds that Respondent's use of the disputed domain name <swarovskioutletsalez.com> is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's SWAROVSKI mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This ongoing activity is a direct violation of paragraph 4b(iv) of the Policy, and is evidence of bad faith registration and use.")
Furthermore, UDRP panels have previously stated 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, Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170 ("the Respondent's bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as "necklaces", "bracelets" and "earrings" using an identical name to the Complainant's trademark. That past practice confirms not only the Respondent's awareness that the advertised products were "Swarovski" products, but also the Respondent's actual use of the Complainant's name in bad faith.")
Many panelists have held that the Respondent's very method of infringement, using the exact Complainant's SWAROVSKI trademark to lure consumers to its website demonstrates bad faith use under the Policy. See Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 .
In addition, the Respondent's registration and use of the disputed domain name creates "initial interest confusion", which attracts Internet users to the Respondent's website because of its purported affiliation with the Complainant.
The Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name is so "obviously indicative" of the Complainant's products and services that the Respondent's use of the disputed domain name would inevitably lead to confusion of some sort" and cause disruption to Swarovski's business in contravention of paragraph 4(b)(iii) of the Policy. See AT&T v. Rice, WIPO Case No. D2000-1276.
Registration of a famous mark, such as the Complainant's SWAROVSKI trademark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. See AT&T Corp v. Woppies, WIPO Case No. D2000-1724 ("the fame and widespread use of the trademarks AT&T and ATT, the use of the letters "att" in the domain name <attanywhere.com> immediately raises questions as to its bona fides") and Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (finding bad faith registration and use because respondent was "attracting traffic that he would otherwise not get for his website").
The Respondent's attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the Complainant's SWAROVSKI trademark is compounded by the efforts to mislead consumers into believing the site was operated or authorised by the Complainant. The Respondent, without valid consent, utilises the Complainant's SWAROVSKI trademark in the disputed domain name, throughout the Respondent's website, in the "title bar" of the website and offers products identical or similar to SWAROVSKI products for sale at the website. Numerous UDRP panels have determined that this type of behaviour is indicative of bad faith. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700. See also Nikon Corp. v. Technilab, Inc., WIPO Case No. D2000-1774.
The Complainant did not send a cease and desist letter to the Respondent prior to filing this Complaint because the Complainant was concerned about the risk of cyber-flight if the Respondent had been warned in advance i.e. the transfer the disputed domain name by the Respondent to another registrant in order to delay the process and thwart the Complainant's efforts to resolve the dispute prior to commencement of a Complaint under the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(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 interests in respect of the said disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the SWAROVSKI trademark through its ownership of numerous trademark registrations and at common law through its extensive use of the mark in its global trade in goods and services.
The disputed domain name is confusingly similar to the Complainant's mark. It consists of the Complainant's distinctive mark, without alteration and in its entirety, in combination with the descriptive English language word "clearance". The dominant element of the disputed domain name is the distinctive word "Swarovski" which is identical to the Complainant's corporate name and mark. The addition of the descriptive English language word "clearance" does not serve in any way to distinguish the disputed domain name from the Complainant's trademark or lessen the likelihood that Internet users will be confused by the similarity. In fact because of the connotation associated with the word "clearance", implying the selling off of overstocked, old or otherwise unwanted inventory, the combination of the element "clearance" with the Complainant's mark increases the likelihood that Internet users will associate the disputed domain name with the Complainant's mark and therefore also increase confusing character of the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the SWAROVSKI trademark and service mark in which the Complainant has rights and the Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established the onus of proof shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name once the Complainant has made out a prima facie that the Respondent has no such rights or legitimate interests.
In this case, the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests. The Complainant is the exclusive owner of the SWAROVSKI mark, the disputed domain name is confusingly similar to the Complainant's mark, the Complainant has not given the Respondent any rights to use the mark or to register the disputed domain name, there is no evidence that the Respondent has any rights in or is known by the SWAROVSKI mark or name or the domain name and the Complainant is not associated with the Respondent in any way.
On the evidence the Respondent is using the disputed domain name as the address for an online shop selling purported SWAROVSKI branded products. The Complainant submits that the goods offered may be spurious but has not provided any specific evidence that the goods on offer are anything other than genuine, although an inference may be taken from the fact that the Respondent appears to have furnished a false name and contact information and has failed to respond to the Complaint.
This Panel finds that it is highly improbable in the circumstances that the Respondent is a re-seller of genuine SWAROVSKI products, however even if the Respondent is given the benefit of the doubt in that regard, it would not be entitled to use the confusingly similar disputed domain name in the manner in which it is being used.
The approach of UDRP Panels to the rights of re-sellers are described in the following terms in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:
"2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers in limited circumstances may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]"
The website to which the disputed domain name resolves does not accurately and prominently disclose the Respondent's non-existing relationship with the trademark holder, and in fact purports to give the impression that a bona fide relationship exists where it clearly does not. This Panel finds that the Respondent's use of the disputed domain name does not come within the well-established OKI Data principles.
According to the information provided by the registrant and recorded in the Registrar's WhoIs information the registrant's name is "swarovskiclearance.com swarovskiclearance.com" and the name of the registrant organization is "swarovskiclearance.com". There is no evidence that these names are correct. The Center's efforts to serve a physical copy of the Complaint on the Respondent disclosed that the address given by the Respondent does not exist and on the balance of probabilities the Respondent has provided a false name and name of its organization.
In the circumstances this Panel finds that Respondent has failed to discharge its burden of proof and the Complainant is entitled to succeed in the second element of the test in paragraph 4(a)(ii) of the Policy also.
C. Registered and Used in Bad Faith
Having reviewed and considered the evidence, this Panel finds that the disputed domain name was registered in bad faith. Given the significant reputation of the Complainant and its SWAROVSKI mark, it is most improbable that the Respondent was unaware of the Complainant and its rights in the SWAROVSKI mark prior to registering the disputed domain name.
On the balance of probabilities, the selection of the disputed domain name, which wholly incorporates the SWAROVSKI mark, cannot be a coincidence. "Swarovski" is not a descriptive or generic term. The Complainant's SWAROVSKI trademark is well known throughout the world including Austria where the Respondent claims to reside and the disputed domain name was chosen because of its reference to, and similarity with the Complainant's mark.
This Panel accepts the Complainant's allegations that the manner in which the Respondent is using the disputed domain name is an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's SWAROVSKI mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and the products offered on the website. This Panel finds that on the balance of probabilities the Respondent is using the disputed domain name in bad faith by taking unauthorized predatory advantage of the Complainant's goodwill and reputation in the SWAROVSKI mark.
For completeness, the Complainant makes the point that it has not sent a cease and desist letter before action because it is concerned about the possibility of cyber-flight. There is obviously no onus on a Complainant to serve a cease and desist letter or give any advance warning to a Respondent prior to serving a Complaint under the Policy.
In the circumstances this Panel finds that the Complainant has established the third and final element of the test in paragraph 4(a)(iii) of the Policy also and is therefore entitled to have the disputed domain name transferred as requested.
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 <swarovskiclearance.com> be transferred to the Complainant.
Date: July 6, 2014