WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Dallas Prevost / HOTSWAROVSKICRYSTALSALE.COM

Case No. D2013-1445

1. The Parties

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

The Respondent is Dallas Prevost / HOTSWAROVSKICRYSTALSALE.COM of California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hotswarovskicrystalsale.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2013 naming Dallas Prevost / HOTSWAROVSKICRYSTALSALE.COM as the Respondent. On August 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that HOTSWAROVSKICRYSTALSALE.COM 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 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on September 23, 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.

The Panel notes that the Center was unable to communicate with the Respondent by post in this case because the postal address provided by the Respondent upon registration of the Domain Name was found to be invalid.

4. Factual Background

The Complainant is a corporation registered in Liechtenstein. It is a producer of cut crystal and real and synthetic gemstones and supplies crystal jewellery, gemstones and other goods for the fashion, jewellery, home accessories, collectibles, and lighting industries.

The Complainant is the owner of trademark registrations in numerous territories for the word mark SWAROVSKI and for a “swan” device. The registrations include, among others:

- United States trademark number 934915 for SWAROVSKI, registered on May 30, 1972 in Classes 14 and 21, for goods and services including natural and imitation jewelry

- United States trademark number 3230029 for a “swan” device, registered on April 17, 2007 in numerous classes, for goods and services including crystal and synthetic stones and retail store services for gemstones and jewelry

- Community trademark number 3895091 for SWAROVSKI, registered on August 23, 2005 in numerous classes, for goods and services including retailing precious stones and jewellery

- Community trademark number 3920634 for a “swan” device, registered on December 7, 2009 in numerous classes, for goods and services including retailing precious stones and jewellery

The Domain Name was registered on May 18, 2013.

At the date of the Center’s formal compliance review, August 26, 2013, the Domain Name resolved to a website at “www.hotswarovskicrystalsale.com”. The website pages were headed “Swarovski Crystal, Swarovski Necklaces Outlet Shop” and featured numerous “Swarovski” branded jewellery items for sale online.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant relies on its trademark registrations referred to above. It adds that it has a presence in over 120 countries and sells its products through over 2,000 of its own and partner-operated boutiques worldwide. Its approximate worldwide group revenue in 2012 was EURO 3.08 billion. It submits that its trademark SWAROVSKI has gained the status of a well-known mark in the United States and it produces evidence of press coverage about the brand in support of that contention. It also provides evidence that it owns numerous domain names including the term “swarovski” including <swarovski.com> and <swaroivski.net> and that it operates an official website at “www.swarovski.com”. It states that by virtue of these matters it has generated enormous goodwill in the SWAROVSKI trademark, which is exclusively associated in the minds of the public with the Complainant and its high-quality products.

The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark SWAROVSKI. It argues that the terms “hot”, “crystal” and “sale” which form part of the Domain Name should be disregarded (as well as the gTLD “.com”) as they do not lessen the confusing similarity between the Domain Name and the Complainant’s trademark. The distinctive element of the Domain Name is “swarovski” and coupling common words with this distinctive element does not negate a finding of confusing similarity. Indeed, the use of the term “crystal” reinforces the confusing similarity as it refers to goods that are sold by the Complainant under the trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant states that it has never licensed or authorised the Respondent to use its SWAROVSKI trademark and that the Respondent has never been known by the name “Swarovski” and has no legitimate interests in it.

The Complainant points to the Respondent’s use of the Domain Name for the website at “www.hotswarovskicrytalsale.com”. The Complainant produces print-outs of pages from the website which are headed with the trademark SWAROVSKI and the Complainant’s “swan” device. The pages offer numerous goods for sale under the “Swarovski” brand including “Swarovski Necklaces”, “Swarovski Bracelets” and “Swarovski Earrings”. The Complainant refers to the “About Us” section of the website which states “We Offer A Best Price Guarantee. And Quality Assurance For All Goods”. The Complainant states that the Respondent is also using identical marketing information for its products as are used by the Complainant, but at no time identifies itself as being independent of the Complainant. In the light of these matters, the Complainant contends that the Respondent is attempting to confuse customers into believing that its website is an official “Swarovski” website and to pass itself off as the Complainant in order to take advantage of the Complainant’s valuable goodwill. The Complainant submits that the Respondent’s use of the Domain Name to create a false impression of a connection with the Complainant cannot give rise to rights or legitimate interests in the Domain Name.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant contends that its is inconceivable that the Respondent was unaware of the Complainant’s trademark SWAROVSKI when it registered the Domain Name and that it obviously did so with the Complainant in mind. The Respondent clearly intended to create a risk of confusion with the Complainant’s business by its use of the Domain Name and has taken no steps to prevent that risk of confusion.

With regard to the Respondent’s use of the Domain Name, the Complainant submits that the inclusion of its trademark SWAROVSKI in the Domain Name gives rise to “initial interest confusion” in that Internet users will be attracted to the Respondent’s website in the belief that it is authorised by or connected with the Complainant. Further, the Respondent has used the Domain Name and the Complainant’s trademark to attract customers for commercial gain by purporting to sell “Swarovski” products and has done nothing to identify itself as being independent of the Complainant. It has therefore intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).

The Complainant requests a transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registrations in numerous territories for the trademark SWAROVSKI, for goods and services including the retail of precious stones and jewellery. It has also established to the satisfaction of the Panel that SWAROVSKI is a well-known trademark to which significant goodwill attaches. Ignoring the gTLD “.com”, the Domain Name consists of the Complainant’s trademark SWAROVSKI together with the terms “hot”, “crystal” and “sale”. The Panel accepts the Complainant’s submission that these generic or descriptive terms do not operate to distinguish the Domain Name from the Complainant’s trademark and that the terms “crystal” and “sale” may, on the contrary, suggest a connection with that trademark insofar as they reflect the Complainant’s own products and activities.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s submissions (which are uncontradicted by the Respondent) that it has never licensed or authorised the Respondent to use its SWAROVSKI trademark and that the Respondent has not commonly been known by the Domain Name. However, it is necessary in this case to examine the Respondent’s actual use of the Domain Name, in connection with both rights or legitimate interests and the issue of bad faith.

The Respondent is using the Domain Name for the purpose of a website that offers “Swarovski” branded merchandise for sale online. Since there is no specific allegation by the Complainant that the goods offered on the website are counterfeit, the Panel will proceed on the basis that they are genuine “Swarovski” goods. Nor does the Complainant contend that the Respondent is offering any goods on the website other than “Swarovski” goods. Nevertheless, the Complainant argues that the Respondent registered and has used the Domain Name to confuse Internet users into believing that its website is an official site of the Complainant’s or is authorised by or connected with the Complainant. It makes this argument on the basis of both “initial interest confusion” and the fact that Respondent’s website makes extensive use of the Complainant’s SWAROVSKI and “swan” trademarks and branding, without making clear that the Respondent is not connected with the Complainant.

In the view of the Panel, this case falls to be determined in accordance with the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 which has been generally followed by UDRP panels in cases involving the resale by a respondent of a trademark owner’s goods. In that case the panel had regard to paragraph 4(c)(i) of the Policy which provides that a respondent may demonstrate rights or legitimate interests in a domain name if:

“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

The question in that case was whether the respondent’s use of the domain name <okidataparts.com>, which incorporated the complainant’s trademark OKIDATA, was bona fide. Based on a summary of earlier UDRP decisions, the panel identified the following four factors as being determinative of that question:

1. The respondent must actually be offering the goods or services at issue.

2. The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

3. The site must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

4. The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.

While the Oki Data case involved an authorised reseller of the trademark owner’s goods, the approach in that case has also been held by numerous UDRP panels also to apply to unauthorised resellers.

In the present case, the Panel finds that while the first, second and fourth Oki Data criteria are satisfied by the Respondent, the third is not. The Panel accepts that Complainant’s submissions that the Respondent has failed to take any steps to disclose its relationship (or in this case, lack of relationship) with the Complainant and, in particular, that it has failed to make clear that its site is neither authorised by nor connected with the Complainant. In view of the Respondent’s extensive use of the Complainant’s name and branding for the purposes of its website, including its SWAROVSKI and “swan” trademarks, the Panel finds that the Respondent’s offering of goods and services is misleading and is not bona fide for the purposes of paragraph 4(i)(c) of the Policy.

In the light of the above, and in view of there being no other evidence that the Respondent has rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no such rights or legitimate interests.

C. Registered and Used in Bad Faith

As indicated above, the issues of rights or legitimate interests and bad faith are closely interconnected in this case. Following from the Panel’s finding that the Respondent’s use of the Domain Name for its website is otherwise than in connection with a bona fide offering of goods or services, the Panel further concludes that, by using the Domain Name in connection with the misleading website referred to above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. This constitutes use in bad faith as contemplated by paragraph 4(b)(iv) of the Policy.

The Panel further concludes that the Respondent registered the Domain Name for the purpose of the bad faith use referred to above.

Finally, the Panel notes that the Respondent provided a non-existent postal address in connection with its registration of the Domain Name, which the Panel also finds to be indicative of bad faith.

In the circumstances, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.

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 Domain Name <hotswarovskicrystalsale.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: September 26, 2013