The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Simon Zhang of Guangdong, China.
The disputed domain name <swarovskimall-online.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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 June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.
The Center appointed Daniel Peña as the sole panelist in this matter on July 23, 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 is a corporation organized under the laws of Liechtenstein.
The Complainant uses the SWAROVSKI trademarks in connection with crystal jewellery, stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles, and lighting industries.
The Complainant is a known and 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 2012, the Complainant’s products were sold in 1, 250 of its own boutiques and through 1, 100 partner-operated boutiques worldwide.
The Complainant’s approximate worldwide revenue in 2012 was EUR 3.08 billion.
The Complainant has registered the SWAROVSKI trademarks globally, including several registrations in China.
The disputed domain name was registered on February 20, 2013.
The disputed domain name is confusingly similar to the SWAROVSKI trademarks. Previous UDRP panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.
The Complainant spends substantial time, effort and money advertising and promoting the
SWAROVSKI trademarks in China and worldwide. As a result, the SWAROVSKI trademarks have
become famous and well known in China.
The Complainant has developed an enormous amount of goodwill in the SWAROVSKI trademarks internationally, and the public has come to associate the SWAROVSKI trademarks exclusively with high quality items marketed by the Complainant.
The Complainant owns the following trademark registrations in China:
Trademark | Class | Certificate Number | Registration Date |
|
SWAROVSKI |
14 |
384.001 |
July 30, 1987 |
|
施华洛世奇 |
14 |
385.013 |
August 30, 1989 |
|
施华洛世奇 |
14 |
361.346 |
September 20, 1989 |
|
|
14 |
346.372 |
April 20, 1989 |
|
|
14 |
3520173 |
November 7, 2004 |
|
|
26 |
4285551 |
May 28, 2008 |
|
|
14 |
4285550 |
October 14, 2007 |
The Complainant has registered several domain names including <swarovski.com> and <swarovski.net> which point to the Complainant’s official website. This site enables Internet users to access information regarding Swarovski and its merchandise and to purchase genuine Swarovski products.
The Respondent has used the SWAROVSKI trademarks in the disputed domain name so as to cause confusion among Internet users between the disputed domain name and the Complainant’s approved websites. Internet users who intend to purchase Swarovski products online, may search for <swarovskimall-online.com> on their web browser, as a reference to the sale of Swarovski jewelry, and be directed to the website located at the disputed domain name.
This type of initial interest confusion is illegal because it wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI trademarks to divert Internet traffic to the website located at the disputed domain name.
The addition of the terms “mall” and “online” as suffixes to the SWAROVSKI trademarks do not lessen the confusing similarity between the disputed domain name and the Complainant’s mark.
The Respondent has no rights or legitimate interest in the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI trademarks in a domain name or in any other manner.
The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”.
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 trademarks, as it is inconceivable that the Respondent was unaware of Complainant´s rights in the SWAROVSKI trademarks.
The Respondent registered the disputed domain name on February 20, 2013 and is operating an online shop that offers for sale various purported Swarovski products e.g. Swarovski necklaces, Swarovski bracelets and Swarovski pendants.
Registration of a famous mark, like the SWAROVSKI trademarks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.
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.
Furthermore, it is unlikely that the Respondent can prove good faith use of the disputed domain name because it is difficult to conceive of a use that would not infringe the SWAROVSKI trademarks.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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;
(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.
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 Panel holds that the disputed domain name <swarovskimall-online.com> is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. See Swarovski Aktiengesellschaft v. Blue Crystal, WIPO Case No. D2012-0630; Swarovski Aktiengesellschaft v. Cao Zhiming, WIPO Case No. D2012-1028; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, WIPO Case No. D2012-0979.
Mere addition of the descriptive terms “mall” and “online” as suffixes to the Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers are likely to be confused and may falsely believe that the website at the disputed domain name is operated by the Complainant for selling SWAROVSKI-branded products online. See Swarovski Aktiengesellschaft v. Xue Yan Yang, WIPO Case No. D2012-1041; Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139.
The confusion between the disputed domain name <swarovskimall-online.com> and the SWAROVSKI trademarks is reinforced as a result of the widespread reputation of the Complainant’s trademark and business throughout the world, including in China, the place of domicile of the Respondent. The Panel also notes that the website commercializes products using the Complainant’s trademarks.
The Panel is satisfied that the disputed domain name <swarovskimall-online.com> is identical or confusingly similar to the Complainant’s name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of production in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Complainant’s rights in the its trademarks have been recognised by several previous UDRP panels. For example, in Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 the panel stated that the “Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices.”
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The disputed domain name is being used to advertise purported Swarovski products and the domain name <swarovskimall-online.com> misdirects Internet traffic to the disputed domain name. In the circumstances and as further discussed below, such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its 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 the respondent’s web site or location or of a product or service on its website or location.
The Panel considers that the disputed domain name <swarovskimall-online.com> was registered with the knowledge of the Complainant’s rights in the SWAROVSKI trademarks, as it seemed that the Respondent was aware of the Complainant’s rights in the SWAROVSKI trademarks. In fact, the Respondent through its website offers for sale purported Complainant products. Furthermore, the Complainant has demonstrated that its trademarks are well known in China and worldwide. Therefore, the choice of the disptued domain name <swarovskimall-online.com>, which wholly incorporates the SWAROVSKI trademarks, cannot be a coincidence. The term “Swarovski” is not a descriptive or generic expression.
Concerning the use of the disputed domain name <swarovskimall-online.com>, in this Panel’s view, the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the SWAROVSKI trademark in the disputed domain name, throughout the website connected to the disputed domain name and attempts to attract consumers for commercial gain by purporting to sell the Complainant’s products.
It is clear to this Panel that the Respondent is using the trademark SWAROVSKI as part of the disputed domain name <swarovskimall-online.com> to create the impression that the Respondent is operating the Complainant’s online store in China. Therefore, the Panel also infers that the Respondent’s registration and use of the disputed domain name was intended to disrupt the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of consumers visiting the Respondent’s website thinking that it was related to the Complainant or its business.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <swarovskimall-online.com> be transferred to the Complainant.
Daniel Peña
Sole Panelist
Date: August 6, 2013
