The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited of Colombo, Sri Lanka.
The Respondent is zhangjiang nan of Shanghai, China.
The disputed domain name <swarovskijewelrysaleoutlet.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 the Respondent of the Complaint, and the proceedings commenced on May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2014.
The Center appointed Steven L. Snyder as the sole panelist in this matter on June 20, 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.
The Complainant cuts crystals and gems and affixes them to a wide variety of products, including earrings, watches, purses, bracelets, necklaces, cuff links, ear buds for iPods, smart phone covers and USB memory sticks. Items that sparkle apparently appeal to people around the world: The company’s products are sold in more than 2,300 boutiques in 120 countries and in 2012 the company reportedly earned more than 3 billion Euros from the sale of its products.
To support its global operations, the Complainant has registered the SWAROVSKI trademark in many different countries. The company’s registered the SWAROVSKI mark in China in 1987. Chinese trademark registration No. 384001. Since then, the Complainant has registered a half-dozen additional marks in that country, including ones utilizing Chinese characters and the company’s logo, which is a stylized swan. See e.g., Chinese trademark registration no. 3520173.
Additionally, the company has registered several domain names, including <swarovski.com> and <swarovski.net>. It uses those domain names to lead customers and potential customers to its website, where they can learn about the company, view its products and purchase such fashion items as an “earphone jack charm.”
To protect its SWAROVSKI mark and website, the Complainant has instituted numerous proceedings under the UDRP. Through these proceedings the Complainant has obtained the ownership of numerous domain names that incorporate its SWAROVSKI mark. Many of these domain names bundled the mark with generic or geographically descriptive terms. See, e.g., Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857 (ordering transfer to Complainant of domain names <swarovski-australia.com>, <swarovski-canada.com>, <swarovskigioielli.com>, <swarovski-india.com>, <swarovskioutlet-uk.com> and <swarovskisingapore.com>); and Swarovski Aktiengesellschaft v. www.swarovski-sale.com, WIPO Case No. D2012-1399 (ordering the disputed domain name be transferred to Complainant).
In contrast to the Complainant, there is virtually nothing known about the Respondent other than the fact that he (or she) registered the disputed domain name on February 27, 2014, and is operating a website which sells purportedly genuine SWAROVSKI jewelry. The Respondent’s website displays both the registered SWAROVSKI word mark and the swan logo; the website also proclaims its owner to be an “authorized retailer.”
The Complainant argues that it has spent “substantial time, effort and money advertising and promoting the SWAROVSKI marks in China” and as a consequence its marks are “famous and well known” in that country. The Complainant states “it is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI Marks” at the time he (or she) registered the disputed domain name.
The Complainant disavows any connection with the Respondent. Contrary to the representations on the Respondent’s website, the Complainant states that the Respondent is not an authorized reseller of its products: “The Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI® Marks in a domain name or in any other manner.”
Based on these facts and those noted in the preceding section, the Complainant makes the following arguments to show it is entitled to prevail in this action:
(i) The Complainant “is the exclusive owner of famous and well known registered trademarks in China and globally”;
(ii) The disputed domain name “contravenes paragraph 4(a)(i) of the Policy as it is identical or confusingly similar to the trademark in which the Complainant has rights;”
(iii) The Respondent “is in contravention of paragraph 4(a)(ii) of the Policy as the Respondent has no rights or legitimate interests in respect of” the disputed domain name; and
(iv) the disputed domain name “has been registered and is being used in bad faith in contravention of paragraph 4(a)(iii) of the Policy.”
The Complainant requests that the Panel issue a decision requiring the transfer of the disputed domain name to its ownership.
The Respondent did not reply to the Complainant’s contentions.
To prevail in this proceeding, the Complainant must prove the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
UDRP paragraph 4(a).
The first element contains two requirements. First, the Complainant must establish that it has rights in a trademark or service mark. Second, the Complainant must show that the disputed domain name is identical or confusingly similar to that mark.
The Respondent is located in China. The Complainant has registered the SWAROVSKI mark in China, as well as many other countries, and did so long before the Respondent registered the disputed domain name. See Chinese trademark registration No. 384001. This undisputed evidence establishes the first part of the first element.
As for the second part, it is evident that <swarovskijewelrysaleoutlet.com> is confusingly similar to the SWAROVSKI mark. The disputed domain name incorporates the entire mark and then adds generic words which only heighten the confusion: The words “jewelry sales outlet” could lead any fashion-conscious consumer to believe that she (or he) had come across a domain name affiliated with the Complainant’s famous jewelry sales operation. Other UDRP panels considering similar domain names have reached the same conclusion. See, e.g., Swarovski Aktiengesellschaft v. Crystal Deal, WIPO Case No. D2012-1478 (ordering the transfer of <swarovski-onsales.com> to Complainant); Swarovski Aktiengesellschaft v. Domains By Proxy, LLC / ming robot, WIPO Case No. D2012-1366 (ordering the transfer of <swarovski-onsale.com> to Complainant).
A respondent may introduce a wide variety of proof to demonstrate rights or legitimate interests to the disputed domain name, including the following:
(i) before any notice to respondent of the dispute, respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired any trademark or service mark rights; or
(iii) Respondent is 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.
UDRP paragraph 4(c).
The Respondent did not respond to the Complaint and there is no evidence to suggest that the Respondent may take advantage of any of the three routes to legitimacy outlined above.
First, the Respondent is using the Complainant’s trademark to sell jewelry in competition with the Complainant. That is not a bona fide offering of goods or services. See Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891 (“Such use which diverts Internet users who … are looking for the Complainant’s products / services on the Internet to competing websites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the Domain Name.”).
Second, the Respondent is not commonly known as <swarovskijewelrysaleoutlet.com>. When registering the disputed domain name, the Respondent listed his (or her) name as zhangjiang nan.
Third, the Respondent is obviously using the disputed domain name with the intention of realizing a commercial gain. After all, the Respondent’s website does not offer free jewelry. The Respondent is attempting to sell jewelry, such as the “Swarovski Mini Heart Light Siam Pendant”.
The UDRP does not limit the type of evidence which might demonstrate registration and use of a domain name in bad faith, but it does specify that the following evidence “shall” constitute such evidence:
(i) Circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.
UDRP paragraph 4(b).
There is no evidence that would establish the first three categories listed above. There is more than ample evidence to establish the fourth category. The disputed domain name, <swarovskijewelrysaleoutlet.com> leads to a website that bears the SWAROVSKI mark, the company’s swan logo, and the words “Authorised Retailer.” The website offers jewelry which is represented to be manufactured by the Complainant.
Under the tab “About Us,” the website proclaims, in somewhat idiosyncratic English, that the company is affiliated with the Complainant and that its products are from the Complainant: “We're professional Swarovski jewelry online retailer. … All of our Swarovski items are made of real Swarovski elements, with first-quality, and, best of all, it's at 10% to 75% off retail prices. Your order will with original Swarovski blue package boxes, certificates.” www.swarovskijewelrysaleoutlet.com/help/about-us.html.
The Complainant has met its burden of proof on this element, as well as the other two, and is entitled to the requested relief.
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, <swarovskijewelrysaleoutlet.com>, be transferred to the Complainant.
Steven L. Snyder
Sole Panelist
Date: July 4, 2014