WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski AG v. Marius Muller
Case No. D2016-2315
1. The Parties
The Complainant is Swarovski AG of Triesen, Liechtenstein, represented by Lorenz Seidler Gossel, Germany.
The Respondent is Marius Muller of Triesen, Liechtenstein.
2. The Domain Name and Registrar
The disputed domain name <supplier-swarovski.com> is registered with Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 27, 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 a worldwide well-known producer of cut crystal, genuine gemstones and creates stones which it uses in connection with crystal jewelry, home accessories, collectibles and lighting industries. It has production facilities in 18 countries, employs more than 30,000 people worldwide and is present in more than 120 countries where it commercialized its products in about 2,500 stores. In 2014, the Complainant's approximate revenues amounted to more than EUR 3 billion.
The Complainant is the owner of numerous SWAROVSKI trademarks, the first registration dating back to 1972, on a worldwide basis, whose reputation and notoriety has to be considered as well-known.
The Respondent registered the disputed domain name <supplier-swarosvki.com> on October 7, 2015, which leads to a portal website displaying pay-per-click advertising links notably related to jewelry.
5. Parties' Contentions
The Complainant first alleges that the disputed domain name is confusingly similar to its SWAROVSKI trademarks as it entirely incorporates its trademark with the mere addition of the term "supplier", which has to be considered descriptive.
It then asserts that the Respondent has no rights nor any legitimate interests in <supplier-swarovski.com> as the Complainant has never authorized the Respondent to use its SWAROVSKI trademarks, that the Respondent has never been known by the disputed domain name and that the website attached to the disputed domain name is plainly designed to create the impression that the Respondent is associated with the Complainant, which it is not.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. The SWAROVSKI trademarks amount to well-known trademarks. The Respondent was obviously aware of the existence of the Complainant's trademarks when it registered the disputed domain name. The website attached to <supplier-swarovski.com> being used for advertising purposes only with regards to the jewelry branch notably, meant to increase ad revenue, has to be considered as a usage in bad faith. Furthermore, the Respondent uses a confusing "supplier.swarovski@[...]" email address in the WhoIs database.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous trademarks throughout the world consisting of the term "SWAROVSKI". As already ruled by several UDRP panels (Swarovski Aktiengesellschaft v. zenger zenger, WIPO Case No. D2012-1360; Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779; Swarovski Aktiengesellschaft v. Christing Jil, WIPO Case No. D2011-2241), there is no doubt in the Panel's opinion that the SWAROVSKI mark enjoys a wide reputation and can be considered as a well-known trademark.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a generic term such as "supplier" is merely descriptive and does not exclude the likelihood of confusion (Moncler S.P.A. v. Andrew Lee, MX & C Co., Ltd, WIPO Case No. D2014-0756). To the contrary, for this Panel it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be affiliated to the Complainant.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In the present case the Complainant is the owner of numerous SWAROVSKI trademarks that have to be considered as well-known. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant's trademarks. In the present case, the Complainant is the owner of numerous SWAROVSKI trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the SWAROVSKI trademarks, the Panel finds it inconceivable that the Respondent would have chosen and registered the disputed domain name <supplier-swarovski.com> in good faith, without having been aware of the SWAROVSKI trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel's opinion that the Respondent was very well aware of the Complainant's trademarks, and that the disputed domain name has been registered, and is being used to attract Internet users to the Respondent's website for commercial gain through pay-per-click advertising links as per paragraph 4(b)(iv) of the Policy.
Consequently, the Panel is of the opinion that the disputed domain name <supplier-swarovski.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
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 <supplier-swarovski.com> be transferred to the Complainant.
Date: January 5, 2017