The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is fang wu of Guanzhou, Fujian, China.
The disputed domain name <swarovskishopaustria.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2013, 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 January 28, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 6, 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 Complainant is a company incorporated in Lichtenstein and the owner of numerous registrations worldwide for the trade mark SWAROVSKI (the “Trade Mark”), including several registrations in China, where the Respondent is based, the earliest registration in China dating from 1987. The Trade Mark is a well-known trade mark.
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on February 1, 2012.
The Complainant made the following submissions in the Complaint.
The Complainant is one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution facilities in 42 countries and a presence in more than 120 countries. In 2011, the Complainant’s products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion.
The Complainant has developed an enormous amount of goodwill in the Trade Mark internationally, and the public has come to associate the Trade Mark exclusively with high quality items marketed by the Complainant.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive words “shop” and “austria”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorized by the Complainant or the owner of the Trade Mark in any way and is not commonly known by the disputed domain name.
Given the fame of the Trade Mark, the Respondent must have or ought to have known of the Trade Mark prior to registering the disputed domain name.
The disputed domain name was previously linked to a German and English language website which advertised for sale various purported Swarovski products e.g. “Swarovski Necklaces”, “Swarovski Rings”, “Swarovski Bracelets”, “Swarovski Earrings” and more (the “Website”).
There was no disclaimer on the Website and the Respondent was clearly creating the impression that the Website was in some way authorized by the Complainant.
After the Complainant’s legal representatives contacted the Internet Service Provider hosting the Website, the Website was taken down. The disputed domain name is currently linked to a “page cannot be found” website.
For all of these reasons, the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant operates its international business primarily in English;
(2) The content of the Website was entirely in German and English, which clearly shows the Respondent is able to communicate in English.
The Respondent did not file any submissions with respect to the language of the proceeding and did not file a Response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
It appears from the content of the Website that the Respondent is conversant in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several decades.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic words “shop” and “austria” does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website which features prominently the Trade Mark and offers for sale purportedly genuine jewelry products under the Trade Mark. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Trade Mark is a well-known trade mark worldwide and in particular in China, where the Respondent is based. The Complainant asserts the Respondent has used the Website to offer for sale unauthorized jewelry products under the Trade Mark.
Even if the products offered for sale on the Website are genuine Swarovksi products of the Complainant, the Panel has no hesitation in concluding the Respondent has registered and used the disputed domain name in order to pass off the Website as a website of or licensed by the Complainant, for commercial gain. In particular, the Panel notes there is no disclaimer on the Website disclaiming any relationship between the Respondent and the Complainant.
The disputed domain name is currently linked to a “page cannot be found” website. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <swarovskishopaustria.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: March 20, 2013