Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Hao Da of Taiyuan, China.
The disputed domain name <swarovskisingapores.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on June 17, 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.
A Bohemian “inventor and visionary” named Daniel Swarovski moved to an Austrian village in 1895 with a “newly-invented machine for cutting and polishing crystal jewelry stones.” See “www.swarovski.com”. This auspicious move was the start of what has become a global corporation that now earns billions of Euros each year on the sales in more than 120 countries of products that Mr. Swarovski could not possibly have envisioned.
Complainant uses the SWAROVSKI trademark in connection with bejeweled USB memory sticks, sparkling smart phone covers, jewelry, home accessories, collectibles and other items. To protect its valuable intellectual property, Complainant has registered its mark in many different countries, including China and Singapore. See, e.g.,Chinese trademark registration No. 384001; International trademark registration No. 857107.
The company sells its products in thousands of boutiques and through the Internet. It has registered several domain names, including <swarovski.com> and <swarovski.net>, which lead customers and potential customers to its official website, where they can learn about the famous Bohemian inventor, read about the company’s current operations, and view and purchase a wide variety of SWAROVSKI-branded products.
To protect its SWAROVSKI mark and website, Complainant has instituted numerous proceedings under the UDRP. Through these proceedings Complainant has obtained the ownership of many domain names which incorporate its SWAROVSKI mark. Many of these domain names had merely bundled the mark with generic or geographically descriptive terms and were deemed to be confusingly similar to Complainant’s mark. See, e.g., Swarovski Aktiengesellschaft v. www.swarovski-sale.com, WIPO Case No. D2012-1399 (ordering the disputed domain name be transferred to Complainant).
One recent proceeding dealt with a domain name that is virtually identical to the disputed domain name in this proceeding. In Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857, Complainant obtained an order transferring the ownership of the domain name <swarovskisingapore.com>. That decision was issued on December 18, 2013. Only a few weeks later, Respondent registered <swarovskisingapores.com>.
Respondent uses the disputed domain name to direct visitors to a website that offers jewelry which purportedly comes from Complainant, such as “Swarovski Pendants” and “Swarovski Earrings.” This website prominently features the SWAROVSKI mark as well as Complainant’s swan logo. There is no mention on the website that Respondent is independent from Complainant.
Based on its long usage, extensive advertising, and multiple trademark registrations, Complainant argues that it has rights in the SWAROVSKI mark and further claims that the disputed domain name is confusingly similar to its mark.
Respondent does not have any rights in the SWAROVSKI mark, Complainant contends, and has incorporated the mark into the disputed domain name in order “to confuse consumers into believing that the Infringing Website is an official Swarovski website and/or the Respondent is affiliated with or is authorized to sell products by Swarovski, particularly to consumers located in Singapore.” This belief would be false since Respondent is not an authorized seller of SWAROVSKI products.
In Complainant’s opinion, Respondent has intentionally misappropriated the famous SWAROVSKI mark: “The Infringing Domain Name is a blatant infringement of the SWAROVSKI® Marks and no bona fide use is being made of the Infringing Domain Name. This is clear evidence that the Respondent is trying to pass itself off as Swarovski and is exploiting the goodwill associated with the SWAROVSKI® Marks in order to obtain commercial gain.”
Complainant concludes its argument by asserting Respondent has registered and used the disputed domain name in bad faith and requests that the Panel issue an Order requiring the transfer of the disputed domain name to its ownership.
Respondent did not reply to Complainant’s contentions.
Complainant must prove the following elements in order to prevail in this proceeding:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. 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.
Cf. UDRP paragraph 4(a).
Complainant has clearly demonstrated rights in the SWAROVSKI mark. In addition to its many trademark registrations, Complainant has used the mark in commerce for many decades, extensively promoted and advertised the mark, and now offers its SWAROVSKI-branded products to customers throughout the world via boutiques and its interactive website.
It is also clear that the disputed domain name is confusingly similar to the SWAROVSKI mark: The disputed domain name simply combines the famous mark with a geographic location. This sum is not greater than its parts; it does not create something new and distinct. Instead, the disputed domain name simply suggests that Complainant does business in Singapore – which it does.
In Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857, the panel found that the domain name <swarovskisingapore.com> was confusingly similar to Complainant’s SWAROVSKI mark.
The fact that Respondent in this proceeding has added an “s” to the end of the word “Singapore” does not lessen the confusion between the disputed domain name and Complainant’s mark. Few Internet users are likely to even notice the extra “s” when the disputed domain name pops up in response to an Internet search for SWAROVSKI. Those who do notice the extra “s” might well assume it comes from the same marketing experts who deliberately misspell words as a way to draw attention to their marks. This practice is so widespread it even has a name: Sensational spelling. Seegenerally “www.nation.com.pk/business/04-Mar-2013/commercial-industry-using-wrong-spellings” and “www.npr.org/2013/09/12/221403903/sensational-spelling-bee”.
To defeat a UDRP complaint, a respondent may demonstrate rights or legitimate interests to the disputed domain name by introducing the following proof:
1. Respondent used, or prepared to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute; or
2. Respondent has been commonly known by the disputed domain name; or
3. Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Cf. UDRP paragraph 4(c).
Respondent did not offer any proof in this proceeding. The evidence which Complainant submitted is sufficient to show that Respondent does not have rights or legitimate interests to the disputed domain name.
First, the unauthorized and confusing use of Complainant’s famous mark to sell competing products that falsely purport to be genuine Swarovski jewelry is clearly not a bona fide offering of goods. 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.”). Further, there is nothing on the website at the disputed domain name that indicates Respondent is independent from Complainant. Just the opposite is indicated through the website’s use of the SWAROVSKI mark as well as Complainant’s swan logo.
Second, there is no evidence in the record that Respondent has ever been known as “swarovski singapores.” When registering the disputed domain name, Respondent called itself “Hao Da.”
Third, Respondent has used the disputed domain name for commercial gain: Respondent’s website offers jewelry for sale.
Under these circumstances, Respondent cannot be said to have any rights or legitimate interest in the disputed domain name. Accord 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).
The UDRP offers a non-exclusive list of actions which are considered evidence of bad faith registration and use of the disputed domain name:
1. 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
2. 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
3. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. 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.
Cf. UDRP paragraph 4(b).
There is ample evidence of bad faith registration and use. On December 18, 2013, a UDRP panel held that <swarovskisingapore.com> was confusingly similar to Complainant’s SWAROVSKI mark. On January 8, 2014, Respondent took the offending domain name, added an “s” to the end, and registered the equally confusing domain name. Respondent then used the newly registered domain name to steer Internet users to a website offering jewelry that falsely purported to be genuine Swarovski jewelry and to confuse consumers into believing that the website was affiliated or authorized by Complainant. There is nothing but bad faith in Respondent’s conduct. See Swarovski Aktiengesellschaft v. John Zamora, WIPO Case No. D2013-1857.
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 <swarovskisingapores.com> be transferred to Complainant.
Steven L. Snyder
Sole Panelist
Date: July 4, 2014