WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. PrivacyProtect.org / MURAT KİLKİS

Case No. D2013-1049

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is PrivacyProtect.org of Queensland, Australia / MURAT KİLKİS of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <swarovskiturkiye.com> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2013, 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 June 18, 2013, 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 June 18, 2013.

On June 18, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On June 18, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. The Center received an informal email communication from the Respondent on June 25, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified parties about the commencement of panel appointment process on July 15, 2013.

The Center appointed Kaya Köklü as the sole panelist in this matter on July 19, 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 renowned producer of fashion jewellery with more than 1,250 own and 1,100 partner-operated boutiques worldwide.

It is the owner of the trademark SWAROVSKI, registered and used for various kinds of goods and services in different classes, including jewellery. The Complainant has trademark registrations globally, including in Turkey. According to the case file, the first trademark in Australia was registered in 1968. The first trademark registration in Turkey dates back to the year 2008.

Furthermore, the Complainant holds and operates various domain names incorporating the SWAROVSKI trademark, including <swarovski.com> and <swarovski.net>.

The Respondent is apparently an individual from Turkey.

The disputed domain name <swarovskiturkiye.com> was registered on February 15, 2013. At the time the Complaint was filed, the disputed domain name did not revert to an active website.

On June 25, 2013, the courier service informed the Center that the Respondent refused to accept a written notice of the commencement of administrative proceedings sent to him by the Center.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI trademarks as it fully incorporates the Complainant’s firm name and trademark. The Complainant argues that the only difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the term “turkiye”. It is argued that “the addition of the term “turkiye” could lead consumers located in Turkey into thinking that the [disputed] domain name provides information about the sale of Swarovski products in Turkey.” The Complainant believes that the addition of a generic term like “turkiye” does “not negate a finding of confusing similarity but serves to reinforce similarity”.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its SWAROVSKI trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the SWAROVSKI trademark in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the wide recognition of the SWAROVSKI trademark, including in Turkey, the Respondent was aware of the SWAROVSKI trademark when registering the disputed domain name. Furthermore, the Respondent’s attempt to transfer the disputed domain name to the Complainant only in return of a considerable amount of money, shall also indicate its bad faith registration and use.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

However, the Center received an email communication from the Respondent on June 25, 2013. In its email communication, the Respondent refuses any raised claims by the Complainant. Without addressing particular issues on the merits of the case, the Respondent confirms that it registered the disputed domain name for commercial purposes. Furthermore, the Respondent states that it will not accept any panel decision on the transfer of the disputed domain name, if the Complainant does not pay an appropriate amount of money in return.

6. Discussion and Findings

To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or response to the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language, in particular as it was apparently able to conclude an English registration contract with a privacy service located in Australia and to send an email communication in the English language to the Center on June 25, 2013.

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that independent research, i.e., visiting the website linked to the disputed domain name, has been performed by the Panel on July 25, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).

Finally, it is noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the SWAROVSKI trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding SWAROVSKI. As evidenced in the Complaint, the Complainant is the owner of a various word and figurative SWAROVSKI trademarks in Turkey and in many other jurisdictions.

Although not identical, the disputed domain name fully incorporates the Complainant’s SWAROVSKI trademark.

The disputed domain name differs from the SWAROVSKI trademark mainly by the addition of the Turkish term “turkiye”, which means “Turkey” in the English language. In the Panel’s view, the addition of the name of a country like “turkiye” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s SWAROVSKI trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the country name “turkiye” will enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant and its products offered for sale in Turkey.

The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s SWAROVSKI trademark in the disputed domain name.

In the absence of a proper Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services. On the contrary, the Respondent even confirmed in its email communication to the Center on June 25, 2013, that it registered the disputed domain name for commercial purposes only. The Panel concludes from this statement that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Due to the notoriety of the Complainant’s SWAROVSKI trademark, the Panel believes that in the present case any use of the SWAROVSKI trademark by the Respondent needs to be assessed as an unauthorized and illegitimate use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

First, the Panel believes that the Respondent must have been well aware of the SWAROVSKI trademark when it registered the disputed domain name in February 2013. At the date of registration of the disputed domain name, the Complainant’s SWAROVSKI trademark was already well known for many years in Turkey and in many other jurisdictions.

Furthermore, the Panel shares the view of the Complainant that the Respondent’s main purpose is to gain commercial benefit from the notoriety of the Complainant’s trademark. In particular, the Respondent’s offer to transfer the disputed domain name only in return of an appropriate amount of money indicates that the Respondent registered and has used the disputed domain name in bad faith.

Overall, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent and believes that the above demonstrates a typical cybersquatting case, which the UDRP was designed to stop.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 <swarovskiturkiye.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: July 25, 2013