Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is huang dougong of Putian, Fujian, China.
The disputed domain name <swarovskiuk.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On September 16, 2013, the Center sent an email communications to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding 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 Respondent of the Complaint, and the proceedings commenced on September 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 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.
Complainant is a global company with a presence in more than 120 countries, including production facilities in 18 countries and distribution to 42 countries. In 2012, Complainant’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. Complainant uses the SWAROVSKI marks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. Complainant’s approximate worldwide revenue in 2012 was EUR 3.08 billion. The Panel accepts that SWAROVSKI is a well-known trademark.
Complainant is the registered owner of numerous trademarks comprising the word SWAROVSKI in a number of jurisdictions, including in the United Kingdom of Great Britain and Northern Ireland (“UK”) and China. The mark SWAROVSKI was first registered in the UK on December 1, 1989. The mark SWAROVSKI was first registered in China on July 30, 1987. Complainant is the registered owner of additional trademarks comprising the word SWAROVSKI in the UK and China.
Respondent huang dougong is based in China. The disputed domain name <swarovskiuk.com> was registered on November 29, 2012.
Complainant claims the disputed domain name is confusingly similar to the SWAROVSKI marks because <swarovskiuk.com> comprises Complainant’s mark and is a reference to the sale of Swarovski products in the UK.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name because (1) Complainant’s rights in the SWAROVSKI marks have been recognized by several UDRP panels; (2) Respondent has no rights or legitimate interests in <swarovskiuk.com>; (3) Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI marks; (4) Respondent has never been known by the disputed domain name; (5) <swarovskiuk.com> is being used to advertise purported Swarovski products and “www.swarovskiuk.com” misdirects Internet traffic; and (6) Respondent’s use of the SWAROVSKI mark is for the purpose of misleading consumers into believing that Respondent is associated with or approved by Complainant.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith because (1) <swarovskiuk.com> was registered with the knowledge of Complainant’s rights in the SWAROVSKI marks; (2) Respondent must have been aware of Complainant’s trademark at the time of registration of <swarovskiuk.com> because Complainant’s marks are well-known in the UK, China, and worldwide; (3) the selection of <swarovskiuk.com> cannot be a coincidence because it wholly incorporates Complainant’s well-known mark which is not a generic or descriptive term; (4) Respondent has done nothing to identify itself as being independent from the Complainant and on the contrary, has incorporated Complainant’s marks throughout <swarovskiuk.com>; (5) Respondent is using <swarovskiuk.com> to sell products that are confusingly similar or identical to Complainant’s products; and (6) <swarovskiuk.com> creates initial interest confusion.
Respondent did not reply to Complainant’s contentions.
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceeding. Translation of the Complaint and other materials would cause unnecessary cost and delay.
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
There is no doubt that Complainant has rights in the trademark SWAROVSKI (and related marks). The record shows Complainant owned trademark rights in SWAROVSKI prior to the disputed domain name registration in November, 2012. The disputed domain name incorporates the SWAROVSKI mark in its entirety with the addition of the word “uk”. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. The alteration of the trademark to include the use of a country identification, such as UK or USA, is not enough to overcome a finding of confusing similarity. See Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi, WIPO Case No. D2010-2057; see also Swarovski Aktiengesellschaft v. Bingshu Wu, WIPO Case No. D2010-1734. Thus, the combination of the SWAROVSKI mark and the word “uk” creates a false and misleading impression to consumers that the website is authorized to sell Swarovski beads and jewelry in the UK.
It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name.
The record also shows that Respondent is using the <swarovskiuk.com> to operate an online shop in the English language that offers various purported Swarovski products. Further, Respondent has also used SWAROVSKI marks and Swarovski marketing material without authorization throughout the “www.swarovskiuk.com” website. Respondent does not disclose to Internet users that “www.swarovskiuk.com” is not authorized to sell Swarovski products. It is clear that Respondent is attempting to create the impression that the website at the disputed domain name <swarovskiuk.com> is an authorized Swarovski website.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interest in the mark SWAROVSKI. Thus, Complainant has successfully presented a prima facie case, which Respondent has not rebutted. The Respondent has filed no Response. There have been no other communications from the Respondent in connection with this case. Without a Response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. Further, as discussed above and below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
Paragraph 4(b)(iv) of the Policy states (in part) that there is evidence of bad faith registration and use where, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
The record shows Complainant owns trademark rights in SWAROVSKI that predate creation of the disputed domain name. The disputed domain name contains Complainant’s trademark in its entirety. Given the global recognition of Complainant, the Panel finds that Respondent was likely aware of or should have known of Complainant’s rights in the trademark SWAROVSKI when registering the disputed domain name. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a respondent would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent is using “www.swarovskiuk.com” to offer for sale various purported Swarovski products. This use of Complainant’s trademarks evidences Respondent’s intention to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation, or endorsement of the website.
The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <swarovskiuk.com> be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: October 31, 2013