WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. shenglin fan

Case No. D2012-0170

1. The Parties

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

The Respondent is shenglin fan of Changzhou, Jiangsu, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 1, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the Domain Name. On February 1, 2012, GoDaddy.com, LLC. 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 February 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2012.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 29, 2012. 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 one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 19 countries, distribution in 42 countries and presence in more than 120 countries. In 2010 Swarovski’s products were sold in 1083 of its own boutiques and through 889 partner-operated boutiques worldwide. Swarovski’s approximate worldwide revenue in 2010 was 2.66 billion euros.

From the evidence submitted by the Complainant, as annexes to the Complaint, the Complainant is the proprietor of numerous marks containing SWAROVSKI worldwide. A selection of the SWAROVSKI marks which are applicable in China and globally are as follows:

The Complainant has initiated many other UDRP procedures based on its trademark SWAROVSKI.

It is also clear that the Complainant has spent substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout China and worldwide and as a result the marks have become famous.

The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>.

The Respondent registered the Domain Name on August 29, 2011 and is operating a site as online shop for purported Swarovski products.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the SWAROVSKI marks. The addition of the term “outlets” as a suffix to the SWAROVSKI marks does not lessen the confusing similarity between the Domain Name and Complainant’s mark. The use of the word “outlets” along with the SWAROVSKI marks creates the impression that the Domain Name contains information and products from the Complainant. It is clearly established that the addition of a generic word like “outlets” to a trademark is not enough of a differentiation from that trademark to avoid a finding of confusing similarity. See, Swarovski Aktiengesellschaft v.Marzena Marzena, WIPO Case No. D2011-0980.

The Complainant’s rights in the SWAROVSKI marks have been recognized by several UDRP administrative panels. In Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353, the panel stated that the “Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices [...] Complainant’s trademark rights in SWAROVSKI precede this domain name registration.” The Domain Name was registered on 30 August 2011 and the Complainant’s rights in the SWAROVSKI marks clearly predate this registration.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Swarovski name and the SWAROVSKI marks in a domain name or in any other manner. The Respondent has never been known by the Domain Name and has no legitimate interests in the SWAROVSKI marks or the name “Swarovski”. The Domain Name is being used to advertise purported Swarovski products and the Domain Name misdirects Internet traffic to the Respondent’s Website. Such a use is contrary to a bona fide offering of goods or services and cannot be the base for rights or legitimate interests.

In respect the third element, the Complainant asserts that the Domain Name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI marks at the time of registration. Further, registration of a famous mark, like the SWAROVSKI marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. In addition, the Respondent’s registration and use of the Infringing Domain Name creates “initial interest confusion”, which attracts Internet users to the Respondent’s website because of its purported affiliation with the Complainant.

B. Respondent

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

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of the Domain Name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:

(i) the 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 in respect of the Domain Name; and

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

The fact that the Respondent has not provided a response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.

Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domain, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the reasonable facts asserted by the Complainant as true and to draw adverse inferences of fact against the Respondent.

A. Identical or Confusingly Similar

The Complainant has made continuous use of its registered and incontestable SWAROVSKI marks, which appear to be distinctive, and has spent much time, money and effort in promoting the mark, and has established significant goodwill.

Previous UDRP panels have decided that the addition of a generic and descriptive term to an otherwise distinctive trademark makes the domain name confusingly similar to the trademark (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).

Accordingly, in the present case, the addition of the word “outlets” to the Domain Name is not sufficient to distinguish the Domain Name from the Complainant’s existing service sources. Therefore, the Panel is prepared to accept the submission of the Complaint that the addition of the term “outlets” to the Complainant’s trademarks to form the Domain Name <swarovskioutlets.net> is insignificant and consequently the Domain Name is confusingly similar to the Complainant´s trademark.

The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Given the uncontradicted evidence before the Panel that the mark SWAROVSKI is widely known and recognized before the Domain Name was registered, particularly in connection with jewelry, and that the Respondent has used the Domain Name to operate a website selling jewelry, the Panel infers that the Respondent most likely was fully aware of the Complainant’s mark when it registered the Domain Name.

There is no evidence that the Complainant authorized the Respondent to register the Domain Name or to use the SWAROVSKI trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that Domain Name but the Respondent has made no such showing.

The Panel accordingly concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has shown enough evidence to qualify the mark SWAROVSKI as well-known throughout the world. Thus, the Complainant asserts that the Domain Name is registered and used by the Respondent in order to attract Internet users to the Respondent’s site, by exploiting the Complainant’s marks and the goodwill attached to them, and that this fulfills the requirement under paragraph 4(a)(iii) of the Policy.

The registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, generally constitutes bad faith registration and this is the approach of the Panel in this case (Ints it is not the same, Gmbh v. Carlos Gil Belmonte, WIPO Case No. D2010-0456). Moreover, the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration.

In respect to the use of the Domain Name, the Complainant has proved to the satisfaction of the Panel, by mean of the printouts of the website to which the Domain Name resolves, that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement.

The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are 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 <swarovskioutlets.net> be transferred to the Complainant.

Manuel Moreno-Torres
Sole Panelist
Dated: March 8, 2012