WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / lmj lmj

Case No. D2021-1264

1. The Parties

Complainant is Swarovski Aktiengesellschaft, Liechtenstein, represented by SILKA AB, Sweden.

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / lmj lmj, Singapore.

2. The Domain Name and Registrar

The disputed domain name <swarovskiwonderlab.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 28, 2021.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. Respondent sent an email communication on May 20, 2021. Accordingly, the Center sent the Commencement of Panel Appointment Process on May 21, 2021.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 3, 2021. 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. Factual Background

Complainant designs and manufactures high-quality crystals such as jewelry, home accessories and lighting. Complainant is headquartered in Wattens, Austria and has existed as a family-owned business since its founding in 1895 by Daniel Swarovski. Today, there are 3000 stores worldwide in 170 countries.

The phrase “Swarovski Wonderlab” was coined by Complainant’s creative director as new brand identity name and is described “as a place where science and magic meet, and extra and elegance collide”. The Swarovski Wonderlab collection will be rolled out in 28 “Instant Wonder” stores in several key domestic markets around the world. The temporary pop-up concept was publicly announced on February 15, 2021 and it debuted at the Galleria in Milan, Italy on February 23, 2021, with 27 more locations scheduled to open in North America, Europe and Asia Pacific in coming months.

Complainant is the owner of the registered trademark SWAROVSKI in several countries around the world, including:

- European Union Trademark Registration with reg. No. 000120576, registered on October 15, 1998.

- European Union Trademark Registration with reg. No. 003895091, registered on August 23, 2005.

- International Trademark registration with reg. No 303389A, registered on October 9, 1965.

- International Trademark Registration with reg. No 518015, registered on December 4, 1987.

Complainant has a significant presence on various social media platforms such as Facebook, Instagram, Pinterest, Twitter, and YouTube. The marketing for the Swarovski Wonderlab has been extensive on Complainant’s social media platforms.

Complainant has registered several domain names under Top-Level Domains (“TLDs”) containing the mark SWAROVSKI – see for example, <swarovski.com> (registered in 1996); <swarovski.us> (2002); and <swarovski.eu> (2006). Complainant has filed previous UDRP complaints and been successful in those cases, including the following: Swarovski AG v. Numan Oztas, WIPO Case No. DNU2019-0002; Swarovski AG v. Perfect Privacy, LLC / Nicholas Tucker, WIPO Case No. D2018-0493; and Swarovski AG v. Marius Muller, WIPO Case No. D2016-2315.

The Domain Name was registered on March 7, 2021 and redirected to the website located at “www.breitbart.com”.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights. Complainant asserts that taking into consideration its trademark portfolio in respect of the mark SWAROVSKI, it clearly meets the requirement of owning rights in a trademark for purposes of paragraph 4(a)(i) of the Policy. Complainant further submits that the Domain Name incorporates Complainant’s trademark in its entirety and that the mark is instantly recognizable within the Domain Name. Thus, the Domain Name must be confusingly similar to Complainant’s SWAROVSKI trademark.

Moreover, Complainant considers that the addition of the word “wonderlab” in the Domain Name is insufficient to distinguish the Domain Name from Complainant’s mark. On the contrary, it exaggerates the confusing similarity since “wonderlab” forms part of a new brand identity name used by Complainant called Swarovski Wonderlab. In support of this, a Google search of the terms “Swarovski Wonderlab” shows how the results are associated to Complainant and its activities.

(ii) Rights or legitimate interests

In Complainant’s view, it is clear that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has not given Respondent permission to use its trademark in any manner, including in the Domain Name. Likewise, Complainant is not affiliated or otherwise connected with Respondent. Further, Respondent is not commonly known by the Domain Name. In this regard, a Google search of “Swarovski Wonderlab”, showing results dated before March 6, 2021 (the day before the Domain Name was registered) evidence how Internet users commonly associated those terms with Complainant and its activities at the time the Domain Name was registered.

In addition, Complainant states that Respondent cannot show that, prior to notice of the dispute, Respondent used, or made demonstrable preparations to use, the Domain Name or a name corresponding to it in connection with a bona fide offering of good or service. In this regard, the Domain Name is redirected to the American far right news site at “www.breitbart.com”, which has no relevance to the Domain Name string and plausibly tarnishes Complainant’s mark. Complainant emphasizes that SWAROVSKI is exclusively recognized as a badge of origin for Complainant, and any use of that mark by Respondent would infringe its trademark rights. Bearing in mind that SWAROVSKI is well known in the market and that Internet users associate the terms “Swarovski Wonderlab” with Complainant and its activities, it is likely that the Domain Name will be perceived as connected to Complainant’s new Wonderlab concept, when that is not the case.

Finally, Complainant states that nowhere in the pre-communication with Complainant does Respondent provide any plausible arguments as to why Respondent registered the Domain Name. Respondent merely contacted Complainant with an email stating that Respondent registered the Domain Name and was wondering if Complainant would be interested in purchasing it. The email address used in the pre-communication does not have Swarovski in the email address, nor is the sender’s name Swarovski. In Complainant’s view, it is clear Respondent is taking advantage of the new brand identity to confuse Internet users and this does not constitute bona fide use of the Domain Name. In view of all these circumstances, Complainant cannot conceive any possible situation in which the use of the Domain Name would not infringe its rights in SWAROVSKI.

(iii) Registered and used in bad faith

Complainant contends that the Domain Name was registered and is being used in bad faith. The Domain Name was registered on March 7, 2021. Complainant contends that bearing in mind (i) Complainant’s SWAROVSKI mark has been registered and in use since 1965, (ii) the Domain Name reproduces in full Complainant’s SWAROVSKI mark, and (iii) the Domain Name is identical to “Swarovski Wonderlab” (Complainant’s collection announced on February 15, 2021 and launched on February 23, 2021, weeks before registration of the Domain Name), it is impossible to believe Respondent would have chosen the Domain Name if it did not have Complainant’s mark and activities in mind.

Complainant states that although there has been no new trademark applied for, the use of the name Swarovski Wonderlab was already in use at the time when Respondent registered the Domain Name and Respondent was aware of the concept. Finally, Complainant states it is clear that the Domain Name was registered in anticipation of Complainant’s use of the name Swarovski Wonderlab. Several notice letters have been sent to have the website taken offline and the Domain Name transferred; however, this has not yielded any action taken by Respondent. In view of these circumstances, Complainant asserts that Respondent had Complainant’s rights and activities in mind at the time of registration of the Domain Name, which amounts to a registration in bad faith.

Moreover, Complainant states the Domain Name redirects to the American far right news site at “www.breitbart.com”, which has no relevance to the Domain Name string and plausibly tarnishes Complainant’s mark. In view of this, it can be concluded that Respondent has used the Domain Name in bad faith as Respondent has knowingly registered a confusingly similar Domain Name that consists of Complainant’s registered SWAROVSKI mark in order to divert Internet users to Respondent’s website.

In addition, Complainant notes that Respondent is using a privacy shield. Although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can constitute a factor indicating bad faith. A motive for using a domain privacy service in this instance has been to increase the difficulty for Complainant to identify Respondent, which does not show good faith.

Moreover, Complainant emphasizes that the date of registration of the Domain Name, being shortly after Complainant announced its Wonderlab concept, is also indicative of bad faith. The fact that the mark has no obvious meaning other than as a trademark associated with Complainant, and that the Domain Name has been offered for sale to Complainant, strongly suggest that Respondent’s conduct falls within the scope of examples indicating a bad faith registration and use as set out in paragraph 4(b)(i) of the Policy.

Complainant concludes that Respondent’s behavior shows it acted with the intention to commercially profit from Complainant’s unique name and that under these circumstances the registration and making use of the Domain Name in anticipation of Complainant’s new Wonderlab concept justifies a finding that Respondent acted in bad faith within the meaning of the third element under the UDRP. In the absence of evidence from Respondent that the similarity of the Domain Name is coincidental, it must be concluded that Respondent knew of Complainant’s rights in the trademark when it registered the Domain Name. This is evident by the contacts made by Respondent to Complainant’s CEO offering to sell the Domain Name for EUR 5,000. There is no doubt that Respondent has registered the Domain Name for the sole purpose of selling it back to Complainant for a price which clearly exceeds Respondent’s out-of-pocket expenses related to the Domain Name. Respondent’s offer to sell the Domain Name to Complainant is evidence of bad faith as described under paragraph 4(b)(i) of the Policy.

To summarize, it is highly unlikely that Respondent was unaware of the rights Complainant has in the SWAROVSKI mark and the value of that mark, at the point of the registration. Respondent bears no relationship to the trademark and the Domain Name has no meaning other than referring to Complainant's name and trademark, and there is no way in which the Domain Name could be used legitimately under the current circumstances. Consequently, Complainant has demonstrated that Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent did not submit a formal Response to Complainant’s contentions. Respondent did send an email stating, “[w]e vigorously reject any allegations against us, regarding the mentioned domain. In case of panel ruling against us, please we wish to cancel the said domain (no transfer)”.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has well-established rights in its well-known SWAROVSKI trademark, both through registration and widespread use around the world. The Panel finds that the Domain Name incorporates the SWAROVSKI mark in its entirety, while adding the term “wonderlab” immediately after the mark. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to Complainant’s contentions, other than in a conclusory email. The Panel finds that Complainant has not authorized Respondent to use Complainant’s SWAROVSKI mark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name redirects to the American far right news site at “www.breitbart.com”. Given that the Domain Name is identical to, and effectively impersonates, the name of Complainant’s new brand identity, Swarovski Wonderlab, and redirects to an unrelated commercial news site, this use does not support a claim to any right or legitimate interest in the Domain Name. See e.g., WIPO Overview 3.0, section 2.5.3 (“Similarly, a respondent’s use of a complainant’s mark to redirect users…would not support a claim to rights or legitimate interests.”)

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. There is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its SWAROVSKI marks, and intentionally targeted them, when registering the Domain Name. Complainant’s trademark registrations and use of its marks predate registration of the Domain Name by many years. Respondent has used the Domain Name to impersonate Complainant new distinctive brand identity, Swarovski Wonderlab, which was publicly launched just a few weeks prior to the date Respondent registered the Domain Name. Given these facts, the Panel considers that the only logical conclusion is Respondent targeted Complainant and marks (and Complainant’s new branding initiative) when registering the Domain Name. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith”).

This point is further confirmed by Respondent’s use of the Domain Name. The evidence indicates that Respondent has used the Domain Name in a scheme that redirects Internet users to the far right news website at “www.breitbart.com,” while at the same time seeking to sell the Domain Name to Complainant at a price likely well in excess of the out-of-pocket cost for registering the Domain Name. Moreover, Respondent did so while using a using a privacy service to conceal its identity. All of these facts demonstrate bad faith registration and use of the Domain Name. See e.g., Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980 (the obvious connection between the registration of the domain name and the complainant’s product extension and trademark application cannot be interpreted with any legitimacy); Andre Geské v. Domain Admin / This Domain is For Sale, Home of Domains, WIPO Case No. D2017-1163 (disputed domain name was registered only a couple of days after the complainant had announced it had decided to adopt a brand identical to the domain name).

In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <swarovskiwonderlab.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: July 5, 2021