The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is WhoisGuard Protected / Annie Azizian, of Los Angeles, California, United States of America; Glendale, California, United States of America, respectively.
The disputed domain name <swarovskioutlets.org> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 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 the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 29, 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 the Respondent of the Complaint, and the proceedings commenced on January 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2013.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 26, 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.
According to the WhoIs database, the disputed domain name was registered on July 21, 2011. It was registered via WhoisGuard Protected, a privacy shield provider. After the filing of the Complaint, the Complainant amended it to take the person behind the registration into account. The second Respondent is known as Annie Azizian, localized in the city of Glendale, United States of America.
The disputed domain name <swarovskioutlets.org> currently resolves to an inactive page. It used to be active and to resolve to a website in Chinese language, which provided erotic pictures of female models.
The Complainant is the owner of trademark rights in the word “Swarovski” and in the “Swarovski Swan Logo” in the United States (trademark No. 3864495, registered on October 19, 2010, in class 16), International trademark No. 857107, registered on November 3, 2004, in classes 2, 3, 6, 8, 9, 11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41), Europe (No. 000120576, registered on October 15, 1998, in classes 3, 9, 11, 14, 16, 18, 21, 25 and 26).
Swarovski uses the SWAROVSKI trademark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessory, collectible, and lighting industries.
The Complainant is the world 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, Swarovski’s products were sold in 1,218 of its own boutiques and through 1,000 partner-operated boutiques worldwide. Swarovski’s approximate worldwide revenue in 2011 was Euro 2.87 billion.
First, the Complainant asserts that the disputed name <swarovskioutlets.org> is confusingly similar to its world well known trademark SWAROVSKI which is reproduced in its entirety. The Complainant argues that the addition of the term “outlets” does not lessen the finding of confusing similarity. On the contrary, it reinforces the similarity.
The Complainant argues that Internet users who intend to purchase Swarovski products online may type <swarovskioutlets.org> into the address bar on their web browser and be directed to the Respondent’s web site. It wrongfully capitalizes on the Complainant’s goodwill in the trademark SWAROVSKI since the domain name diverts Internet traffic to the website run by the Respondent.
Second, the Complainant alleges that the trademarks SWAROVSKI have been recognized by several WIPO panels as widely-known throughout the world. The Complainant also argues that the Respondent uses the well known trademark SWAROVSKI in the disputed domain name, that the Respondent has never been known under that name, trademark or trade name, neither that he has been licensed or authorized by the Complainant. The Complainant finally alleges that such a use of the well known trademark is evidence that the Respondent has no rights or legitimate interest in <swarovskioutlets.org>.
Third, the Complainant contends that the disputed domain name was registered and is used in bad faith due to the worldwide reputation of the trademark SWAROVSKI. The Complainant claims that the Respondent could not have ignored the trademark SWAROVSKI when registering the disputed domain name <swarovskioutlets.org>. The Complainant also asserts that the Respondent used the disputed domain name in bad faith as he created “initial interest confusion”, attracting Internet users to its web site because of its purported affiliation with the Complainant. The Complainant finally states that the disputed domain name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of it would “inevitably lead to confusion of some sort” and cause disruption to Swarovski’s business in contravention of paragraph 4(b)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
The Panel is required to 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 appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
The first element under the paragraph 4(a) (i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that the Complainant has rights in the SWAROVSKI trademarks as evidenced by the trademark registrations submitted with the Complaint especially in the United States. Besides, previous UDRP decisions held that SWAROVSKI is a well known trademark (Swarovski Aktiengesellschaft v. A.S., WIPO Case No. D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No. D2012-2267; Swarovski Aktiengesellschaft v. Derk Hond, WIPO Case No. D2013-0005).
The disputed domain name only differs from the Complainant’s trademark SWAROVSKI by the addition of the term “outlets” which is a common word and is not sufficient to exclude similarity, especially with a world famous trademark such as SWAROVSKI (Pepsico Inc., of Purchase v. Johan De Broyer WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072). On the contrary, the Panel finds that the suffix “outlets” usually refers to a store offering damaged, excess or “on sale” goods, which is particularly likely to mislead Internet users into believing that the web site published at the disputed domain name is an online shop operated by the Complainant for selling SWAROVSKI-branded products (Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477 and Swarovski Aktiengesellschaft v. WhoisGuard Protected/ Wicky Blown, WIPO Case No. D2012-2501).
Finally, when it comes to the adjunction of gTLD “.org”, it is now well established that the generic top-level domain may be ignored when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt, WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the disputed domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert internet users or to tarnish the trademark or service mark at issue.
It is now well established that once the complainant has made a prima facie case that the respondent lacks legitimate interest or right, the burden shifts to the respondent to prove its right or legitimate interest in the domain name (Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
The Panel believes that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. In addition, the Respondent is not commonly known by the disputed domain name, it has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor has it intended to make a legitimate, noncommercial or fair use of the disputed domain name.
Considering the Complainant’s SWAROVSKI trademark well-known character, and the fact that the Respondent has never been licensed, authorized or permitted to use it, the Panel considers that any use that the Respondent would make of any domain name incorporating the Complainant’s trademark SWAROVSKI would most likely violate the exclusive trademark rights which the Complainant has long held in its mark (Deutsche Bank Aktiengesellschaft v. New York TVTickets Inc. WIPO Case No. D2001-1314).
Taking all of these elements into consideration, the Respondent is deriving advantage from Internet users’ confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey ( WIPO Case No. D2009-0258).
In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Respondent did not explain the right or legitimate interest behind the registration.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) The 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) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
a) Registered in bad faith.
The Panel considers that it is unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name since SWAROVSKI is a well known trademark with an international reputation (Swarovski Aktiengesellschaft v. A.S., WIPO Case No. D2012-0629; Swarovski Aktiengesellschaft v. WB – Wicky Blown, WIPO Case No. D2012-2267; Swarovski Aktiengesellschaft v.Derk Hond, WIPO Case No. D2013-0005).
In previous UDRP decisions, panels have considered that in certain circumstances when the complainant’s trademark is well known, such as SWAROVSKI, the respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto”).
The Panel also concurs with the views expressed in Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, WIPO Case No. D2012-0979; Swarovski Aktiengesellschaft v. WhoisGuard, WhoisGuardProtected / Frank Amanda, WIPO Case No. D2012-2171 and Swarovski Aktiengesellschaft v. WhoisGuard Protected/ Wicky Blown, WIPO Case No. D2012-2501) where it was found that registration of a domain name including a well-known trademark in the absence of any legal connection to the Complainant or of any right or legitimate interest in the Complainant’s mark was strong evidence of bad faith.
Moreover, a trademark search would have revealed the existence of the Complainant’s prior trademark rights over the term “swarovski”. The Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
b) Used in bad faith.
When the Complaint was filed, the disputed domain name used to direct towards a website in Chinese containing erotic images of female models, the Panel finds that the Respondent has likely registered and used the disputed domain name to generate traffic to its own web site for commercial gains.
Therefore, the Panel finds that the Respondent was using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s well known trademark as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
When this decision was drafted by the Panel, the disputed domain named directed towards an inactive page. It is very likely that the Respondent is behind this change. The Panel does not believe that this change is sufficient to consider that the domain name is not used in bad faith.
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <swarovskioutlets.org> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: March 12, 2013