WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. swarovskishop.co swarovskishop.co
Case No. DCO2013-0020
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is swarovskishop.co swarovskishop.co of Venice, Italy.
2. The Domain Name and Registrar
The disputed domain name <swarovskishop.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2013. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2013, 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 August 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2013.
The Center appointed Stefan Naumann as the sole panelist in this matter on September 6, 2013. 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 Liechtenstein company that produces cut crystal and jewelry stones notably for fashion, jewelry and home accessories distributed both in its own boutiques and in partner boutiques, and online on its website “www.swarovski.com”. It owns three European community and four international word marks swarovski. The international word marks designate Colombia. The earliest relevant trademarks were registered in Colombia on November 27, 2007, and are currently in effect according to the print-outs from the databases and copies of documents that were submitted by the complainant.
All of the trademarks were filed before the disputed domain name <swarovskishop.co> was registered on November 27, 2012.
The evidence shows that the website that appears at “www.swarovskishop.co” features an elaborate imitation of the complainant’s website, including high quality photographs, use of product categories all of which begin with the term “swarovski”, product names all of which begin with “swarovski”, imitation of co-branded swarovski products such as hello kitty jewelry, page names such as “swarovski online shop, swarovski crystal shop 80% - 90% off”, an about us page designed to lure visitors into believing that they are on a website that sells swarovski products, and a “2013 © swarovski shop, all rights reserved” legal notice. Each product is shown with a crossed out price that is up to ten times the actual sale price that appears right under it and is not crossed out.
5. Parties’ Contentions
The Complainant asserts that the Respondent has no relationship with the Complainant and has no permission from the Complainant to use any of the Complainant’s trademarks.
The Complainant asserts that the Respondent’s registration and use of the disputed domain name violates the Complainant’s rights in the registered SWAROVSKI trademarks, and that the disputed domain name is used by the Respondent solely to sell infringing products in its online shop by creating a likelihood of confusion. In this context, the Complainant argues that the addition of the term “shop” does not diminish the risk of confusion, and offers further detailed analysis in support of its case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i). the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii). the Respondent has no rights or legitimate interests with respect to 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
The disputed domain name combines the term “Swarovski” with the term “shop”. The disputed domain name is confusingly similar to the Complainant’s trademarks since consumers may expect to land on a website of the Complainant when typing in the Complainant’s trademark SWAROVSKI together with the term “shop”, which is commonly understood.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and finds no indication in the evidence that the Respondent claims or could have claimed rights or legitimate interests of its own in the terms “Swarovski Shop”. The Complainant states that it has not authorized the Respondent to use the term “Swarovski” and that the Respondent sells under the SWAROVSKI trademark products that are not products of the Complainant.
The Panel notes that the Respondent uses the terms “Swarovskishop.co Swarovskishop.co” as its name in its registration of the disputed domain name. The Respondent’s name “Swarovskishop.co Swarovskishop.co” cannot however support a claim of rights or legitimate interests on the basis that the Respondent is generally known under the term “Swarovskishop.co” that it also uses for the disputed domain name. There are two reasons for this. The Respondent’s use of the disputed domain name as its company name or trade name cannot create a defense under paragraph 4(c)(ii) of the Policy where the domain name was registered in bad faith. See Neteller plc v. Prostoprom, WIPO Case No. D2007-1713. In addition, the sale of what appear to be infringing goods does not constitute a bona fide use and thus cannot, in the view of this Panel, create a right or legitimate interest in the use of the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.
The Panel considers that in the present case, the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent’s use of an elaborate website imitating the Complainant’s website selling products that are likely to be counterfeit indicates that the Respondent registered and is using the disputed domain name in bad faith. In addition, the Panel notes that contrary to a legitimate business operation, the Respondent has made it impossible to be contacted. The evidence thus shows that the Respondent’s address and phone numbers are wrong. Furthermore, the ccTLD “.co” does not correspond to the Respondent’s alleged place of business in Italy, but in this case appears to be a form of typo squatting on the misspelling of the gTLD “.com”. The sophisticated deception carried out by the Respondent on its website at the disputed domain name in order to trade on the reputation of the Complainant’s trademarks further supports a finding that the disputed domain name was registered and is used in bad faith.
The Panel therefore also 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 domain name <swarovskishop.co> be transferred to the Complainant.
Date: September 20, 2013