WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Mie Shan
Case No. D2014-0972
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Mie Shan of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-australia.net> 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 June 9, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2014.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 6, 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 the world’s leading producer of cut crystal, genuine gemstones and created stones. It has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries around the world. In 2012, the Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. The Swarovski Group’s approximate worldwide revenue in 2012 was EUR 3.08 billion. The Complainant uses the trademark SWAROVSKI in connection with crystal jewellery stones and crystalline semi-finished goods for fashion goods, jewellery, home accessories, collectibles, and lighting industries.
The Complainant is the owner of the following registrations for the trademark SWAROVSKI in the territories of China and Australia (the “SWAROVSKI trademark”):
- The word trademark SWAROVSKI with registration number 384001, registered in China on July 30, 1997 for goods in International Class 14;
- The word trademark SWAROVSKI with registration number 224727, registered in Australia on December 6, 1968 for goods in International Class 14;
- The word trademark SWAROVSKI with registration number 478809, registered in Australia on December 22, 1987 for goods in International Class 03; and
- The word trademark SWAROVSKI with registration number 517440, registered in Australia on August 17, 1989 for goods in International Class 11.
The Complainant has registered the domain names <swarovski.com> and <swarovski.net>, which display information about the Complainant and offer its products for sale.
The disputed domain name was registered on January 8, 2014.
5. Parties’ Contentions
The Complainant submits that as a result of its extensive advertising and promotional efforts, the SWAROVSKI trademark has become famous throughout China, Australia and worldwide, and the public has come to associate the SWAROVSKI trademark exclusively with high quality items marketed by the Complainant.
According to the Complainant, the disputed domain name is confusingly similar to the SWAROVSKI trademark, as it includes this trademark in its entirety. The element “australia” and the hyphen between the two word elements do not differentiate the disputed domain name from the Complainant’s trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the SWAROVSKI trademark in a domain name or in any other manner. The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or the name “Swarovski”. The disputed domain name directs Internet traffic to the Respondent’s website, which displays the Swarovski swan logo on the home page, advertises and offers for sale purported Swarovski products and creates the erroneous impression that the website is affiliated with or authorised by the Complainant. The Complainant cannot guarantee the authenticity or quality of the products that are being offered on this website.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in the SWAROVSKI trademark. The Respondent must have been aware of the same trademark when it registered the disputed domain name, and it is unlikely that the Respondent would choose to register the disputed domain name, unless seeking to create an impression of association with the Complainant. The Respondent would not have advertised on its website products purporting to be Swarovski products if it was unaware of the reputation of the Complainant and of its SWAROVSKI trademark. The registration of a famous trademark as a domain name by an entity that has no legitimate relationship with the trademark demonstrates bad faith.
The Complainant contends that the disputed domain name is being used in bad faith. Through the use of the SWAROVSKI trademark on the Respondent’s website, as well as the design of the website and the offering for sale of products identical or similar to genuine Swarovski products on the website, the Respondent creates confusion that the disputed domain name is operated or authorised by the Complainant in order to attract for commercial gain consumers to the disputed domain name and to its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
According to Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” Also, as stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent likely has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence about the registrations of the SWAROVSKI trademark and has thus established its rights in this trademark.
It is a common practice under the Policy to disregard, in appropriate circumstances, generic Top-Level Domains (“gTLDs”) such as “.net” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is “swarovski-australia”. This section appears as a combination of two separate elements – “swarovski” and “australia”, separated by a hyphen. The first element is more prominent and is identical to the Complainant’s well known SWAROVSKI trademark, while the second element is a geographical term. In the Panel’s view, this combination of elements does not distinguish the disputed domain name from the SWAROVSKI trademark. Rather, it makes it likely that Internet users would associate the disputed domain name with the Complainant and its services and would have the impression that the disputed domain name is related to the activities of the Complainant in Australia.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the SWAROVSKI trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a case, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name “Swarovski” and is not affiliated with the Complainant, that it was not authorized or licensed to use the SWAROVSKI trademark or to register a domain name incorporating the same trademark. The Complainant also asserts that the Respondent has linked the disputed domain name to a commercial website that has not been authorized by the Complainant, on which products that purport to originate from the Complainant are offered for sale. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the inferences that the Panel may draw from the fact of a default (Rules, paragraph 14(b)). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), are present.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent are the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name.
The WhoIs information for the disputed domain name does not show a connection between the name of the Respondent and the disputed domain name. The disputed domain name is confusingly similar to the well-known SWAROVSKI trademark of the Complainant, which was registered decades before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent uses the disputed domain name for a website claiming to be an official online location for the Complainant’s products and offering products purportedly originating from the Complainant. As asserted by the Complainant, it has not authorized the website and cannot confirm whether these products are genuine. In these circumstances, it is more likely than not that Internet users may be led to wrongly believe that the Respondent’s website is endorsed by the Complainant and is dedicated to the Australian market, and to believe that the products offered there are genuine.
In the Panel’s view, the evidence in the case file shows that the Respondent was aware of the Complainant and of its SWAROVSKI trademark when the disputed domain name was registered, and the registration and use of the disputed domain name took place without the consent of the Complainant. The Panel finds it more likely than not that this registration was made in an attempt to benefit from the reputation of the SWAROVSKI trademark to attract customers to the Respondent’s website and then offer them goods of unknown quality and origin. The Panel is of the opinion that such conduct cannot give rise to rights or legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
As discussed above in relation to the issue of rights or legitimate interests, the Respondent must have been aware of the Complainant’s well-known SWAROVSKI trademark at the time of the registration of the disputed domain name, which is confusingly similar to this trademark, and without authorisation from the Complainant registered it in view of its similarity to the trademark and its potential to attract visitors looking for the Complainant’s goods. In the Panel’s view, these circumstances support a finding that the Respondent has registered the disputed domain name in bad faith.
The Respondent has not denied that the disputed domain name is linked to a commercial website that displays the Complainant’s trademark and logo and offers goods purportedly originating by the Complainant without the consent of the latter. In the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to a commercial website by creating a likelihood of confusion with the Complainant’s SWAROVSKI trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the goods offered on it. This conduct of the Respondent supports a finding of bad faith use of the disputed domain name under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and is 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 <swarovski-australia.net> be transferred to the Complainant.
Date: August 21, 2014