Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
Respondent is Huge / Carol Carol of Beijing, China.
The disputed domain name <swarovski-crystal-world.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2014.
The Center appointed David Perkins as the sole panelist in this matter on August 25, 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.
4.1.1 Annex F to the Complaint - an article published by PR Newswire on March 24, 2014 - provides background to Complainant’s business from its beginning in 1895 to the present day. The Complaint explains that Complainant is one of the world’s leading producers 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, Complainant’s products were sold under the SWAROVSKI trade mark in 1250 of its own boutiques and through a further 1100 partner-operated boutiques worldwide. Worldwide revenue for Complainant’s Group in 2012 was approximately EUR 3.08 billion. Those products comprised crystal jewellery stones and crystalline semi-finished goods for the fashion, home accessories, collectibles and lighting industries.
4.1.2 The SWAROVSKI trade marks
The Complaint states that Complainant has registered the SWAROVSKI trade mark globally, including the following registrations in China, which is Respondent’s domicile.
|
Registration number |
Mark |
Class of goods |
Date of Registration |
|
384001 |
SWAROVSKI |
14 |
July 30, 1987 |
|
385013 |
施华洛世奇 |
14 |
August 30, 1999 |
|
361346 |
施华洛世奇 |
14 |
September 20, 1999 |
|
346372 |
Swan device |
14 |
April 20, 1999 |
|
3520173 |
SWAROVSKI & Swan device |
14 |
November 7, 2004 |
|
4285550 |
SWAROVSKI in Chinese characters |
26 |
May 28, 2008 |
|
4285550 |
same |
14 |
October 14, 2007 |
4.1.3 The SWAROVSKI domain names
Complainant registered the domain names <swarovski.com> on January 1, 1996, and <swarovski.net> on April 16, 1998, both of which resolve to Complainant’s website at “www.swarovski.com”. Printouts from that website are exhibited to the Complaint.
4.1.4 The reputation of the SWAROVSKI trade mark
Also exhibited to the Complaint are press clippings illustrating, Complainant says, both the extent of its advertising and promoting products sold under the SWAROVSKI mark in China and worldwide and also the international recognition of that mark and the goodwill attaching to it in China and worldwide. The press clippings report promotions in China in October and November, 2013, both preceding registration of the disputed domain name.
4.2.1 In the absence of a Response, what is known of Respondent is derived from the Complaint and the information provided by the Registrar. The disputed domain name was registered on March 7, 2014 and resolves to an English language website, which offers for sale various purported Swarovski products. For example “Swarovski Bangles”, “Swarovski Earings” and “Swarovski Bracelets” and more. The “About Us” section of the website states: “Our website is a professional online shopping website for Swarovski items”.
4.2.2 Complainant has previously brought administrative proceedings under the Policy against Respondent, Swarovski Aktiengesellschaft v. Huge/ Carol Carol, WIPO Case No. D2014-0406. In that case the panel ordered transfer to Complainant of the disputed domain name <swarovski-australia-store.co>.
Identical or Confusingly Similar
5.A.1 On the basis of what is summarised in paragraphs 4.1.2 to 4.1.4 above, Complainant asserts that it has rights in the SWAROVSKI trade mark.
5.A.2 As to confusingly similarity, Complainant points out that the disputed domain name incorporates the well-known SWAROVSKI trade mark in its entirety. The addition of generic or descriptive suffixes, here “crystal” and “world”, does not, Complainant says, differentiate the disputed domain name from its trade mark so as to avoid confusing similarity. The dominant element of the disputed domain name is Complainant’s SWAROVSKI trade mark. In support of its case in this respect, Complainant cites earlier decisions under the Policy where the addition of descriptive suffixes to the SWAROVSKI mark failed to avoid findings of confusing similarity. For example, the domain names in Swarovski Aktiengesellschaft v. swarovski-earrings-sale.com, WIPO Case No. D2013-1824 <swarovski-earrings-sale.com>, Swarovski Aktiengesellschaft v. zhangwei, WIPO Case No. D2013-2184 <swarovskioutlet2u.com>, Swarovski Aktiengesellschaft v. Hellen Admas, WIPO Case No. D2013-1041 <swarovskisale-outlet.com>, Swarovski Aktiengesellschaft v. swarovskielementsoutlet.com swarovskielementsoutlet.com swarovskielementsoutlet.com, WIPO Case No. D2014-0753 <swarovskielementsoutlet.com>, Swarovski Aktiengesellschaft v. swarovskinecklace-sale.com, WIPO Case No. D2014-0244 <swarovskinecklace-sale.com> and Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858 <swarovskicrystaljewellery.com> were all held to be confusingly similar to the SWAROVSKI mark.
5.A.3 Nor does use of a hyphen serve to avoid confusing similarity where, as in this case, the disputed domain name incorporates the SWAROVSKI mark in its entirety. In addition to the decisions in Swarovski Aktiengesellschaft v. Hellen Admas, supra and Swarovski Aktiengesellschaft v. swarovskinecklace-sale.com, supra .referred to in the preceding paragraph, the Complaint also cites Swarovski Aktiengesellschaft v. Luca Vogler, WIPO Case No. D2013-0664, the decision regarding the domain name <swarovskioutletsalez-online sale.com>, which was similarly held to be confusingly similar.
Rights or Legitimate Interests
5.A.4 Complainant’s case in this respect is as follows. First, Respondent has no connection or affiliation with Swarovski, nor is it licensed or otherwise authorised to use the SWAROVSKI marks in a domain name or in any other manner.
5.A.5 Second, Respondent has never been commonly known by the disputed domain name: Policy paragraph 4(c)(ii).
5.A.6 Third, the disputed domain name is being used by Respondent for its own personal gain to advertise purported Swarovski products and misleadingly divert Internet users by creating the impression of an association with Complainant: Policy paragraph 4(b)(iv). Complaint cites earlier cases where, on similar facts to this administrative proceeding, the respondent was found to have no rights or legitimate interests in the disputed domain name. For example, the earlier decision against the same Respondent as in this case, Swarovski Aktiengesellschaft v. Huge/ Carol Carol, supra and also in Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyProtect.org, WIPO Case No. D2013-0643 <myswarovskisale.com>. Respondent’s website not only claims that it is an “authorised retailer” of Swarovski products, but also incorporates the Swan device and on the cover page depicts an exact copy of the photograph of the model, Miranda Kerr, with roses, from Complainant’s website.
5.A.7 Fourth, for the same reason Complainant says Respondent’s use of the disputed domain name is not a bona fide use: Policy paragraph 4(c)(i). In that respect, Complainant cites, inter alia, the earlier decision Swarovski Aktiengesellschaft v. N/A, delu xei, WIPO Case No. D2013-0708 involving the disputed domain name <swarovskicrystalss.com>.
5.A.8 In sum, when all the above factors are taken in to account, Complainant asserts Respondent cannot demonstrate rights or legitimate interests in the disputed domain name, citing a yet further earlier decision to that effect, namely the decision in Swarovski Aktiengesellschaft v. Xue Yan Yang, WIPO Case No. D2012-1041 <1swarovski.com>.
Registered and Used in Bad Faith
5.A.9 As to registration in bad faith, Complainant’s case is as follows. Citing the decision in Swarovski Aktiengesellschaft v. swarovskielementsoutlet.com swarovskielementsoutlet.com swarovskielementsoutlet.com, supra, Complainant says that, given the well-known status of the SWAROVSKI mark, it is inconceivable that Respondent registered the disputed domain name in good faith. This is particularly so, Complainant says, given that it’s trade mark is also well-known in Respondent’s domicile, China. Furthermore, as noted above, the Respondent in this case had previously registered the domain name <swarovski-australia-store.com>, which is indicative of a pattern of conduct contra Policy paragraph 4(b)(ii).
5.A.10 Further, registration of a domain name which is confusingly similar to Complainant’s SWAROVSKI mark and to which Respondent can have no rights or legitimate interests is strongly indicative of bad faith.
5.A.11 As to bad faith use, Complainant refers to paragraphs 4.2.1 and 4.1.2 above. Further, Complainant asserts that, as was held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Cases No. D2000-0003 regarding the domain name <telstra.org>, given the fame and reputation of the SWAROVSKI mark, there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith. In addition to the earlier cases involving its SWAROVSKI trade mark cited above, Complainant also cites the decisions in its favour Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 <swarovski-crystal.cc>, Swarovski Aktiengesellschaft v. Luca Vogler, supra, Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170 <officialswarovskiuk.com>, Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 < swariovskizone.com> and Swarovski Aktiengesellschaftv. Hopper Dirt, WIPO Case No. D2011-1525 <swarovskibijoux.info>.
5.A.12 In sum, Complainant says that the facts of this case demonstrate bad faith circumstances under Policy paragraph 4(b)(iv).
Complainant’s attempt to resolve this dispute informally
5.A.13 Here, Complainant makes two points. First, because Respondent has already been ordered to transfer <swarovski-australia-store.com> in Swarovski Aktiengesellschaft v. Huge/ Carol Carol, supra but is, nevertheless, continuing the same activity under the different disputed domain name in this administrative proceeding, Respondent is well aware that what it is doing is contrary to the Policy and would not be amenable to desist following a “cease and desist” letter. Second, it is Complainant’s experience that the typical response to such a letter is for respondent to transfer the disputed domain name to a third-party so as to delay the process and thwart Complainant’s efforts to resolve the dispute. This is termed “cyber-flight”.
As stated, Respondent has chosen not to submit a Response.
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 On the basis of the registrations listed in paragraph 4.1.2 above, clearly Complainant has rights in the SWAROVSKI trade mark. On the evidence presented in the Complaint, that is also a well-known mark internationally.
6.6 Further, the disputed domain name cannot avoid a finding of confusing similarity with that mark by the addition of hyphens between the descriptive words “crystal” and “world”. Complainant’s case in that respect is well made out.
6.7 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 The Panel is satisfied on the evidence presented in the Complaint, summarised in paragraphs 5.A.4 to 5.A.8 above, that Respondent cannot demonstrate that it has rights or legitimate interests in the disputed domain name whether under paragraph 4(c)(i) to (iii) of the Policy, or otherwise. Consequently, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 Again, it is not necessary to repeat Complainant's case summarised above in paragraphs 5.A.9 to 5.A.12. It is abundantly clear from the facts set out in the Complaint and its Annexes that the disputed domain name was registered and is being used in bad faith.
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 <swarovski-crystal-world.com> be transferred to Complainant.
David Perkins
Sole Panelist
Date: September 5, 2014