WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. flushy, flushy kitty

Case No. D2012-0898

1. The Parties

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

Respondent is flushy, flushy kitty of Tianjin, China.

2. The Domain Name and Registrar

The disputed domain name is <swarovskioutletsale.com> which is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 27, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On April 27, 2012, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 30, 2012 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 May 2, 2012. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a second amendment to the Complaint on May 3, 2012.

The Center verified that the Complaint, as amended, 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 May 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 25, 2012. Due to an administrative deficiency, on June 1, 2012 the Center re-sent to the parties certain exhibits to the Complaint and extended through June 7, 2012 the deadline to submit a Response. On June 8, 2012 the Center informed the parties that no Response has been received from Respondent.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on June 8, 2012. This Panel finds that it was properly constituted. This 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, engaged in the production of cut crystal, genuine gemstones and created stones.

Complainant has rights over the SWAROVSKI trademark for which it holds several trademark registrations, such as: registration No. 857107 with the World Intellectual Property Organization, registered on November 3, 2004 in classes 2, 3, 6, 8, 9,11, 14, 16, 18, 19, 20, 21, 24, 25, 26, 28, 34, 35 and 41; registration No. 1739479 with the United States Patent and Trademark Office, registered on December 15, 1992 in classes 8, 11, 14, 18, 21 and 25.

Complainant also has rights over a device trademark (resembling a stylized swan) for which it holds several trademark registrations, such as: registration No. 528188 with the World Intellectual Property Organization, registered on May 31, 1988 in classes 8, 9, 11, 14, 16, 18, 21, 25, 26 and 34; registration No. 3920634 with the European Office for Harmonization in the Internal Market, registered on December 7, 2009 in classes 2, 6, 8, 9, 11, 18, 19, 20, 21, 25, 28, 34, 35 and 41; registration No. 3230029 with the United States Patent and Trademark Office, registered on April 17, 2007 in classes 2, 6, 8, 9, 11, 18, 19, 20, 21, 24, 25, 28, 34, 35 and 41.

Complainant is the registrant of the following domain names: <swarovski.com> created in 1996, and <swarovski.net> created in 1998.

The disputed domain name was created on August 2, 2011.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows:

Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries and presence in more than 120 countries. In 2010, Complainant’s products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide.

Complainant uses the SWAROVSKI mark and the stylized-swan device mark (“Complainant’s Marks”) in connection with crystal jewellery, stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. Complainant spends substantial time, effort and money in advertising and promoting Complainant’s Marks worldwide. As a result, Complainant’s Marks have become famous and well-known worldwide, and the public has come to associate Complainant’s Marks with high quality items marketed by Complainant.

The disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark. The addition of the terms “outlet” and “sale” in the disputed domain name as suffixes to the SWAROVSKI mark does not lessen the confusing similarity between the disputed domain name and Complainant’s mark.

The addition of generic words like “outlet” and “sale” to a trademark is not enough of a differentiation from the trademark to avoid a finding of confusing similarity. Previous UDRP panel decisions have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.

Respondent has no legitimate interests or rights in the disputed domain name. Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI mark or the name Swarovski. Respondent is not an authorized Complainant’s agent and therefore does not have the right to use the SWAROVSKI mark in the disputed domain name.

Respondent not only uses the SWAROVSKI mark in the disputed domain name, but also operates an online shop which offers for sale purported Swarovski products. Respondent is giving the impression that the products offered for sale at the website associated to the disputed domain name are genuine Swarovski products, as the home page of the disputed domain name states that the Swarovski jewellery sold at the online shop are of “affordable prices and superior quality”. Respondent has used Complainant’s Marks throughout the website associated to the disputed domain name and offers purported Swarovski products for sale (Complainant produced several copies showing the content of the disputed domain name website). Such a use is contrary to a bona fide offering of goods or services or to a legitimate interest.

Respondent does not at any point identify itself as being independent from Complainant. Respondent utilizes Complainant’s Marks throughout the website associated to the disputed domain name and offers for sale goods that are similar to those sold by Complainant. Complainant contends that in the “About Us” section of such website, Respondent claims that “Our company is official authorization pro shop” and provides a brief history of Complainant’s company and swan logo, which further indicates Respondent’s intention of creating an association with Complainant or showing an affiliation with Complainant.

Respondent’s sale of purported Swarovski products demonstrates that it is not making a bona fide offering of goods or services, nor does it have a legitimate interest. Furthermore, purporting to sell Swarovski products does not give Respondent the right to register and use the SWAROVSKI mark in the disputed domain name without Complainant’s consent.

Respondent’s use of Complainant’s Marks is clearly for the purpose of misleading consumers into believing that Respondent and the disputed domain name website are associated with or approved by Complainant. Respondent is clearly seeking to trade on Complainant’s goodwill and reputation.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant alleges that it is inconceivable that Respondent was unaware of Complainant’s rights in Complainant’s Marks at the time of registration of the disputed domain name. The selection of the disputed domain name, which wholly incorporates the SWAROVSKI mark, cannot be a coincidence since it is not a descriptive or generic term but rather a famous and well-known trademark.

Furthermore, the website associated to the disputed domain name offers a variety of products such as “Swarovski Earrings”, “Swarovski Necklaces”, “Swarovski Bracelets” and more. Products purporting to be SWAROVSKI products would not have been advertised on such website if Respondent was unaware of Complainant’s reputation.

Registration of a famous mark, like the SWAROVSKI mark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith.

The disputed domain name is being used to confuse consumers into believing that the website associated with the disputed domain name is an official Complainant’s website and/or that Respondent is affiliated with or authorised to sell products by Complainant. Respondent is not an authorised seller of Complainant’s products, and Complainant does not guarantee the authenticity or quality of the products sold on the disputed domain name website.

Respondent has done nothing to identify itself as being independent from Complainant. On the contrary, Respondent has incorporated the SWAROVSKI mark in the disputed domain name and Complainant’s Marks throughout the disputed domain name website, and is attempting to attract consumers for commercial gain by purporting to sell SWAROVSKI products. Many UDRP panel decisions have held that Respondent’s very method of infringement, using the exact Complainant’s Marks to lure consumers to its website demonstrates bad faith use under the Policy.

Respondent is attempting to attract consumers for commercial gain to the disputed domain name by utilising Complainant’s Marks. Respondent, without valid consent, utilized Complainant’s Marks throughout the disputed domain name website and offers products identical to or similar to Swarovski products for sale. UDRP panel decisions have determined that this type of behavior is indicative of bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

The lack of response from Respondents does not automatically result in a favorable decision for Complainant¹. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights in the SWAROVSKI trademark.

The disputed domain name entirely incorporates the SWAROVSKI trademark, adding the suffix “outletsale”. The addition of such generic suffix is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (see Sony Kabushiki Kaisha aka Sony Corporation v. A. Smith, WIPO Case No. D2006-0652; J. Choo Limited v. Lonken Hong, WIPO Case No. D2010-1523; Swarovski Aktiengesellschaft v. Hao Chen, WIPO Case No. D2011-1223).

Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI trademark.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is undisputed that Complainant’s Marks are well known internationally.

Complainant asserts that it has no relationship with Respondent, and that it has never authorized Respondent to use Complainant’s Marks. Likewise, Complainant asserts that Respondent has never been known by the disputed domain name and that Respondent is not Complainant’s authorized agent or reseller.

Complainant contends that Respondent operates an online shop through the disputed domain name which offers for sale purported SWAROVSKI products. The printouts of the website associated to the disputed domain name supplied by Complainant clearly show Complainant’s Marks and the sale of Swarovski products, and there appears to be no disclaimer disassociating Respondent or such website from Complainant. Complainant asserts that Respondent is conveying the false impression that the products offered for sale at the website associated to the disputed domain name are genuine SWAROVSKI products, and that it does not guarantee the authenticity or quality of the products sold on the disputed domain name website.

The unauthorized use of Complainant’s Marks to sell products purporting to be original Complainant’s products does not constitute a bona fide offering of products.

This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name². In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s SWAROVSKI trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

Taking into consideration Complainant’s international presence, that Complainant’s registration and use of its trademarks preceded the creation of the disputed domain name, the international recognition of Complainant’s products, and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant, Complainant’s Marks and goods marketed by Complainant at the time Respondent obtained the registration of the disputed domain name.

Respondent is using Complainant’s Marks at the disputed domain name website without Complainant’s authorization. The use of the disputed domain name for a website through which purported SWAROVSKI products are offered for sale constitutes an improper use of Complainant’s Marks and is enough for this Panel to establish Respondent’s bad faith for purposes of the Policy³.

Further, this Panel considers that by using the disputed domain name Respondent has sought to create a likelihood of confusion with Complainant and Complainant’s Marks as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection⁴.

In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <swarovskioutletsale.com> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Dated: June 22, 2012

¹ See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.

² See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”; also, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.

³ See Swarovski Aktiengesellschaft v. fangfei, WIPO Case No. D2012-0747: “the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorisation is certainly a relevant factor indicating bad faith registration and use”.

⁴ See Swarovski Aktiengesellschaft v. Matthew Mitchell, WIPO Case No. D2012-0073: “Respondent’s unauthorized use of the disputed domain name in the corresponding website consists of offering purported Swarovski products for sale at a website, thus creating the impression that this website is operated or endorsed by Complainant. This clearly is evidence of registration and use in bad faith”.