Complainant is Swarovski Aktiengesellschaft, of Triesen Liechtenstein, represented by SafeNames Ltd., United Kingdom.
Respondent is Wang Xiao Ping, of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <swarvski.com> (“Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2009. On that same day, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name and received its verification response. The response confirmed Respondent is listed as the registrant and provided the contact details. The Center verified 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 January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2009. An informal Response was filed with the Center on January 15, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 18, 2009. 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 has been established since 1968 as a worldwide distributor of precision-cut crystal glass and gem stone products manufactured by D. Swarovski & Co in Austria since 1895. It also distributes watches, clocks, jewelery, figurines, decorative and lighting objects, and ornaments incorporating the precision-cut crystal glass.
Complainant holds numerous registered trademarks for SWAROVSKI (the “Mark”) including United States Trademark Registration Nos. 1,739,479 (registered, 1992), 1,785,590 (registered, 1993) and 2,402,230 (registered, 2000). Complainant also is established in the country of origin of Respondent, China, and has trademark registrations there for the Mark on goods such as clocks, watch cases, costume jewellery, metal statues, cosmetics, lipsticks and beauty masks (e.g., Registration Nos.: 1,195,227 (registered, 1998), 3,117,190 (registered, 2003) and 3,520,173 (registered, 2004). In addition, Complainant holds 15 domain name registrations in various jurisdictions consisting of the SWAROVSKI mark and it does business using those domain names.
The Domain Name was registered on May 4, 2004. It currently resolves to a click-through-revenue or Pay Per click website. The links contained on the site are for Complainant, as well as Complainant's competitors e.g. (<helzberg.com>; cartier; <zales.com>; <fossil.com>; <shopnbc.com>; <royalartglass.com>; and <upscalegallery.com>. Respondent has also populated its website with links to adult and sex sites, including sex chat sites (e.g., “www.swappernet.com”, advertised as offering “Horny Swinger Sex Chat”); dating sites for married couples (e.g., “www.affairsclub.com” advertised as a site for “Married But Looking”).
5. Parties' Contentions
A. Complainant
Complainant claims it has rights in the registered mark SWAROVSKI and it has spent substantial time, effort and money promoting the SWAROVSKI trademark throughout the world, developing a great amount of goodwill associated with its Mark. Complainant further claims that Respondent's removal of the letter ‘o' from SWAROVSKI in the domain name <swarvski.com> is an overt case of typosquatting intended to divert Internet users to Respondent's website which they may mistakenly believe to be a legitimate or affiliated site with Complainant. Because removing the letter ‘o' from Complainant's Mark is not sufficient to avoid confusion, Complainant claims the Domain Name is confusingly similar to its SWAROVSKI Mark.
Complainant contends that using hyperlink advertising with a domain name similar to a registered trademark does not constitute a legitimate noncommercial or fair use of the domain name. In this regard, Complainant notes that Respondent intentionally recruited the assistance of a Parking Company (Oversee.net) to generate revenue from misleading members of the public and diverting customers. Complainant contends Respondent is an individual resident in China who does not possess any registered trademarks consisting of SWAROVSKI nor has Respondent become known as Swarovski or Swarvski. According to Complainant, a Google Search of “SWAROVSKI” and “SWARVSKI” in China does not return any results that are affiliated with Respondent. Furthermore, Respondent has not been licensed by Complainant or authorized in any way to use the SWAROVSKI Mark in the registration of the domain name <swarvski.com> or reproduce the Mark and relevant URLs throughout the website. Likewise, Complainant asserts Respondent is not affiliated with it in any way and could not make any legitimate use of the Domain Name given the fame, reputation and goodwill associated with Swarovski AG's Mark.
Complainant contends Respondent registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's Mark as to the source of Respondent's web site and products and services on Respondent's website.
In addition to Complainant's URL and name, Respondent's site contains numerous URLs which are of an adult and sexual nature. Complainant contends Respondent's use of such organizations in their Pay Per Click website is unfairly detrimental to Complainant's brand, reputation and products.
As further evidence of bad faith, Complainant contends Respondent has engaged in “typo-squatting” and is deliberately attempting to capitalise on the worldwide fame of the SWAROVSKI Mark from the Internet users who misspell the Swarovski website “www.swarovski.com”. For example, by containing links to similar products and competitors of Complainant, as well as Complainant's links, Respondent is generating confusion with the public regarding Respondent's affiliation with Complainant.
Lastly, Complainant contends the domain name <swarvski.com> was registered by Respondent to prevent Complainant from reflecting the Trade Mark SWAROVSKI and is part of a “pattern” of such conduct. This is because Respondent has a substantial portfolio of domain names containing or misspelling well known trade marked brands (e.g., <continetialairlines.com>; <fedxjobs.com>; <honda-scooters.com>; <mivrosoft.com>; <subwaysandwich.com>; <tmobileprepaid.com>; <youtube-download.com>) which are not related to Respondent and which use pay per click and generate click through revenue.
B. Respondent
Ths sum total of Respondent's reply is as follows: “I have never before heard of the complainant therefore the domain could not have been registered in bad faith.”
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following elements in order to obtain relief:
(i) The Domain Name 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) The Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. They will be examined in turn below.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
The Panel finds Complainant has established rights in the SWAROVSKI mark based on long-standing use of the Mark as well as its trademark registrations for the Mark.
The Panel further finds the domain name <swarvski.com> is confusingly similar to Complainant's SWAROVSKI mark. The Domain Name wholly incorporates the Mark, adding only the generic top-level domain (“gTLD”) “.com”. The addition of the gTLD “.com” is without legal significance from the standpoint of comparing the Domain Name to the Mark because use of a gTLD is required of domain name registrants and “.com” does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 (July 18, 2001).
Likewise, omitting the letter “O” from Complainant's SWAROVSKI mark in the domain name <swarvski.com> does not distinguish the Domain Name from the Mark. See, e.g., Harrods Limited v. Mike Anderson Consultants, WIPO Case No. D2003-0813 (December 11, 2003) (holding that omitting “s” from a well-known trademark does not diminish similarity); Transcontinental Media Inc. v. Infa Dot Net Web Services/Mr. James M. Van Johns, WIPO Case No. D2001-0908 (September 9, 2001) (holding domain name is identical or confusingly similar to trademark because domain name differs from mark only by a hyphen). Respondent's omission is considered “typosquatting” because the domain name is likely to create confusion due to its visual similarity to the Mark. See, e.g., Harrods Limited v. Mike Anderson Consultants, WIPO Case No. D2003-0813 (December 11, 2003).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the Mark in any manner including as a domain name or on the website associated with the Domain Name; (2) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel found above Respondent's use of the Domain Name is a confusingly similar one); (3) Respondent has not been and is not commonly known by the Domain Name (Respondent is an individual resident in China who does not appear to be known as “Swarvski”); and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Name (it appears from the evidence of record that Respondent registered the Domain Name to divert customers seeking Complainant to Respondent's websites where Respondent attempts to sell those customers goods and services by hyperlink advertising in direct competition with Complainant's goods and services).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon Respondent to rebut Complainant's evidence. In this case, because Respondent has failed to file a meaningful response and, indeed, no response with regard to this element, the Panel finds that Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
The sum total of Respondent's reply to the Complaint in this matter is an email containing the following unverified statement: “I have never before heard of the complainant therefore the domain could not have been registered in bad faith.” Respondent's statement is belied by the uncontested evidence of record. As an initial matter, Complainant had registered and been using the Mark in at least the United States and China, where Respondent resides, at the time Respondent registered the Domain Name. That Respondent chose to use a known trademark of another for its Domain Name, omitting only one letter to sell competing goods, persuades the Panel that Respondent likely knew of Complainant and the Mark. Moreover, the fact that Respondent features Complainant's SWAROVSKI mark repeatedly and prominently on its website (correctly spelled) and links to Complainant's website demonstrates Respondent knew of Complainant and the Mark when it registered the Domain Name. To have proceeded with registration and use knowing of Complainant's rights in the Mark demonstrates Respondent's bad faith. See, Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269 (June 21, 2005).
Respondent's bad faith is also reflected in the undisputed evidence that Respondent is a serial typosquatter who has registered many domain names incorporating the slightly modified trademarks or company names of other entities (e.g., <continetialairlines.com>; <fedxjobs.com>; <honda-scooters.com>; <mivrosoft.com>; <subwaysandwich.com>; <tmobileprepaid.com>; youtube-download.com>). Respondent's registration of the domain name <swarvski.com> which simply removes the “O” from Complainant's mark SWAROVSKI, is further evidence that Respondent is a serial typosquatter. It is well-settled that the practice of typosquatting is evidence of the bad faith registration of a domain name. See, e.g., ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (June 28, 2005); see also, Longs Drug Stores California., Inc. v. Shep Dog, WIPO Case No. D2004-1069 (February 28, 2005) (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (January 26, 2005) (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (November 29, 2004) (“[ typosquatting ] is presumptive of registration in bad faith”).
Additional evidence of Respondent's bad faith use of the Domain Name is the manner in which it is being used. Respondent is using a confusingly similar Domain Name in an apparent attempt to profit from visitors clicking through to competitors' commercial websites the Panel finds that Respondent is clearly using the Domain Name intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's Mark. Using a domain name that is confusingly similar to another's trademark to offer sponsored links to third parties has been regarded by other panels as registration and use in bad faith. SeeMcDonalds Corporation v. ZusCom, WIPO Case No. D2007-1353 (November 14, 2007). The fact that some of the commercial websites linked to Respondent's website were those of Complainant's competitors is a further indication of bad faith. See DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc., WIPO Case No. D2007-1424 (November 22, 2007). Furthermore, by diverting potential customers looking for Complainant's site to a site containing sexual content with an intent to profit from the conduct is evidence of Respondent's bad faith. See Giampaolo Matteucci v. Webmaster, AWG, WIPO Case No. D2001-1135 (December 7, 2001).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <swarvski.com> be transferred to Complainant.
Harrie R. Samaras Sole Panelist
Dated: March 4, 2009
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