WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. mei lan
Case No. D2014-0885
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is mei lan of donguang, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskis-india.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 May 27, 2014. On May 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2014.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 24, 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 leading producer of cut crystal, 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 1,100 partner-operated boutiques with worldwide revenue of approximately EUR 3.08 billion.
The Complainant has registered numerous trademarks consisting of or comprising SWAROVSKI worldwide, including a selection of registrations applicable in China and India. The SWAROVSKI trademark was registered in China on July 30, 1987 (No. 384001) and has been renewed through July 29, 2017; it was also registered in India on February 15, 1994 (No. 489520) with renewal through April 19, 2019. The Complainant has registered several domain names which point to its official website with information and online merchandise, including <swarovski.com>, registered on January 11, 1996, and <swarovski.net>, registered on April 16, 1998.
The disputed domain name <swarovskis-india.com> was registered on January 8, 2014, and is scheduled to expire on January 8, 2015. The language of the Registration Agreement is English.
The Panel reviewed printed pages from the website to which the disputed domain name resolved as of May 27, 2014, submitted in Annex J to the Complaint, and determined that the website used the SWAROVSKI trademarks to advertise what the Complainant alleges are purported Swarovski products.
5. Parties’ Contentions
The Complainant contends that it has exclusive rights in the SWAROVSKI trademark in connection with crystal jewelry and crystalline semi-finished goods, and argues that the trademark is famous and well-known in China and India. The Complainant states that it has developed an enormous amount of goodwill in the SWAROVSKI trademark after substantial time, effort, and money invested in global advertisement and promotion of its high quality items.
The Complainant brought this administrative proceeding on the grounds that:
(i) The disputed domain name is confusingly similar to the SWAROVSKI trademark, and misdirects Internet users through initial interest confusion. The disputed domain name incorporates the entire SWAROVSKI trademark. The inclusion of the letter “s”, hyphen, and geographical indicator term “india” do not serve to differentiate the disputed domain name from the Complainant’s trademark;
(ii) The Respondent has no legitimate interest or rights in the disputed domain name, while the Complainant’s exclusive rights in the well-known SWAROVSKI trademark have been recognized by previous UDRP panels. The Respondent has no connection with or consent from the Complainant, and has never been known by the disputed domain name. The use of the disputed domain name to direct traffic to a website selling purported SWAROVSKI products is not a bona fide offering of goods or services; and
(iii) The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademark when registering the disputed domain name because SWAROVSKI is well-known in China, India, and worldwide, and “Swarovski” is not a descriptive or generic term. The Respondent is using the SWAROVSKI trademark to divert consumers to the website accessed through the disputed domain name, to sell them products purporting to be the Complainant’s for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided and the information provided by the Registrar in its verification response to the Center. As long as the Complainant or the Center has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Substantive Elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant must establish three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
C. Identical or Confusingly Similar
The Complainant’s trademark is a well-known, distinctive made-up word with no independent meaning. Previous UDRP panels have held that a domain name is confusingly similar if it incorporates a trademark in its entirety, or if the mark is the distinctive part of the disputed domain name (see DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
Neither the addition of the letter “s” as a suffix nor the use of a hyphen lessens the confusing similarity between the disputed domain name and the Complainant’s trademark (see Swarovski Aktiengesellschaft v. Li XiaoLi, WIPO Case No. D2012-1401; Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043). Furthermore, the addition of a geographical name or indicator does not serve to differentiate the disputed domain name from the Complainant’s trademark (see Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857).
It is possible to disregard the top-level part of the domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue (see Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416).
Thus, the additions including the letter “s”, the name of a country, a hyphen, and the generic Top-Level Domain “.com” do not detract from the otherwise clearly confusing similarity between the disputed domain name and the Complainant’s trademark, SWAROVSKI.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
D. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the Respondent has rights or legitimate interests if the disputed domain name is used for a bona fide offering of goods or service, if the Respondent has been commonly known by the disputed domain name, or if the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Here, the Complainant has asserted registration and use of the registered trademark SWAROVSKI decades prior to the Respondent’s registration of the disputed domain name. The Complainant has established that it is the owner of the well-known SWAROVSKI trademark protected worldwide, and that it has extensively used the same trademark on the Internet through its websites. The Complainant has confirmed that the Respondent is not a licensee, authorized seller, or affiliate of the Complainant.
The disputed domain name misdirects Internet traffic to the associated infringing website, where purported Swarovski products are advertised for sale. The Complainant rightfully asserts that the illegitimate commercial use is contrary to a bona fide offering of goods or services.
There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks, and the Respondent has not provided any information on a prior connection to the Complainant. 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 explanation on the record as to why it was necessary for the Respondent to adopt the word “Swarovski” in the disputed domain name.
The Respondent has failed to provide any explanation as to why the disputed domain name was chosen, and there is no indication of a bona fide offering of goods or legitimate noncommercial or fair use of the disputed domain name. Given the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
E. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy stipulates that evidence of the registration and use of the disputed domain name in bad faith may be found where the domain holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or of a product or service on the holder’s website.
The Panel notes that it is unlikely that the Respondent did not know of the SWAROVSKI trademarks when registering the disputed domain name because the Complainant’s trademark is being used to sell products through the websites to which the disputed domain name resolves. The Respondent is still using the disputed domain name to sell what purport to be the Complainant’s products, in order to trade on the renown of the Complaint’s trademarks and goodwill. The Panel is of the opinion that Respondent attempted to attract Internet users for commercial gain to its website and other online locations, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement by Complainant under 4(b)(iv) of the Policy .
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to apply, and concludes that the Respondent registered and has been using the disputed domain name 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 name <swarovskis-india.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: June 27, 2014