The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Huge/ Carol Carol of Beijing, China.
The disputed domain name <swarovski-australia-store.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2014. On March 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2014, 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 March 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2014.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on April 24, 2014. 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 the owner of several trademark registrations for SWAROVSKI all over the world (Annex B to the Complaint), amongst which the Chinese trademark registrations No. 384001 in class 14, registered on July 30, 1987, the Chinese trademark registration No. 3520173 in class 14, registered on November 7, 2004, the Australian trademark registration No. 224727 in class 14, registered on December 6, 1968, the Australian trademark registration No. 478809 in class 3 registered on December 22, 1987 and the Australian trademark registration No. 517440 in class 11 registered on August 17, 1989 (Annex C to the Complaint).
The Complainant also owns a significant domain name portfolio, including <swarovski.com> and <swarovski.net>; all the Complainant’s domain names point to Swarovski’s official website located at “www.swarovski.com” (the “Swarovski Website”).
The disputed domain name <swarovski-australia-store.com> was registered on February 19, 2014 and currently resolves to an active webpage in which various purported Swarovski products are being offered for sale.
The Complainant contends to be the world’s leading producer of cut crystal, genuine gemstones and created stones, having production facilities in 18 countries, distribution to 42 countries and being present in more than 120 countries through 1,250 own boutiques and 1,100 partner-operated boutiques. The Complainant’s economic group had approximate worldwide revenue in 2012 of EUR 3.08 billion.
The Complainant claims to have developed an enormous amount of goodwill all over the world in the SWAROVSKI marks that are exclusively associated by the public with high quality items marketed by Swarovski. Furthermore, the Complainant contends to have spent substantial time, effort and money advertising and promoting the SWAROVSKI marks worldwide and as a result, they have become famous and well known all over the world, including in China and Australia.
The Complainant argues that the disputed domain name is confusingly similar to the SWAROVSKI marks and is being used as an online shop in the English language that offers for sale various purported Swarovski products (Annex J to the Complaint).
As to the addition of the terms “Australia” and “store”, the Complainant contends that these suffixes do not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark, since the disputed domain name incorporates the Complainant’s trademark in its entirety; nor the use of hyphens in the disputed domain name is sufficient to avoid confusingly similarity with the SWAROWSKI marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons:
i. the Respondent has no connection or affiliation with Swarovski and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the SWAROVSKI marks in any other manner; and
ii. the disputed domain name is being used to advertise purported Swarovski products and to sell goods similar to those produced and sold by the Complainant, misdirecting Internet traffic to the infringing website; such a use cannot be considered a bona fide offering of goods or services; and
iii. the Respondent’s use of the SWAROVSKI marks, a famous and well known mark, is clearly for the purpose of misleading consumers into believing that the Respondent is somewhat associated with or an official or authorized seller of the Complainant. (Annex J to the Complaint); and
iv. the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or name.
The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent’s bad faith registration is established by the fact that the Respondent must have been aware of the Complainant’s trademark at the time of the registration, since said mark is famous and well known in China, Australia and all over the world; consequently, the choice of the disputed domain name which wholly incorporates the Complainant’s famous trademark cannot be a mere coincidence.
The Respondent’s bad faith use of the disputed domain name is evidenced by the fact that Respondent is profiting from the disputed domain name. Indeed, the website to which the disputed domain name resolvesoffers for sale a variety of products such as “Swarovski Necklaces”, “Swarovski Pendants”, “Swarovski Earrings” and more; thus it is only possible to conclude that the Respondent knew about the SWAROVSKI trademark and reputation, and intentionally used them to its advantage in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name registered by the Respondent has been registered and is being used in bad faith.
The Panel finds that the disputed domain name <swarovski-australia-store.com> is confusingly similar to the Complainant’s SWAROVSKI trademark, a distinctive and well known mark in which the Complainant has established rights through registration and extensive use all over the world.
The disputed domain name incorporates the Complainant’s SWAROVSKI trademark in its entirety; the only differences are the adjunction of the suffixes “australia” and “store” and the use of hyphens.
In the Panel’s assessment, the mere addition of the geographical indicator “australia” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s famous trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; and PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865).
Similarly, concerning the addition of the generic term “store”, the Panel finds that the addition of a generic/descriptive term does not eliminate the likelihood of confusion between the disputed domain name and the incorporated trademark. On the contrary, the adding of the term “store” is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes Internet users without awareness of the content of the website at the disputed domain name may think that it is in some way connected and associated with the Complainant: this senario is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
As regards to the use of the hyphens between the terms “Swarovski”, “australia” and “store”, according with several previous UDRP decisions, the Panel finds that “the use of a hyphen is irrelevant for the purpose of differentiating the Complainant’s mark from the disputed domain name” (see Swarovski Aktiengesellschaft v. new-Swarovskisrystal-shop.net, WIPO Case No. D2013-1043 cited by the Complainant).
Finally, with regard to the generic Top-Level Domain (gTLD) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed, the gTLD is a necessary component of the domain name and does not give any distinctiveness.
There is no doubt that the disputed domain name <swarovski-australia-store.com> is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.
The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation 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 prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the trademark SWAROVSKI in any other manner. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the Panel is of the opinion that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name, the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s well known trademark, diverting Internet users to its website in which various purported Swarovski products and goods similar to those produced and sold by the Complainant are advertised and offered for sale.
Such use cannot be considered by any means as a “bona fide use”, as stated in various previous UDRP decisions in similar cases, and in particular in the following decision, where the panel stated:
“Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Respondent also contends that it has a legitimate interest in using the AMPHENOL mark because it purchases products from Complainant… It appears that Respondent used the Domain Name as a means of attracting Internet Users to its site where it sells cable assemblies comprised of parts from Complainant and from other companies… the mark is used as ‘bait’ to lead consumers to its own hybrid cable assemblies. Other cases have found that the use of a trademark as part of a domain name leading to a site selling other products was not bona fide. Similarly I believe that Respondent does not have a legitimate interest in using Complainant's mark to lead customers to a site that sells its own hybrid cable assemblies.”
(Amphenol Corporation v. Applied Interconnect, Inc, WIPO Case No. D2001-0296, internal citations omitted).
Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s marks and name for its own profit, misleading Internet users to commercial web sites by seeking to create an impression of association with the Complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067), it can be stated that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant’s name, trademark and activities are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademark, in this Panel’s view the Respondent must have been aware of the Complainant’s existence when it registered the disputed domain name. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the SWAROVSKI trademark in its entirety, with the mere addition of the suffixes “australia” and “store”. Moreover, the web site to which the disputed domain name resolves offers for sale several purported Swarovski products, such as “Swarovski Necklaces”, “Swarovski Pendants”, “Swarovski Earrings”. The Panel agrees with the Complainant that the Panel’s view the Respondent would not have advertised goods purporting to be Swarovski products without having knowledge of the Complainant’s SWAROVSKI trademark and without being aware of its reputation.
As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, given the circumstance of this case and in the absence of any rights or legitimate interests, the evidence of the Respondent’s registration of a domain name confusingly similar to the Complainant’s worldwide well known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No.D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).
Concerning the use of the disputed domain name, as already indicated above, the Complainant has proven that it resolves to a website which advertises and offers for sale various purported Swarovski products and goods similar to those produced and sold by the Complainant.
The Panel is persuaded by the evidence of record that the Respondent is using the disputed domain name to attract Internet users for commercial gain by using the Complainant’s SWAROVSKI trademark. Indeed, in the Panel’s opinion, the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s products and to obtain information about the Complainant’s activities, to its own website, by creating a likelihood of confusion with the Complainant’s trademark and business, as to inter alia, the source of its website and obtaining revenues from the diverted traffic (see Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194; and Giorgio Armani S.p.A. v. Daulet Tussunbayev, WIPO Case No. D2011-2082).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <swarovski-australia-store.com> was registered and is being 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-australia-store.com> be transferred to the Complainant.
Alessandra Ferreri
Sole Panelist
Date: May 8, 2014