WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Mingchongyan

Case No. D2012-0188

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is Mingchongyan of Hefei, Anhui China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2012. On February 3, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Domain Name. On February 6, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and the language of the Registration Agreement is Chinese. On February 7, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 8, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 the Respondent of the Complaint, and the proceedings commenced on February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2012.

The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on March 12, 2012. 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

4.1 The Complainant has stated that it was founded in Wattens, Austria in 1895 and that it uses the SWAROVSKI Marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.

4.2 The Complainant claims that it is now the world’s leading producer 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. It stated that in 2010, Swarovski products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide and that it’s approximate worldwide revenue in 2010 was EUR 2.66 billion.

4.3 The Complainant has provided evidence to show that it has registered numerous SWAROVSKI Marks in China and community trademarks applicable in Austria. The Complainant has also demonstrated that it maintains websites under the domain names <swarovski.com> and <swarovski.net>.

4.4 The Complainant has stated that the Respondent has registered the Domain Name on December 20, 2011 and is operating an online shop since then and advertises for sale various purported Swarovski products such as “Swarovski Necklaces”, “Swarovski Bracelets”, “Swarovski Rings”, “Swarovski Earrings” and other purported Swarovski products.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name <onlyswarovski.com> is confusingly similar to SWAROVSKI in which it holds rights for the following reasons:

(i) The Complainant submits that the Respondent is using the Domain Name to confuse consumers into believing that the Respondent’s website is an official Swarovski website and/or the Respondent is affiliated with or authorised to sell products by the Complainant. The Respondent does not identify itself as being independent from the Complainant and has not only used the SWAROVSKI Marks in the Domain Name but also operates an online shop which utilises the SWAROVSKI Marks throughout and offers for sale goods similar to those sold by the Complainant. Under most of the products sold on the website at the Domain Name, the Respondent has also stated that the manufacturer of these products is “Swarovski Crystals”.

(ii) The Complainant has provided evidence showing that initial steps were taken to inform the Internet Service Provider (“ISP”), Codero, which was hosting the website at the Domain Name that the content on the site infringes the SWAROVSKI Marks. Following the report of this abuse, Codero (the ISP), agreed to remove all infringing content from the website and the website was suspended. Subsequently, the Respondent used a different account to upload the infringing content using the same ISP and continues to use the SWAROVSKI Marks in the Domain Name.

(iii) The Complainant submitted that previous UDRP panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. The Complainant submitted that addition of the term “only” as a prefix to the SWAROVSKI Marks does not lessen the confusing similarity between the Domain Name and the Complainant’s mark.

5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:

(i) The Respondent has no connection or affiliation with Swarovski and has not received any license. The Respondent has never been known by the Infringing Domain Name and has no legitimate interest in the SWAROVSKI Marks or the name “Swarovski”. The Complainant has never licensed or given authorization of any other kind to the Respondent to use the SWAROVSKI Marks.

(ii) The Respondent has never been known by the Domain Name and has no rights or legitimate interests in the SWAROVSKI Marks or the name “Swarovski”.

(iii) The Respondent’s sale of purported Swarovski products demonstrates that he is not making a bona fide offering of goods or services, nor does he have a right or legitimate interest.

(ii) The Respondent’s use does not satisfy the test for bona fide use established in prior UDRP decisions. The Respondent does not use the Domain Name in connection with the bona fide offering of goods or services.

5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:

(i) The Complainant alleged that the Respondent has registered the Domain Name in bad faith because it registered the Domain Name with the knowledge of the Complainant’s rights in the SWAROVSKI Marks. The Complainant stated that it was inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI Marks as the Complainant’s trademarks are well-known in Austria, China and worldwide.

(ii) The Complainant stated that the selection of the Domain Name, which wholly incorporates the SWAROVSKI Marks, cannot be a coincidence as “Swarovski” is not a descriptive or generic term. The Complainant submitted that the registration of a famous mark, like the SWAROVSKI Marks, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

(iii) The Complainant also submitted that the Respondent’s attempt to attract consumers for commercial gain to the Domain Name by creating confusion among consumers by utilising the SWAROVKI Marks is further compounded by the Respondent’s efforts to mislead consumers into believing the site was operated or authorized by the Complainant.

(iv) The Respondent had without valid consent, utilised the SWAROVKI Marks on the website at the Domain Name and offered to sell products identical to or similar to Swarovski products. In short, the Complainant asserted that the Respondent is using the Domain Name to intentionally gain commercially by attracting internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant requests a decision that the Domain Name be transferred to the Complainant

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Complaint was filed in the English language. On February 7, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the Registration Agreement for the Domain Name is Chinese. Although the Chinese language is the language of the Registration Agreement for the Domain Name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. The Panel would like to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in English is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. Had this been a contested matter, the Respondent may have been likely to have been entitled to expect the Panel to rule that the language of the proceedings should take place in Chinese, in strict adherence to paragraph 11 of the Rules.

However, in the present case, considering the composition of the Domain Name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

6.2. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

6.3 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response.

6.4 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the Policy. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).

6.5. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, WIPO Overview 2.0). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:

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

(ii) the 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.

A. Identical or Confusingly Similar

6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

6.7 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the Domain Name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.8 The Complainant has registered trademarks and registered domain names that incorporate the trademark “SWAROVSKI”. It is quite clear that the Complainant is the owner of a number of trademarks and domain names in several countries that simply comprise the trademark SWAROVSKI. The Respondent’s registration consists of the use of the Complainant’s trademark SWAROVSKI which causes confusing similarity. Previous Panel decisions pronounced under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 have correctly decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to a number of trademarks in which the Complainant has rights.

6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.10 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for SWAROVSKI are well-known throughout the world, registered and present in China, where the Respondent is located. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attract Internet users to its website to intentionally link its Domain Name with SWAROVSKI products or counterfeit products. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the Domain Name.

6.11 Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the Domain Name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.

6.12 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).

6.13 As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.comWIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).

6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant’s mark.

6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

6.16. The Complainant alleged that the Respondent has registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Marks. The Complainant further complained that it was inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI Marks and it cited the decision of Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011). However, the citation of this decision alone does not assist the Complainant as it did not specifically state what was the evidence that it would rely upon that would show that the Respondent was aware of the SWAROVSKI Marks. The Panel does not have the benefit of knowing what evidence or submissions was presented before the previous panel and will have to come to its own conclusion based on the evidence and submissions provided in this case. Other than an implied awareness, the Complainant had not provided any factual basis to support this conclusion. As such, the Panel is unable to accept this first part of the Complainant’s circular submission.

6.17. The Complainant then submitted that the selection of the Domain Name, which wholly incorporates the SWAROVSKI Marks could not have been a coincidence as “Swarovski” is not a descriptive or generic term and that it is a famous and well-known trademark. The fact that throughout the website at the Domain Name, it offers purported Swarovski products for sale does support the contention that the Respondent chose the Domain Name only because he was seeking to create an association with the Complainant. The Panel accepts this line of submission and accepts the contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the SWAROVSKI trademark. The Panel accepts the Complainant’s submission that the Respondent is using the Domain Name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark.

6.18. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.19. Given that the Respondent has failed to show (for the reasons set out under the heading “Rights and Legitimate Interests” above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.20. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith.

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<onlyswarovski.com> be transferred to the Complainant.

Dr Colin Yee Cheng Ong
Sole Panelist
Dated: May 25, 2012