Complainant is Swarovski Aktiengesellschaft, Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is skouta sekio, Austin, Littoral, Cameroon and PrivacyProtect.org, Queensland, Australia.
The disputed domain name <myswarovskisale.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 12, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 16, 2013.
The Center verified that the Complaint together with the amendment to 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 April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2013.
The Center appointed Gary J. Nelson as the sole panelist in this matter on June 12, 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.
Complainant is the owner of at least six Australian Trademark Registrations for SWAROVSKI. Specifically, Complainant owns at least the following trademark registrations:
|
Country/Territory |
Reg. no. |
Mark |
Classes |
Date of Registration |
|
Australia |
224727 |
SWAROVSKI |
14 |
December 6, 1968 |
|
Australia |
478809 |
SWAROVSKI |
3 |
December 22, 1987 |
|
Australia |
517440 |
SWAROVSKI |
11 |
August 17, 1989 |
|
Australia |
517441 |
SWAROVSKI |
34 |
August 17, 1989 |
|
Australia |
517442 |
SWAROVSKI |
21 |
August 17, 1989 |
|
Australia |
517443 |
SWAROVSKI |
14 |
August 17, 1989 |
The disputed domain name appears to have been registered on February 16, 2013. The operational website at “www.myswarovskisale.com” resolves to an active website promoting the sale of jewelry. The website appears to feature trademarks owned by Complainant.
Complainant uses the SWAROVSKI mark in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries.
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. In 2011, Complainant's products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. Complainant's approximate worldwide revenue in 2011 was Eur 2.87 billion.
The SWAROVSKI mark has become famous due to the substantial time, effort and money advertising and promoting entered into by Complainant.
Complainant has registered several SWAROVSKI-based domain names.
Complainant owns numerous trademark registrations for SWAROVSKI, including at least six trademark registrations in Australia. These registrations were issued prior to the date Respondent registered the disputed domain name.
The disputed domain name <myswarovskisale.com> is confusingly similar to Complainant's SWAROVSKI trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the SWAROVSKI mark and the disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark.
Complainant owns at least six SWAROVSKI trademark registrations in Australia. The relevant priority date for all of these registrations precedes the date upon which the disputed domain name was registered (i.e., February 17, 2013).
Accordingly, Complainant has established rights in its SWAROVSKI mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <myswarovskisale.com>, is confusingly similar to Complainant’s SWAROVSKI trademark because the disputed domain name incorporates the entirety of Complainant’s SWAROVSKI trademark and merely adds a generic descriptive term immediately in front of the SWAROVSKI mark (i.e., "my"), a generic descriptive term immediately after the SWAROVSKI mark (i.e., "sale"), and the top-level “.com” domain suffix.
Neither the addition of purely descriptive terms to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to Complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “sale") simply suggests that products associated with Complainant's SWAROVSKI mark are being offered at a discount. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
Accordingly, the addition of the term “my” directly in front of Complainant’s SWAROVSKI, and the addition of the term "sale" directly behind Complainant's SWAROVSKI mark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “swarovski,” “my ”, "sale,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its SWAROVSKI mark.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at “www.myswarovskisale.com” featuring the sale of jewelry consisting of, among other components, gemstones. Respondent’s decision to add common descriptive words (i.e., “my” and "sale”) to a well-known trademark for the purposes of attracting Internet users to Respondent’s own website does not instill Respondent with legitimate rights in the composite name or mark. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstore.com> and <chanelfashion.com> to complainant).
Moreover, the corresponding website operating in association with the disputed domain name <myswarovskisale.com> is using Complainant’s SWAROVSKI mark to promote the goods purportedly offered by Respondent. Infringement of another’s trademark mark can never create rights or legitimate interests in a corresponding domain name.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Given that Complainant appears to operate over a 1,000 Swarovski branded stores and offers its Swarovski branded products in approximately 1,000 other stores in more than 120 countries, and appears to be one of the premiere gemstone distributors in the world, the Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the SWAROVSKI trademark. Supporting this conclusion is the fact Respondent is directly targeting Complainant on its website as part of the products it offers. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent chose [sic] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name [at issue]”).
The Panel also finds that Respondent’s use of the disputed domain name <myswarovskisale.com> is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s SWAROVSKI mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This ongoing activity is a direct violation of paragraph 4b(iv) of the Policy, and is evidence of bad faith registration and use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <myswarovskisale.com> be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: June 17, 2013