Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is wen ben zhou of Xiamen, Fujian, China.
The disputed domain name <swarovskisouthafrica.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2014. On July 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 30, 2014.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on August 7, 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.
Complainant is owner of the well-known SWAROVSKI marks, registered in numerous countries, including, for example in China (SWAROVSKI, Trademark Registration No. 384001 in International Class 14, registered July 30, 1987 in connection with crystal jewelry stones and crystalline semi-finished goods).
The disputed domain name was registered March 28, 2014 and routes to a website displaying Complainant’s trademarks. Respondent’s website purports to offer Complainant’s products at deeply discounted prices.
Complainant avers that it has dealt with Respondent before, having previously secured an order to transfer to Complainant the domain name <swarovskisg.com> (Swarovski Aktiengesellschaft v. Wen Ben Zhou, WIPO Case No. D2014-0587). Complainant writes that it is presently filing several other proceedings for Respondent’s use of other domain names containing Complainant’s marks.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy. Complainant adds that nothing in Respondent’s website advises consumers that the website is not sponsored by or affiliated with Complainant.
On this basis, Complainant seeks transfer.
Respondent did not reply to Complainant’s contentions.
The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address. The Center also sent email notifications to contacts provided by the Registrar.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Under Policy paragraph 4(a) Complainant must establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.
Complainant must establish these elements even if Respondent submits no Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425.
The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademark.
UDRP panels usually disregard the generic Top-Level Domain (gTLD) suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. In this case, removing the gTLD suffix, the remaining term “swarovskisouthafrica” is simply the combination of Complainant’s trademark and the country name “South Africa”.
Many previous UDRP decisions have considered the effect of linking a trademark with a geographical name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
The Panel rules that the addition of “South Africa” to Complainant’s trademark does not alter the confusion with Complainant’s marks that Internet users would experience.
Therefore the Panel concludes that the requirements of Policy paragraph 4(a)(i) are established.
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name, including (1) the use of the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) the making of a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant’s prima facie case.
The Panel accepts as true Complainant’s uncontroverted allegations that Respondent has no authorization or license to use Complainant’s trademark and that Respondent is not known by the disputed domain name. Respondent’s website competes directly with Complainant’s business associated with the mark. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
Complainant further alleges – without opposition – that Respondent is not an authorized dealer and lacks permission to use the SWAROVSKI trademark in its commercial offerings. Therefore the Panel also finds there is no bona fide use by Respondent.
The Panel concludes that Complainant has established a prima facie case. Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith in light of the circumstances, including failure to respond to a Complaint and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy.
The record shows that Respondent registered the disputed domain name many years after Complainant perfected its trademark rights in many countries. Respondent’s website, displaying Complainant’s trademark and purporting to provide Complainant’s trademarked goods, demonstrates Respondent’s prior awareness of the mark. The Panel therefore infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Registration in bad faith is therefore established.
Respondent’s website is in direct competition with Complainant. This is frequently deemed to be evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
Respondent’s continuing use of domain names containing the SWAROVSKI marks without permission, after losing a series of similar UDRP proceedings brought by Complainant, evidences Respondent’s continuing bad faith. See, e.g., Swarovski Aktiengesellschaft v. Wen Ben Zhou, supra; Swarovski Aktiengesellschaft v. Wen Ben Zhou, WIPO Case No. D2014-0886. Respondent’s failure to answer the Complaint and to maintain accurate contact information as required under the registration agreement is further evidence of bad faith.
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.1
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 <swarovskisouthafrica.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: August 21, 2014
1 Having previously made the finding that use of the trademark lacks Complainant’s authorization, the Panel need not consider distinctions among different classes of goods (i.e., genuine, counterfeit or grey market) or indeed, whether Respondent is simply offering other third-party goods under the trademarks without the mark holder’s permission. The facts demonstrate bad faith under any of those circumstances.