WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. newswarovskisale.com
Case No. D2014-0062
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is newswarovskisale.com of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <newswarovskisale.com> 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 January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 25, 2014. 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 trademark upon which the Complaint is based is SWAROVSKI.
According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the SWAROVSKI trademark, including the following community trademark registrations applicable in Italy: (i) Registration No. 003895091 dated August 23, 2005 for various classes of goods and services; and (ii) Registration No. 007462922 dated July 21, 2009 also for various classes of goods and services. Complainant’s rights in the trademark SWAROVSKI have been recognized by several WIPO UDRP panelists (for instance, Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043 and Swarovski Aktiengesellschaft v. Luly Stephanie, WIPO Case No. D2013-0846).
Complainant is a well-known producer of cut crystal, genuine gemstones and created stones, with production facilities, distribution or a presence in more than 100 countries. Complainant also owns several domain names incorporating the SWAROVSKI trademark, including <swarovski.com>, registered in 1996. The notoriety of SWAROVSKI trademark has been recognized by previous WIPO UDRP panels, e.g Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 (for <swarovski-crystal.org>).
The disputed domain name was registered on October 24, 2013. Complainant submitted copies of pages of the website to which the disputed domain name resolved at the time the Complaint was filed with the Center.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to Complainant’s registered SWAROVSKI trademarks because (i) consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark; (ii) Respondent’s use of the Complainant’s trademark causes confusion among Internet users between the disputed domain name and Swarovski approved websites; (iii) the content of a website at a domain name is irrelevant in the finding of confusing similarity and the real test for confusing similarity is whether a comparison between the trademark and the domain name reveals that there is a likelihood of confusion; (iv) the addition of the term “new” as a prefix and of the term “sale” as a suffix does not lessen the likelihood of confusion between the disputed domain name and Complainant’s trademark; and (v) a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no association or affiliation with Swarovski and has not been authorized to use the SWAROVSKI trademark in a domain name or in any manner; (ii) Respondent is not commonly known by the disputed domain name and does not have any legitimate interest in the SWAROVSKI trademark; (iii) the disputed domain name has been used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the website to which it resolves; and (iv) when a respondent chooses to incorporate a well-known trademark into a domain name without authorization of the trademark owner that cannot be considered a bona fide offering.
Complainant also contends that Respondent registered the disputed domain name in bad faith because (i) Respondent was aware of the SWAROVSKI trademark when Respondent registered the disputed domain name since Complainant is well known in Italy and worldwide, and the selection of a domain name containing a well-known trademark cannot be a coincidence since Respondent offers for sale a variety of purported Swarovski products; (ii) registration of a famous mark as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith; and (iii) coupling a descriptive word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name constitutes bad faith on the part of respondent.
Finally, Complainant contends that Respondent is using the disputed domain name in bad faith because (i) Respondent has done nothing to identify itself as being independent from Complainant; (ii) UDRP panels have held that the use of a domain name by a registrant for the sale of products that are similar or identical to the complainant’s products is consistent with the finding of bad faith use under the Policy; (iii) Respondent’s use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the website to which the disputed domain name resolves because of its purported affiliation with Swarovski; (iv) Respondent’s use of a trademark in a domain name that is connected to well-known products by an individual who has no connection with the trademark suffices as “opportunistic bad faith” use and registration; and (v) the purpose of Respondent’s use of the SWAROVSKI trademark and official logo in the disputed domain name seems to be to attract consumers for commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6, the “WIPO Overview 2.0”). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. See, e.g Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has established each of the three elements required therein.
B. Identical or Confusingly Similar
The disputed domain name <newswarovskisale.com> is composed of the prefix “new”, the word “swarovski” plus the suffix “sale”.
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable as in the instant case. In fact, there is sufficient evidence in the records that the SWAROVSKI trademark is well known, and the disputed domain name incorporates the SWAROVSKI trademark in its entirety. Further, it has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name does not typically prevent a finding of confusingly similarity. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; and F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049. Moreover, the words “new” and “sale” point to a business activity which is very common in the market. Therefore, the combination of “swarovski” with “new” and “sale” creates an immediate potential for false association with the SWAROVSKI trademark, and a high degree of initial confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748.
The Panel also agrees that the content of a website to which a disputed domain name resolves is irrelevant in the finding of confusing similarity and that the real test for confusing similarity is whether a comparison between the trademark and the domain name reveals that there is a confusing similarity. See e.g Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. See RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel accepts Complainant’s contentions that Respondent is not associated in any way to Complainant, and has never been authorized by Complainant to use the SWAROVSKI trademark to register the disputed domain name. Paragraphs 4(c)(ii) and (iii) of the Policy require that Respondent submit evidence that he or his business have been commonly known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert consumers or to tarnish the trademark. Pursuant to paragraph 4(c) of the Policy, any of such circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).
There is no indication in the records that Respondent or his business has been commonly known by the disputed domain name. The Panel finds that in this case Respondent is not making use of a generic value of the disputed domain name. Instead, all circumstances point strongly to Respondent having chosen the disputed domain name because of its value as a close approximation of Complainant’s trademark. In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “newswarovskisale” in the disputed domain name and, accordingly, concludes that the disputed domain name was selected and used by Respondent to take advantage of the notoriety associated with the SWAROVSKI trademark and the goodwill attached thereto, with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name.See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
(i) Bad faith registration of the disputed domain name
The Panel has found that the SWAROVSKI trademark has acquired extensive and worldwide reputation. In light of the reputation of such trademark, it is clear that Respondent in all likelihood knew of the existence of Complainant’s SWAROVSKI trademark. As one panel held before, “given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
In addition, the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is suggests of bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
The fact that Respondent chose to combine the word “swarovski” with the prefix “new” and the suffix “sale” reinforces the finding that Respondent registered the disputed domain name in bad faith because the disputed domain name <newswarovskisale.com> has a particular meaning intended to attract Internet users which would look for a website offering a sale of Swarovski products.
Therefore, the Panel finds that Respondent registered the domain name at issue in bad faith.
(ii) Bad faith use of the disputed domain name
The Panel notes that the disputed domain name was being used to resolve to a website that had the look and feel of Complainant’s website (Annex J to the Complaint).
Furthermore, the Panel takes the view that the content of a website (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the website site offering for sale goods or services that are similar to or in direct competition with those of the original trademark owner, there is a clear evidence of diversion of Internet traffic.
The Panel agrees with Complainant’s contention that Respondent’s use of the disputed domain name creates an “initial interest confusion” and that Respondent has done nothing to identify itself as being independent from Complainant.
As a matter of fact, in the case of a domain name so obviously connected to a widely known mark and the main products identified thereby, its use by someone with no legitimate interest in respect of the registered domain name, constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior.net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
In addition, an independent survey was conducted by the Panel on the website of Respondent on March 10, 2014. The Panel found out that the disputed domain name is apparently inactive. The Panel finds that this change is irrelevant for the resolution of the case.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <newswarovskisale.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: March 10, 2014