WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Hao Li
Case No. D2015-0250
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, of Colombo, the Democratic Socialist Republic of Sri Lanka.
The Respondent is Hao Li of Hanansheng, the People's Republic of China ("China").
2. The Domain Names and Registrar
The disputed domain names <gioielliswarovskiprezzi.com>, <swarovskibijoux-fr.com>,
<swarovski-osterreich.com>, <swarovskipascher.com>, and <swarovskisitoufficiale.com> (the "Disputed Domain Names") 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 February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 18, 2015, 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 February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 25, 2015. 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 which it uses in connection with crystal jewelry, stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. The Complainant has production facilities in 18 countries, with 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 through 1,100 partner-operated boutiques worldwide. The Complainant's approximate worldwide revenue in 2012 was EUR 3.08 billion.
The Complainant is the owner of numerous trademarks for SWAROVSKI (the "SWAROVSKI Mark"). The registrations include community trademark registrations in France, Germany, Italy and Austria, and registrations in China, where the Respondent is located. The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI Mark throughout China, France, Germany, Italy, Austria and worldwide. As a result, the SWAROVSKI Mark has become famous and well known throughout the world.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which resolve to the Complainant's official website, located at "www.swarovski.com". The website enables Internet users to access information about the Complainant and its merchandise and to purchase genuine products bearing the SWAROVSKI Mark.
The Disputed Domain Names were registered on September 9, 2014.
The Disputed Domain Names <swarovski-osterreich.com>, <swarovskisitoufficiale.com>, and <gioielliswarovskiprezzi.com> resolve to websites that offer alleged genuine SWAROVSKI jewelry for sale (the "Websites").1 The Disputed Domain Names <swarovskibijoux-fr.com>, and <swarovskipascher.com> do not resolve to a website.
Though the Respondent claims at the Websites that the products sold are of high quality and are authentic, the Complainant does not guarantee the authenticity or quality of the products sold at the Infringing Websites. For example, in the "About Us" section of the website at the domain name <swarovskisitoufficiale.com> the Respondent claims that the online shop provides for sale products that are crafted using "high quality materials".
The language of this proceeding is English, which is the language of the registration agreement.
5. Parties' Contentions
The Complainant contends that:
- The Complainant has exclusive rights in the SWAROVSKI Mark, which is registered globally since, at least, 1987.
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are 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 Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to that trademark or trademarks.
It is uncontroverted that the Complainant has established rights in the SWAROVSKI Mark based on both longstanding use as well as its numerous international trademark registrations.
The Panel finds that the Disputed Domain Names are nearly identical, or if not identical, are confusingly similar to the Complainant's SWAROVSKI Mark. The use of a prefix or suffix with the Complainant's Mark does not necessarily negate a finding of confusing similarity and can serve in some circumstances to reinforce the similarity. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word "shop" was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks).
Thus, the use of the words "bijoux" (meaning "jewelry" in French), "pas cher" (meaning "cheap" or "inexpensive" in French), "sito" (meaning "website" in Italian), "ufficiale" (meaning "official" in Italian), "gioielli" (meaning "jewelry" in Italian) and "prezzi" (meaning "prices" in Italian) in the Disputed Domain Names does not render them any less confusingly similar to the SWAROVSKI Mark. See Swarovski Aktiengesellschaft v. zenger zenger, WIPO Case No. D2012-1360 ("Given the fame and notoriety of the Complainant's SWAROVSKI marks, the addition of the word 'bijoux' which means jewelry does not provide sufficient distinction from the Complainant. On the contrary, the addition of the word 'bijoux' may serve to heighten consumer confusion as it relates to the jewelry and accessories business which the Complainant is in and for which the SWAROVSKI marks are used on."); Swarovski Aktiengesellschaft v. Jennifer Adams, WIPO Case No. D2013-1563 ("the elements 'online', 'outlet', 'cheap' and the hyphen, are not sufficient to avoid confusing similarity"); Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170 ("The addition of the term 'official' as a prefix in the disputed domain name does not lessen the confusing similarity between the disputed domain name and the Complainant's trademark. On the contrary, the term 'official' attenuates such confusion that the Respondent 'officially' represents the Complainant which is clearly not the case."); Swarovski Aktiengesellschaft v. Gioieilli Swarovski, WIPO Case No. D2013-1768 ("the term 'gioielli' describes the Complainant's major product area and thus does not render the disputed domain name any less confusing").
Moreover, the addition of a geographical name or indicator, such as "osterreich" (meaning "Austria" in German) or "fr" (the country code for France) to a domain name does not avoid confusing similarity. See Swarovski Aktiengesellschaft v. Wen Ben Zhou, WIPO Case No. D2014-0886 ("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.").
Further, although the Disputed Domain Names <swarovskibijoux-fr.com> and <swarovski-osterreich.com> contain hyphens, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not "serve to dispel Internet user confusion here")); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY.").
Finally, the addition of a generic Top-Level Domain ("gTLD") such as ".com" in a domain name is technically required. Thus, it is well established that a gTLD may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademarks. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Names for commercial gain.
Three of the Disputed Domain Names resolve to the Websites. Two are passively held. The latter use clearly does not give rise to any rights or legitimate interests. While the reselling of trademarked goods can in some instances create rights in a domain name which contains this trademark, that is not the case here because, inter alia, the Websites do not disclose the Respondent's relationship (or lack thereof) with the trademark owner. See Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that a 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 a respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product on respondent's website or location.
The Panel finds that based on the evidence submitted by the Complainant, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Complainant has developed a worldwide reputation for the SWAROVSKI Mark in the jewelry industry for decades and its trademarked products are sold worldwide. The Respondent's unauthorized advertising and sale of the Complainant's products through the Websites strongly suggests that the Respondent knew of the Complainant's trademark prior to registration of the Disputed Domain Names. 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."); Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 ("given the fame of the Complainant's trademark and the use of the domain name, the Respondent must have been aware of the Complainant's trademark when the domain name was registered").
Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Names was to exploit consumer confusion for commercial gain. It was also done for the specific purpose of trading on the name and reputation of the Complainant and the SWAROVSKI Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law."). This conclusion holds both for the Websites and Disputed Domain Names passively held. The Panel finds that this conduct constitutes bad faith registration and use of the Disputed Domain Names under the Policy. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Second, the registration of the Disputed Domain Names reproducing in its entirety the registered trademark of the Complainant is clearly aimed to disrupt the Complainant's business by diverting Internet users who are searching for the Complainant's products from its genuine website. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Finally, the fact that the Respondent has registered multiple domain names incorporating the SWAROVSKI Mark indicates that the Respondent has registered the Disputed Domain Names in order to prevent the Complainant from reflecting the SWAROVSKI Mark in a corresponding domain name. See Swarovski Aktiengesellschaft v. Wen Ben Zhou, WIPO Case No. D2014-0886. This also indicates that the Respondent is involved in a pattern of such conduct under paragraph 4(b)(ii) of the Policy. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <gioielliswarovskiprezzi.com>, <swarovskibijoux-fr.com>, <swarovski-osterreich.com>, <swarovskipascher.com> and <swarovskisitoufficiale.com> be transferred to the Complainant.
Lynda M. Braun
Date: March 28, 2015
1 The Websites to which the Disputed Domain Names resolve state that the products sold are of high quality and are authentic. Although the Respondent is not an authorized reseller of genuine Swarovski products, it is beyond the scope of this decision for the Panel to conclude whether the merchandise on those websites is counterfeit or authentic.