WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Steve Hosie, CJ, LLC
Case No. D2015-2351
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by Lorenz Seidler Gossel, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America ("United States") / Steve Hosie, CJ, LLC of Wheat Ridge, Colorado, United States.
2. The Domain Name and Registrar
The disputed domain name <swarovski.jewelry> is registered with Go Australia Domains, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2015. On December 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2016, the Center retransmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 19, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. Two email communications from the Respondent were received by the Center on January 25, 2016.
On February 12, 2016, the Center received from the Complainant a Supplemental Filing for consideration by the Panel.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 22, 2016. 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 one of the world's leading producers 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. It was founded in 1895 by Mr. Daniel Swarovski, who invented and patented an electric cutting machine that cut crystal more precisely than by hand. The Complainant now has a presence worldwide in more than 120 countries, operates about 2,500 stores for distributing Swarovski products and crystals, employs more than 30,000 people, and, in 2012, achieved total sales revenue of approximately EUR 3 billion.
The Complainant is the owner of numerous trademark registrations for the trademark SWAROVSKI in approximately 170 countries throughout the world, dating from at least as early as 1965. Its trademark registrations for the trademark SWAROVSKI include, in particular, Community trademark registrations covering all member states of the European Union as well as registrations in the United States, where the Respondent is located.
The disputed domain name was registered on July 29, 2015. The Complainant provided screenshots, dated November 3, 2015, of pages of the website to which the disputed domain name then resolved. Those pages show various items of clothing that appear to be offered for sale. As of the date of this Decision, the disputed domain name resolved to a website stating: "Beautiful Swarovski Jewelry and Fine Jewelry Made in the USA with Swarovski Gemstones Coming Soon". That website also contains, among other things, the text: "We will be bringing to market amazing Swarovski Jewelry (Made by Swarovski) as well as custom Pendants, Earrings, rings and other fine gold and silver jewelry with beautiful Swarovski Gemstones … We are not endorsed, nor otherwise associated with Swarovski.com."
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical, or at least highly similar, to the Complainant's famous trademarks because it incorporates the identical term "swarovski". The additional Top-Level Domain ("TLD") ".jewelry" is purely descriptive and does not preclude similarity between the disputed domain name and the Complainant's trademark, because it relates to the Complainant's well-known main business field.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent doesn't own any trademark rights regarding the term "swarovski", and has never been known by the disputed domain name; (ii) choosing to incorporate the well‑known trademark SWAROVSKI in the disputed domain name cannot be considered bona fide since it is clearly designed to misdirect Internet users to the Respondent's website where it is offering goods similar to, and purporting to be, those of the Complainant; (iii) the Respondent is not associated with the Complainant, and the Complainant has not authorized the Respondent or licensed him to use the designation "swarovski" within a domain name (or at all), and the Respondent has done nothing to identify himself as being independent from the Complainant; (iv) the Respondent doesn't offer any goods made by the Complainant, or any goods made with the Complainant's jewelry on the website resolving from the disputed domain name; and (v) the Respondent does not meet the requirements set out in the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), and will not become an official authorized reseller of the Complainant's goods.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) holding the registration of a domain name containing a well-known trademark is a clear indication of bad faith in itself; (ii) there are many previous cases under the Policy in which the assumption of bad faith has been established on the basis of the worldwide well-known character of the Complainant's SWAROVSKI trademark; (iii) the Respondent causes a significant disruption of the Complainant's business by diverting Internet users from its genuine website; (iv) given the worldwide fame of the SWAROVSKI trademark it is obvious that the Respondent was aware of the Complainant's popular and famous trademark when it applied for the registration of the disputed domain name; (v) in the absence of any rights or legitimate interests, the registration of the identical domain name was done in bad faith; (vi) no obvious steps have been taken by the Respondent to prevent the risk of confusion and there is clearly a likelihood of Internet users concluding, wrongly, that some form of association between the Complainant and Respondent exists; (vii) the disputed domain name was only registered in order to profit from the famous SWAROVSKI trademark in an attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website; and (viii) the Respondent tries to disguise his identity on the website to which the disputed domain name resolves by the use of false contact details.
In the supplemental filing filed in response to the Respondent's contentions (summarized below), the Complainant: (i) stated that the Respondent is not prepared to structure his response according to the Model Response, addressing the three conditions under the Policy, and therefore is not entitled to deny the remedies requested by the Complainant; and (ii) refuted the various points made by the Respondent, generally by reiterating its original contentions in the Complaint.
The Respondent contends that: (i) the disputed domain name was purchased legally and within the legal fair use laws concerning domain names, and is being used by the Respondent under "Nominative Fair Use"; (ii) it does not appear that the Complainant has a valid trademark for "Swarovski Jewelry", and the trademark that it does have has not been registered so as to limit others from using "Swarovski Jewelry" combined; (iii) there are over 19 million places found on the Internet of "Swarovski Jewelry", the majority of which are not owned or operated by the Complainant; (iv) it is apparent that the past cases referred to in the Complaint did not take into consideration "Nominal (sic) fair use" so as to allow the usage of trademarks in domain names and on websites; (v) "Swarovski Jewelry" are commonly used words, indicating jewelry made with SWAROVSKI crystals, which is what the Respondent is planning on doing, and will market these products using the disputed domain name <swarovski.jewelry>; and (vi) the Respondent plans to fully respect the SWAROVSKI trademark, by planning to market fine jewelry using quality SWAROVSKI gems and crystals.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the entirety of the Complainant's registered trademark SWAROVSKI and the TLD identifier ".jewelry". The Panel finds the addition of the descriptive TLD ".jewelry" does not lessen the inevitable confusion of the disputed domain name with the Complainant's trademark, given that a large part of the Complainant's business is the design, production and sale of jewelry items. The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The evidence on the record provided by the Complainant shows that the Respondent has used the disputed domain name to sell women's clothing. This use does not amount to a bona fide offering of goods giving rise to the Respondent having rights or legitimate interests in the disputed domain name. As the Complainant asserts, the Respondent is not associated with the Complainant in any way and the Complainant has not authorized the Respondent to use its trademark in this manner.
The Respondent's primary contention, putting it at its highest and in its most relevant form, would appear to be that it has rights or legitimate interests in the disputed domain name because the domain name is descriptive of the use to which the Respondent intends to put the domain name. The Respondent's asserted intended use of the disputed domain name is to resolve to a website at which the Respondent will advertise and sell jewelry items that are either made by the Complainant or that are made by the Respondent and which incorporate gemstones and crystals that are made by the Complainant.
With regards to the first asserted intended use (resale of the Complainant's jewelry), the Complainant has indicated that the Respondent is not, and will never be, an authorized reseller of jewelry made by the Complainant. In any event, this asserted intended use would not satisfy all of the requirements set out in the Oki Data case as being necessary to give rise to a reseller having rights or legitimate interests in a domain name that contains the trademark of the resold goods. In particular, the Respondent's asserted intended use would not satisfy the requirement that the Respondent sell only the trademarked goods (because of the Respondent's second asserted intended use, discussed below).
With regards to the second asserted intended use (sale of the Respondent's jewelry), items made by the Respondent that incorporate gemstones or crystals made by the Complainant could not legitimately be described as "Swarovski jewelry", since SWAROVSKI is the trademark of the Complainant and the items being sold are made by the Respondent not the Complainant.
Thus, it follows that neither the evidenced use nor the asserted intended use of the disputed domain name by the Respondent gives rise to rights or legitimate interests in the disputed domain name. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered approximately one-half of a century after the Complainant first registered its SWAROVSKI trademark. The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the Respondent's own acknowledgements, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record with respect to the Respondent's use of the disputed domain name at the date of the filing of the Complaint indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant's trademark as to the affiliation of that website. Similarly, as discussed above, the Respondent's asserted intended use would also amount to bad faith under the Policy, for the same reasoning. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used 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.jewelry> be transferred to the Complainant.
Andrew F. Christie
Date: March 7, 2016