The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is “swarovski-jewelry-sale.com” of Paris, France.
The disputed domain name <swarovski-jewelry-sale.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 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.
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 July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2013.
The Center appointed Ross Wilson as the sole panelist in this matter on August 7, 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, a corporation registered in Liechtenstein, is renowned for its production of cut crystal jewelry, genuine gemstones and created stones. It has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2012, its products were sold in 1250 of its own boutiques and through 1100 partner operated boutiques worldwide. The Complainant Group’s revenue in 2012 was about EURO 3 billion.
Since 1988, the Complainant has had numerous European community and internationally registered trademarks. The Complainant uses its trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.
The Respondent registered the disputed domain name in February 2013. The disputed domain name is connected to an online website that closely resembles the Complainant’s website and offers for sale the Complainant’s products.
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name consists of the Complainant’s trademark in its entirety together with the suffix “-jewelry-sale”, and the gTLD extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The key difference between the Complainant’s trademark and the disputed domain name is the addition of the two elements “jewelry” and “sale”. The first refers to the generic business sector in which the Complainant operates which in the Panel’s opinion increases the likelihood of confusion to Internet users (see Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170). The second element is merely a generic word. Together they do not serve to differentiate the disputed domain name from the Complainant’s trademark and are not sufficient to prevent the finding of confusing similarity between the disputed domain name and the Complainant’s mark (see Swarovski Aktiengesellschaft v. WhoisGuard Protected/Kate Red, WIPO Case No.D2012-2493).
The Panel finds that the Complainant’s trademark is readily recognizable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy.
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use the disputed domain name that reflects the Complainant’s trademark in its entirety without authorization by the Complainant. Based on the evidence provided by the Complainant the disputed domain name is intended to divert Internet user traffic to the Respondent’s website where the Respondent is operating an online shop that offers for sale various purported SWAROVSKI products. No rights or legitimate interests derive from such use of the disputed domain name incorporating the Complainant’s trademark.
The Complainant has denied having any connection or affiliation with the Respondent and that the use of its trademark is without license or consent. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”.
The Panel considers the Respondent lacks rights or legitimate interests. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trademark of the complainant and deliberately registered the disputed domain name precisely because it would be recognized as such. As stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 “Manifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative procedure the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant points out that the selection of the disputed domain name which wholly incorporates the SWAROVSKI mark cannot be a coincidence because the mark is not a descriptive or generic term. Further the Respondent would not have advertised products purporting to be Swarovski if it was unaware of Complainant’s reputation. The Complainant believes the Respondent choose the name to create an impression of association with the Complainant that would attract Internet users for commercial gain.
The Panel considers that the Complainant has made a case that the Respondent has registered and is using the disputed domain name in bad faith. In the Panel’s view the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100 “It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection in that case of the disputed domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The Panel finds it most likely that the domain name was registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain.
Noting that the Respondent has not rebutted any of the Complainant’s contentions and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
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 <swarovski-jewelry-sale.com> be transferred to the Complainant.
Ross Wilson
Sole Panelist
Date: August 21, 2013