WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. TSilver

Case No. D2012-1653

1. The Parties

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

The Respondent is TSilver, Mursel Orak of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <swarovskisilver.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2012. On August 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2012, 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. On August 22, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On August 23, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

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 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2012. The Center received an informal email communication from the Respondent on September 17, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 18, 2012.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on September 25, 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 the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries.

The Complainant has registered the SWAROVSKI trademark (“SWAROVSKI Marks”) globally, including in Turkey (registration no. 2005 41119 of November 3, 2004) where the Respondent is located.

The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website located at “www.swarovski.com” (the “Swarovski Website”).

The disputed domain name was registered on August 30, 2010, long after the SWAROVSKI Marks became internationally well-known.

5. Parties’ Contentions

A. Complainant

(a) The Complainant is the exclusive owner of trademark rights in the SWAROVSKI Marks.

The Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones.

The Complainant has registered the SWAROVSKI Marks globally (an excerpt of a selection of the registrations is attached as Annex B to the Complaint), including in Turkey.

SWAROVSKI Marks have become famous and well-known in Turkey.

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

(b) The disputed domain name was improperly registered and is being improperly used.

The disputed domain name was registered on August 30, 2010.

The Respondent is using the disputed domain name to confuse consumers into believing that the website at the disputed domain name (the “Website”) is an official website of the Complainant and/or the Respondent is affiliated with or authorized to sell products by the Complainant.

The Respondent is creating the impression that the Website is an official Swarovski website and the Respondent is an authorized seller of Swarovski products and is trying to pass itself off as Swarovski and is exploiting the goodwill associated with the SWAROVSKI Marks in order to obtain commercial gain.

UDRP panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.

The Respondent has used the SWAROVSKI Marks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Complainant’s approved websites.

Misdirecting Internet users to the disputed domain name takes advantage of this confusion.

This type of initial interest confusion or diversion of traffic is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI Marks.

The addition of the word “silver” as a suffix to the SWAROVSKI Marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark.

Previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.

(d) The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s rights in the SWAROVSKI Marks have been recognised by several UDRP panels.

The Respondent has never been known by the disputed domain name and has no legitimate interests in the SWAROVSKI Marks or the name “Swarovski”.

The Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI Marks in a domain name or in any other manner.

(e) The disputed domain name was registered and is being used in bad faith.

(i) The disputed domain name has been registered in bad faith

The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Marks, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks.

Respondent’s selection of the disputed domain name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark.

The Website advertises for sale various purported Swarovski products. 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.

Previous UDRP panels have found that coupling a descriptive word with complainant’s mark or even a word similar to complainant’s mark in a domain name constitutes bad faith on the part of respondent.

(ii) The disputed domain name is being used in bad faith

The Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well-known in Turkey and worldwide, the disputed domain name is confusingly similar to the registered trademarks of the Complainant.

The Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Website because of its purported affiliation with the Complainant.

The Respondent is attempting to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilizing the SWAROVSKI Marks. The Respondent, without valid consent, utilises the SWAROVSKI Marks throughout the Website and offers products identical to or similar to the Complainant’s products for sale.

B. Respondent

The Respondent did not provide a formal reply to the Complainant’s contentions. On September 17, 2012, the Center received an email communication from an email address different from the one indicated by the Complainant and the Registrar, the content of which is as follows: “Dear Sir, Madam We are producing silver earing, pendants and similar to theese kinds on swarowskisilver.com too. We didnt use any information that belongs to Savarovski. Only the domain name is swarowskisilver.com We don't know how to send the case replay document too.”

6. Discussion and Findings

6.1. Language of the proceeding

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required, and other relevant factors.

In the present case, the Complainant requested for English to be the language of the proceeding. It is without question that the registration agreement for the disputed domain name was made in the Turkish language. However, the Respondent’s informal communication was in English and the Respondent did not submit any comment regarding the language of the proceeding. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the SWAROVSKI Marks acquired through registration. The SWAROVSKI Marks have been registered worldwide, including in Turkey, and the Complainant has a widespread reputation in producing cut crystal, genuine gemstones and created stones.

The disputed domain name comprises the SWAROVSKI Marks in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the word “silver” to the mark SWAROVSKI. This does not seem to eliminate, in this Panel’s opinion, the similarity between the Complainant’s trademark and the disputed domain name.

The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., 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; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

Additionally, as the Respondent is in default, it has brought no argument to support the contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.

The Panel finds that given the use made of the disputed domain name (namely, previous offer for sale of various earrings and bracelets and the following disclaimer “Copyright © 2012 Swarovski Silver. All rights reserved” in the website to which resolved the disputed domain name, as shown in Annex J to the Complaint, as well the current lack of any content), when the Respondent registered the disputed domain name it knew that SWAROVSKI was the trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use, though such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondents knew of and had in mind the Complainant’s marks when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondents’ registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainant’s marks.

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain name or that there is conceivable good faith use for the disputed domain name. After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel is persuaded from the evidence submitted that the Respondent has indeed sought to gain commercially by attracting Internet users to its website by causing confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Accordingly, the Panel finds in favour of the Complainant on the third element 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 domain name <swarovskisilver.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Dated: October 9, 2012