The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by Arnold & Porter, United States of America.
The Respondent is Kimi DeLuca of Smithfield, Rhode Island, United States of America.
2. The Domain Names and Registrar
The disputed domain names <swarovskibeads.com>, <swarovskibeads.net>
and <swarovskibeads.org> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2007. On February 23, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On February 23, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.
The Center appointed Peter G. Nitter as the sole panelist
in this matter on March 28, 2007. 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 is a corporation organized under the laws of Liechtenstein that manufactures and sells cut crystal. Among other things, Complainant manufactures crystal beads that are used as part of Complainant’s jewelry.
Complainant has registered the SWAROVSKI trademark with the United States Patent and Trademark Office for various classes through various registrations (Registration No. 1739479 on December 15, 1992, Registration No. 1785590 August 3, 1993, Registration No. 2402230 on November 7, 2000 and Registration No. 934915 on May 30, 1972).
Complainant has also registered the domains names <swarovski.com> and <swarovski.net>.
Respondent has registered <swarovskibeads.com>,
<swarovskibeads.org> and <swarovskibeads.net>.
5. Parties’ Contentions
A. Complainant
Complainant maintains that the contested domain names are confusingly similar to Complainant’s trademarks.
According to Complainant, the disputed domain names incorporate the SWAROVSKI trademark in its entirety and it is likely that Internet users will confuse the disputed domain names with Complainant’s trademark.
The addition of the generic term “beads” and the generic top-level domain name suffixes “.com”, “.net” and “.org” is not relevant when considering if the disputed domain names are confusingly similar to Complainant’s trademarks.
Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant also asserts that Respondent has no affiliation or connection with Complainant and has not been granted any license or consent to use the SWAROVSKI trademark in a domain name or in any other manner.
Respondent is, according to Complainant’s assertion, using the disputed domain names to sell jewelry and other products, including products sold under the SWAROVSKI trademark. Complainant holds that such a resale activity does not confer Respondent any proprietary rights in Complainant’s trademark. According to Complainant, Respondent has never been known by the disputed domain names and is not making a legitimate bona fide or fair use of the disputed domain names but intends to misleadingly divert customers for commercial gain.
Complainant further asserts that the disputed domain names are registered and being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has registered the trademark SWAROVSKI in the United States of America (USA), which is also the domicile of Respondent. This follows from the evidence submitted by the Complainant.
The domain names at issue are not identical to Complainant’s trademark, and the question is therefore whether there is a confusing similarity between the disputed domain names and the Complainant’s trademark. The domain names at issue consist of the Complainant’s SWAROVSKI trademark, with the addition of the word “beads” and the generic top level domain denominators “.com”, “.net” and “.org”.
Previous panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Thus, the first issue only concerns the part of the disputed domain names which consist of “swarovskibeads”.
Further, the mere addition of a common or generic word such as “beads”
to a registered trademark has consistently been deemed insufficient to avoid
confusing similarity between the domain name and the complainant’s trademark.
This follows from: PepsiCo,Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.)
and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO
Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC
Services, WIPO Case No. D2001-0174;
and Parfums Christian Dior v. 1 Netpower, Inc., WIPO
Case No. D2000-0022. In the present case, the only distinctive element of
the disputed domain names is thus identical to the Complainant’s trademark
SWAROWSKI.
Based on the above, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Based on the evidence presented to it, the Panel finds that Respondent is using the disputed domain names to promote and sell jewellery, including products sold under the SWAROVSKI trademark.
The Respondent has not been granted any license or right to use the mark in any manner by the Complainant and is apparently not commonly known by the mark (see paragraph 4(c)(ii) of the Policy).
Even if Respondent is selling genuine goods under the SWAROVSKI trademark,
the Panel finds that such a resale activity does not automatically confer any
rights in Respondent to use Complainant’s trademark SWAROVSKI in the disputed
domain names. For example, rights would not generally be conferred where a disputed
domain name is being used to sell not only complainant’s products, but
also the products of complainant’s competitors. This also follows from
previous UDRP decisions. See, for example, Burberry Ltd v. Kyungnam,
WIPO Case No. D2006-0186.
The Respondent has not filed any Response arguing that it has rights to or legitimate interests in the disputed domain names.
None of the Complainant’s assertions have thus been contested by the Respondent. In the event that any such connections or affiliations existed, it would be easy for the Respondent to substantiate this, while it is generally difficult for a Complainant to prove the negative that Respondent has no such rights.
For this reason, previous decisions under the UDRP have in the event of a Respondent’s default found it sufficient for Complainant to make a prima facie showing of its assertion.
In accordance with the above, there is no evidence allowing the Panel to conclude that the circumstances listed in paragraph 4(c) of the Policy apply to the Respondent’s situation.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain names in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain names at issue in bad faith.
The Panel accepts the Complainant’s assertion that it is unlikely that Respondent was unaware of Complainant’s rights to the SWAROVSKI trademark when registering the disputed domain names. This especially since Respondent is promoting and selling SWAROVSKI crystal by using the disputed domain names.
The fact that Respondent, through the Internet websites corresponding to the domain names at issue, promotes and sells SWAROVSKI jewelry indicates that Respondent is aware of Complainant’s trademark, and intends to take advantage of the trademark’s fame. Thus, the Panel finds that the Respondent’s use of the disputed domain names is an attempt to intentionally divert customers to its website for financial gain.
Hence, the Panel finds that the contested domain names are registered and being
used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <swarovskibeads.com>, <swarovskibeads.net> and <swarovskibeads.org>, be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: April 12, 2007
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