The Complainant is Swarovski Aktiengesellschaft, Triesen, Liechtenstein, represented by Arnold & Porter, United States of America.
The Respondent is Candy Connery, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyswarovski.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2007. On October 9, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On October 10 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 11, 2007. 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”), 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 October 18, 2007. Upon request of the Complainant to allow settlement options to be explored, the proceedings were suspended between October 25, 2007 and February 14, 2008. The proceedings were re-instituted at the Complainant’s request on February 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2008.
The Center appointed Michael J. Spence as the sole panelist in this matter on March 14, 2008. 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
The Complainant has been manufacturing and selling cut crystal products since 1895. It has numerous trademark and domain name registrations including the word “Swarovski” and is known by that name throughout the world. The Complainant operates a tightly controlled network of authorized dealers and licensees for the resale of its cut crystal products.
The Respondent for some time operated a website under the domain name <buyswarovski.com>. It is unclear from the case file whether on this website the Respondent offered for sale any genuine “Swarovski” products, but it certainly also sold products not licensed or manufactured by the Complainant. One of the principal products sold on through the website appears to have been sandals that, though not manufactured by the Complainant or under its licence, were apparently decorated with genuine Swarovski crystals. The website also contained material taken from the Complainant’s website and an inaccurate guide to the color of the Complainant’s range of cut crystals.
The content on the Respondent’s website has been removed, but the Respondent refuses to transfer the disputed domain name to the Complainant without compensation.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark as the domain name incorporates the trademark in its entirety, and the addition of the descriptive word “buy” does not sufficiently distinguish the domain name from the trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name because: neither the Respondent, nor her business, have ever been known by the disputed domain name; and the disputed domain name has been used misleadingly to divert customers to a website selling products at least many of which are neither manufactured, nor licensed by, the Complainant. Finally, the Complainant contends that the Respondent’s registration of the name was in bad faith as it was undertaken both intentionally to mislead consumers in order to profit from their confusion, and unjustly to take advantage of the reputation of a famous mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Whether a “trademark and [a] disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, (Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037). Nevertheless, the decision in Lilly ICOS LLC v. John Hopking/Neo net Ltd.,
WIPO Case No. D2005-0694 establishes that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark [as the Respondent has done in this case] and adding descriptive or non-distinctive matter to it”. This will particularly be the case where, as here, the mark is a famous mark. In Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti the panel found that the word “buy” was insufficient to distinguish the Complainant’s well-known and distinctive pharmaceutical trademark LANTUS from the disputed domain name <buylantus.com>. A similar conclusion must be reached in this case. Furthermore, it is highly probable that some Internet users would have been misled into believing that there is a connection between the Complainant and the Respondent. For this reason, the disputed domain name may be said to be confusingly similar to the Complainant’s trademarks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The core question in applying this element of the Policy to this case is whether, assuming that some of the products offered for sale under the disputed domain name were genuine Swarovski products, or at least decorated with genuine Swarovski products, the Respondent’s use of the domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i). The current state of panel decisions in relation to this issue is helpfully summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as follows:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095. The conditions that it outlines have clearly not been satisfied by the Respondent in this case, in that the site was not used only to sell genuine Swarovksi products, and there was no disclosure of the relationship between the Complainant and the Respondent. On the contrary, the Respondent appears to have attempted to give the impression that it was an authorized Swarovski licensee. It is noteworthy that the Oki Data conditions have generally been applied by panels in cases involving authorized resale or distributorship arrangements and the Respondent was not an authorized dealer or licensee.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
The argument that use of a trademark in a disputed domain name that is confusingly similar to that mark is of itself sufficient to constitute bad faith must be treated with great caution. Were this argument accepted in its broadest formulation, the first and third elements of paragraph 4(a) of the Policy could too easily be conflated. Nevertheless, where the possibility of confusion is great, and the disputed domain name is used to direct Internet users to a website in which products other than those of the Complainant are sold, this suggests bad faith on the part of the Respondent. Given the fame of the Complainant’s trademark, the strong probability of initial interest confusion in this case, and the apparent lack of any attempt on the website to distinguish the Complainant and the Respondent (indeed, the use by the Respondent of material taken from the Complainant’s website), it is reasonable to conclude that the Respondent intended to profit commercially from the confusion that its use of the Complainant’s trademark created, or at least unjustly to take advantage of the reputation of the Complainant’s mark. Moreover, according to the record, the Respondent has made no attempt to answer the Complaint other than to offer the disputed domain name for sale at a price that exceeds that of the registration fee.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
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 name, <buyswarovski.com> be transferred to the Complainant.
Michael J. Spence Sole Panelist
Dated: March 27, 2008
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