WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Wen Ben Zhou
Case No. D2014-0886
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Wen Ben Zhou of Xiamen, China.
2. The Domain Names and Registrar
The disputed domain names <swarovskiindiaonlines.net>, <swarovskimalaysia.net> and <swarovskisingapores.net> are 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 names. 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 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 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 1250 of its own boutiques and 1100 partner-operated boutiques with worldwide revenue of approximately 3.08 billion Euros.
The Complainant owns numerous trademark registrations consisting of or comprising the word "Swarovski" worldwide, applicable in China, Malaysia, India, and Singapore. The SWAROVSKI trademark was registered in China on July 30, 1987 (No. 384001), in India on February 15, 1994 (No. 489520), in Malaysia on June 8, 1989 (No. 89/03284), and internationally on November 3, 2004 (No. 857107).
The Complainant has also registered several domain names which point to its official website with information and online merchandise, including <swarovski.com> and <swarovski.net>.
The Respondent registered domain names <swarovskiindiaonlines.net> and <swarovskimalaysia.net> on May 12, 2014, and <swarovskisingapores.net> on May 14, 2014. The language of the Registration Agreement is English.
5. Parties' Contentions
The Complainant claims that it has exclusive rights in the SWAROVSKI trademark in connection with crystal jewelry and crystalline semi-finished goods, and that the trademark is famous and well-known in China, Malaysia, India and Singapore. 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 names are confusingly similar to the SWAROVSKI trademark, and misdirect Internet users. The disputed domain names incorporate the entire SWAROVSKI trademark. The addition of the letter "s" as suffix, generic words such as "online," and geographical indicator terms such as "india," "malaysia," and "singapores" do not serve to differentiate the disputed domain names from the Complainant's trademark;
(ii) The Respondent has no legitimate interest or rights in the disputed domain names, 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 names. The use of the disputed domain names to direct traffic to purported SWAROVSKI products is not a bona fide offering of goods or services; and
(iii) The disputed domain names were registered and are being used in bad faith. The Respondent knew of the Complainant's trademark when registering the disputed domain names because SWAROVSKI is well-known worldwide. The Respondent is using the SWAROVSKI trademark to divert consumers to the websites accessed through the disputed domain names, 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
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 names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. 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).
The addition of the generic term "online" and the suffix "s" does not diminish the confusing similarity between the disputed domain name and the Complainant's trademark (see Swarovski Aktiengesellschaft v. Li XiaoLi, WIPO Case No. D2012-1401). Terms such as "online sales" are generic terms without distinctive character, and cannot avoid similarity (see Swarovski Aktiengesellschaft v. Susan Adm, WIPO Case No. D2013-2026).
The disputed domain names also include the terms "india," "malaysia" and "singapores." 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 well-established practice to disregard the top-level part of the domain name, when accessing whether a domain name is identical or confusingly similar to the mark in issue (see Société Anonyme des Eaux Minerales d'Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416).
Thus, additions including the letter "s", the name of a country, and the gTLD ".net" do not detract from the otherwise clearly confusing similarity between the disputed domain names and the Complainant's trademark, SWAROVSKI.
B. 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 names. The burden will then shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides that the Respondent has rights or legitimate interests if a disputed domain name is used for a bona fide offering of goods or service, if the Respondent has been commonly known by such disputed domain name, or if the Respondent is making a legitimate non-commercial or fair use of such disputed domain name.
The Complainant has established that it owns the well-known SWAROVSKI trademark protected worldwide and has used the same trademark online. The registration of several domain names that incorporate a well-known trademark, by a single respondent, does not create a legitimate interest in the disputed domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209).
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 Complainant has confirmed that the Respondent is not a licensee, authorized seller, or affiliate of 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. The disputed domain names misdirect Internet traffic to websites where purported Swarovski products are advertised for sale, contrary to a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy stipulates that evidence of the registration and use of a 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 Complainant's SWAROVSKI trademarks are well-known, and it is completely implausible that the Respondent did not know of said trademarks when registering the disputed domain names because the corresponding websites were used to sell purported Swarovski products. The Panel is of the opinion that Respondent attempted to attract Internet users for commercial gain to its websites, in order to trade on the renown of the Complaint's trademarks and goodwill.
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 names 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 names <swarovskiindiaonlines.net>, <swarovskimalaysia.net> and <swarovskisingapores.net> be transferred to the Complainant.
Thomas P. Pinansky
Date: July 8, 2014