The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is zenger zenger of Henan, China.
The disputed domain name <swarovskibijoux.org> is registered with Bizcn.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2012. On July 4, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 5, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 5, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On June 9, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments 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 July 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 17, 2012. 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 uses the SWAROVSKI marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. It is a 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 2010, the Complainant’s products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2010 was EUR 2.66 billion.
The Complainant has registered the SWAROVSKI marks globally and has also obtained the following selected trademark registrations for the SWAROVSKI marks in China:
|
No. |
Trademark |
Registration No. |
Class |
Registration Date |
|
1 |
SWAROVSKI |
384001 |
14 |
30/7/1987 |
|
2 |
施华洛世奇 |
385013 |
14 |
30/8/1989 |
|
3 |
施华洛世奇 |
361346 |
14 |
20/9/1989 |
|
4 |
|
346372 |
14 |
20/4/1989 |
|
5 |  |
3520173 |
14 |
07/11/2004 |
|
6 |
点晶 |
4285551 |
26 |
28/5/2008 |
|
7 |
点晶 |
4285550 |
14 |
14/10/2007 |
The Complainant has expended substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout China. As a result, the Complainant contends that the SWAROVSKI marks have become famous and well-known in China.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com”. The Complainant’s official website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine SWAROVSKI branded products.
The disputed domain name <swarovskibijoux.org> was registered on April 26, 2012, and is operating an online shop.
The Complainant contends that the disputed domain name is confusingly similar to the SWAROVSKI marks to which the Complainant has rights for the following reasons:
1. The addition of the term ‘bijoux’, meaning “jewelry” as a suffix to the SWAROVSKI marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark. Swarovski manufactures jewelry and the use of the word “bijoux” along with the SWAROVSKI marks is obviously intended to create an association with the Complainant and its business, strengthening rather than weakening the confusing similarity with the SWAROVSKI marks.
2. The coupling of a common word with the Complainant’s mark or even a word similar to the Complainant’s mark in a domain name, especially a well-known mark like the SWAROVSKI marks, does not negate a finding of confusing similarity but serves to reinforce the similarity.
3. A domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. Numerous UDRP panels have also found that using the Swarovski trademark in its entirety in a domain name does not lessen the finding of confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
1. The Respondent has never been known by the disputed domain name and has no rights or legitimate interests in the SWAROVSKI marks or the name “Swarovski”.
2. The disputed domain name is being used to advertise purported Swarovski products and it directs Internet traffic to the website at the disputed domain name. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest. The Respondent has used the SWAROVSKI marks in the disputed domain name to create the impression that he is associated with Swarovski. Furthermore he/she has used the SWAROVSKI marks throughout the Respondent’s website and offers purported Swarovski products for sale on the website which supports the contention that he chose the disputed domain name only because he was seeking to create an association with the Complainant.
3. The Respondent’s sale of purported Swarovski products demonstrates that he/she is not making a bona fide offering of goods or services, nor does he have any rights or legitimate interests. Furthermore, purporting to sell Swarovski products does not give the Respondent the right to register and use the SWAROVSKI marks as the disputed domain name without the consent of the Complainant.
4. The Respondent’s misappropriation of the disputed domain name was no accident. Where a mark is famous and well-known, as with the SWAROVSKI marks, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. The Respondent’s use of the SWAROVSKI marks is clearly for the purpose of misleading consumers into believing that the Respondent and his website are associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. Accordingly the Respondent does not have any rights or legitimate interests in the SWAROVSKI marks.
The Complainant contends that the disputed domain name was registered in bad faith and has been used in bad faith for the following reasons:
1. The Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI marks, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI marks.
2. The selection of the disputed domain name, which wholly incorporates the SWAROVSKI marks, cannot be a coincidence. “Swarovski” is not a descriptive or generic term; it is a famous and well-known trademark.
3. Furthermore, the Respondent’s website offers to sell a variety of “Swarovski” products such as “Swarovski Necklaces”, “Swarovski Bracelets”, “Swarovski Rings”, “Swarovski Earrings” and more. The Respondent would not have advertised products purporting to be Swarovski products on the website at the disputed domain name if he/she was unaware of Swarovski’s reputation.
4. Registration of a famous mark, like the SWAROVSKI marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.
5. The Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well-known in China and worldwide; and as already discussed, the disputed domain name is confusingly similar to the registered trademarks of the Complainant.
6. The Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated SWAROVSKI marks in the disputed domain name, throughout the Respondent’s website and purports to sell Swarovski products.
7. In addition, the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Respondent’s website because of its purported affiliation with the Complainant. This is further evidence of the Respondent’s bad faith registration and use of the disputed domain name.
8. The Respondent’s attempt to attract consumers for commercial gain to the website at the disputed domain name by creating confusion among consumers by utilising the SWAROVSKI marks is further compounded by the Respondent’s efforts to mislead consumers into believing the website was operated or authorized by the Complainant. The Respondent, without valid consent from the Complainant, utilises the SWAROVSKI marks on the Respondent’s website and offers products identical to or similar to Swarovski products for sale. Previous UDRP panels have determined that this type of behaviour is indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to the information received by the Center from Bizcn.com, Inc., the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has decided to submit a request that English be the language of proceedings, to which the Respondent did not object.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On the record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, he could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the SWAROVSKI marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the SWAROVSKI marks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s SWAROVSKI mark is a well-known mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s SWAROVSKI mark in its entirety followed by the word “bijoux” which means jewellery and the top level domain suffix “.org”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “swarovski” which is identical to the Complainant’s registered trademark SWAROVSKI. Given the fame and notoriety of the Complainant’s SWAROVSKI marks, the addition of the word “bijoux” which means jewellery does not provide sufficient distinction from the Complainant. On the contrary, the addition of the word “bijoux” may serve to heighten consumer confusion as it relates to the jewellery and accessories business which the Complainant is in and for which the SWAROVSKI marks are used on. Furthermore, it is also an accepted principle that the addition of suffixes such as “.org” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s SWAROVSKI mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the SWAROVSKI mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “swarovskibijoux” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the SWAROVSKI mark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s SWAROVSKI branded products on his/her website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose his/her relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use SWAROVSKI marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that he/she is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
5. The Complainant and its SWAROVSKI mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries and is a registered trademark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the SWAROVSKI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him/her. In particular, the Respondent has failed to make submissions to demonstrate that he/she has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) A respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a 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 a 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 above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its SWAROVSKI mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet through the registration of several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com”. The Complainant’s brand of crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries is also available on the Internet via its official website located at “www.swarovski.com”. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s SWAROVSKI branded products on his/her website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose his/her relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use SWAROVSKI marks in the disputed domain name. Such a behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained his/her choice of the disputed domain and his/her subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s SWAROVSKI mark and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known mark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorisation is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.
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 <swarovskibijoux.org> be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: September 8, 2012
