WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Xue Yan Yang

Case No. D2012-1041

1. The Parties

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

The Respondent is Xue Yan Yang of Yunnan, China.

2. The Domain Name and Registrar

The disputed domain name <1swarovski.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On the same date, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On May 17, 2012, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 June 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Response was filed with the Center on June 12, 2012.

The Center appointed Richard Tan as the sole panelist in this matter on July 9, 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

The Complainant is a leading producer of cut crystal, genuine gemstones and created stones. It has production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2010, its products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2010 was EUR 66 billion.

It uses the SWAROVSKI trade mark in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.

It has registered the SWAROVSKI word mark and other related SWAROVSKI marks globally, including in China, where the Respondent appears to be based.

It has spent substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout China and worldwide.

It has also registered several domain names, including <swarovski.com> and <swarovski.net>. These point to the Complainant’s official website “www.swarovski.com”, where Internet users can access information regarding the Complainant and its merchandise and purchase genuine products.

The Respondent registered the disputed domain name on November 8, 2011 and is operating an online shop from the website using the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the world’s leading producer of cut crystal, genuine gemstones and created stones. It uses the SWAROVSKI trade mark in connection with its products which include crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.

As noted above, it contends that it has registered the SWAROVSKI word mark and other related SWAROVSKI trade marks around the world, including in China, where the Respondent appears to be based, and has spent substantial time, effort and money advertising and promoting the SWAROVSKI marks throughout China and worldwide. It has production facilities in 18 countries, distributes its products in 42 countries and a presence in more than 120 countries. In 2010, its products were sold in 1084 of its own boutiques and through 889 partner-operated boutiques worldwide. Its approximate worldwide revenue in 2010 was EUR 66 billion.

It has also registered several domain names, including <swarovski.com> and <swarovski.net>.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark in which it has rights.

The Complainant contends that the Respondent has used the SWAROVSKI mark in the disputed domain name so as to cause confusion among Internet users who intend to purchase Swarovski products online but may mistype “1swarovski.com” in the address bar on their web browsers and will then be directed to the Respondent’s website. Having arrived at the Respondent’s website, Internet users are likely to be confused into thinking that that website is the Complainant’s official website because of the use of the SWAROVSKI mark and name.

The Respondent’s website advertises for sale various purported Swarovski products such as “Swarovski Crystal Drop Earring”, “Swarovski outlet Swarovski jewelry Swarovski Necklace”, “Swarovski Crystal Wedding Jewelry Sets”, “Swarovski Crystal Fashion Bracelets”, “Colorful Swarovski Crystal Ring” and other goods that are similar to those sold by the Complainant.

The Complainant also asserts that the website creates a false impression of affiliation with the Respondent or authorization by the Complainant of the use by the Respondent of the website, and/or that the Respondent’s website is in fact an official website of the Complainant. The Complainant asserts that the Respondent has not at any point identified himself as being independent from the Complainant. The Complainant further asserts that the Respondent is trying to pass himself off as the Complainant and is unfairly exploiting the goodwill associated with the Complainant’s SWAROVSKI marks in order to obtain commercial gain.

The Complainant contends that this is a form of “initial interest confusion” which unlawfully diverts traffic by capitalising on the Complainant’s goodwill in the SWAROVSKI marks.

The Complainant contends that the addition of the digit “1” as a prefix to the SWAROVSKI mark in the disputed domain name does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark and further contends that the addition of a generic word to a trademark is not enough of a differentiation from that trademark to avoid a finding of confusing similarity.

The Complainant contends that previous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.

The Complainant therefore contends that the disputed domain name is confusingly similar to Complainant’s earlier marks, and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the Respondent cannot demonstrate any legitimate interest in the disputed domain name.

The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI marks or name.

Further, as the disputed domain name is being used to advertise purported Swarovski products and seeks to misdirect Internet traffic to the Respondent’s website, such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

The Complainant further asserts that purporting to sell Swarovski products does not give the Respondent the right to register and use the SWAROVSKI mark in the disputed domain name without the consent of the Complainant and relies on Burberry Limited. v.Kang Kyungnam, WIPO Case No. D2006-0186 (“Even if Respondent is selling genuine goods bearing the Complainant’s trademark on the website, the WIPO administrative panel finds that such a resale activity does not confer the Respondent any proprietary rights in the Complainant’s trademark”). The Respondent is not an authorised agent and therefore does not have the right to use the SWAROVSKI mark in the disputed domain name. The Complainant argues that the Respondent’s use of the Complainant’s mark in the disputed domain name was no accident and that where a mark is famous and well known, as with the SWAROVSKI mark, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the complainant: Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent’s use of the SWAROVSKI mark is clearly for the purpose of misleading consumers into believing that the Respondent and his website are associated with or approved by the Complainant. Accordingly the Respondent does not have any rights or legitimate interests in the SWAROVSKI mark and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.

The Complainant contends, thirdly, that the disputed domain name has been registered and is used in bad faith.

The Complainant contends that the disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI marks at the time of registration. The SWAROVSKI marks are well-known and that unauthorised registrants utilising the SWAROVSKI marks in domain names do so specifically with the Complainant’s mark in mind. The Complainant relies on Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080 where the Panel stated “it is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage”) and other UDRP cases such as Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 and Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981.

Furthermore, the Respondent’s website offers to sell a variety of purported Swarovski products.

The Complainant asserts that the 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: Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445. Given the fame of the SWAROVSKI marks, there is no other conceivable interpretation of the registration and use of the disputed domain name other than that of bad faith on the part of the Respondent.

The Complainant contends that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademarks are well known in China where the Respondent is based and worldwide.

In addition, the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which results in Internet users being attracted to the website because of its purported affiliation with the Complainant.

The Complainant contends that the Respondent is attempting to attract consumers to its website for commercial gain by utilising the SWAROVSKI mark and previous UDRP panels have determined that this type of behavior is indicative of bad faith: Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364, where the panel held that “the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”.

The Complainant consequently argues that the Respondent’s registration and use of the disputed domain name was in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent’s response of June 12, 2012 comprised the following:

“Case No. D2012-1041 <1swarovski.com>

Dear Sir or Madam:

We are bewildered by this notification of complaint domain. We registered domain name "1swarovski.com" in accordance with legal procedures last year. We checked this domain name "1swarovski.com" that was available before we registered, so right now we don't know what's wrong with this domain name. If it's can not use, how about "2swarovski.com", "10swarovski.com" ~ "100swarovski.com"; how about "swarovski1.com", "swarovski8.com", "swarovski100.com"; how about "Aswarovski.com", "swarovskiB.com" ~ how about " 1swarovski.net", "swarovski6.net", "swarovskiC.net" ~ and so on. If all of the domain name which contain "swarovski" can not use, you should attach this note when people register domain name, or just tell people this domain name do not available. Why make trouble with us after we own this domain name for almost one year. Please think about our situation. We are just small business, we even don't have money to hire attorney to deal with this problem. we work hard everyday for this website www.1swarovski.com almost one year, right now we can not do anything except wait for your ruling. And we also don't have money to pay any fee, so just give us free panel to decide this case. We hope to get a fair treatment and fair ruling. We also believe that you will.

Thank you so much.

Yours sincerely,

Ling Yang

The domain name holder.”

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Having regard to the evidence adduced by the Complainant in relation to the registration of its trade mark, SWAROVSKI, around the world, including in China where the Respondent appears to be located and the evidence as to its long use and reputation, the Panel accepts that the Complainant has established rights in its SWAROVSKI mark. The Panel also accepts the evidence adduced by the Complainant that the SWAROVSKI mark is a well-known and famous mark that it owns.

The Panel finds that the disputed domain name incorporates the registered trademark SWAROVSKI and is confusingly similar to that mark.

The Panel finds that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied.

The SWAROVSKI mark is distinctive and is the dominant or principal component of the disputed domain name. The only difference is the addition of the numeral “1” as a prefix to the SWAROVSKI marks in the disputed domain name.

However, the addition of a prefix consisting of a numeral such as “1” in the disputed domain name does not prevent the disputed domain name from being regarded as confusingly similar to the SWAROVSKI mark or remove the confusing similarity between the disputed domain name and the Complainant’s mark particularly where, as here, the Complainant’s mark is a well-known mark as in the cases cited by the Complainant such as Lilly ICOS LLC v. BM Marketing, WIPO Case No. D2006-0473, where the Panel found that the number “7” which was added as a prefix to the trademark did not remove the confusing similarity between the disputed domain name and the trademark in question.

See also LEGO Juris A/S v. Song Jiapeng, WIPO Case No. D2011-0788, in which the panel held that the domain name <lego592.com> was identical or confusingly similar to the LEGO trademark and also LEGO Juris A/S v. Onliyou, WIPO Case No. D2011-1410, in which this panel held that the domain name <93lego.com> was confusingly similar to the LEGO trademark and that the addition of numerals did nothing to minimise the risk of confusion.

The addition of generic terms typically is not enough to distinguish a respondent’s domain name from a trade mark in which another has rights. See, for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, where the panel held that the addition of the generic term “automotive” did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.

See also Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022 where the panel held that the addition of the common and indistinctive words “crystal” and “jewelry” to the complainant’s trademark did not make the distinguish the domain name from that trademark and indeed could make confusion more likely.

Neither would the presence of the gTLD “.com" be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration. See, inter alia, CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith,WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar,WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures,WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015.

The Respondent does not in its response dispute the confusing similarity between the Complainant’s trade mark and the disputed domain name nor, or on any objective basis, can it do so.

This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has contended that the Respondent registered the disputed domain name after the Complainant established its rights in the SWAROVSKI mark, that the Respondent is not commonly known by the disputed domain name, that the Respondent has never been known by that name or mark, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.

The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the disputed domain name has been used to mislead and attract customers to its website for its own commercial gain. The Respondent’s website is being used to advertise purported Swarovski products. Such a use is contrary to a bona fide offering of goods or services or the Respondent having a legitimate interest in the disputed domain name.

The Respondent appears to be using the disputed domain name for a website that sells products similar to the Complainant’s products. In its response, the Respondent does not dispute this. The Respondent does not assert that it has any rights or legitimate interests in the disputed domain name. It does not assert that it was commonly known by a name that incorporated the SWAROVSKI mark or that it had been given any consent or authorization to use that mark in the disputed domain name.

It merely asserts that it had “checked the domain name” before registering that domain name. Given the fact that the Complainant had registered its SWAROVSKI mark as trade marks in numerous countries, including China, the Panel does not accept that the Respondent’s checks, if any were indeed properly carried out, were complete. Had the Respondent carried out proper searches or enquiries, the Respondent would have discovered that the Complainant had rights and legitimate interests in the SWAROVSKI mark. The Panel finds on the other hand that the Respondent must have been fully aware of the Complainant’s fame and reputation at the time it decided to register the dispute domain name.

The Panel accordingly accepts the Complainant’s contentions that based on the manner in which the Respondent used the SWAROVSKI mark in the disputed domain name, without the consent of the Complainant, to offer goods for sale on the Respondent’s website, the Respondent was seeking to create the impression that the Respondent was associated with the Complainant and to mislead consumers into believing that the Respondent and its website was associated with or approved by the Complainant. In so doing the Respondent was clearly seeking to trade on the Complainant’s goodwill and reputation. Such use was not a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith.

On the evidence, the Panel accepts that the Respondent has no license or other authorization to use the SWAROVSKI trade mark.

Further, on the evidence, and as noted above, the Panel finds that the Respondent must have been aware of the Complainant’s SWAROVSKI marks at the time of registration of the disputed domain name on November 8, 2011, which was well after the Complainant registered and used its trademarks.

The Panel accepts the Complainant’s contentions that the SWAROVSKI marks are unique and distinctive, and well-known, and that when registering the disputed domain name the Respondent must have done so with the SWAROVSKI marks in mind and with the objective of unfairly riding on the Complainant’s fame and reputation in those marks by inter alia creating an impression of association with the Complainant.

The Panel finds that, as the Complainant contends, the registration of a well-known mark as part of a domain name by an entity that has no legitimate relationship with the mark, may be itself sufficient to demonstrate bad faith. On the evidence, there is no other possible interpretation of the Respondent’s registration and use of the disputed domain name other than to intentionally mislead Internet users and consumers into thinking that the Respondent is in some way or another connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant. Such conduct is, in the view of the Panel, indicative of bad faith on the part of the Respondent.

Further, as the Complainant argues, deliberately combining a descriptive or common word - or in this case the numeral “1” - with the Complainant’s mark is capable of constituting bad faith on the part of the Respondent when done with the intention of misleading Internet users in the manner above described, for the Respondent’s own commercial gain. The Panel accepts that the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which seeks to profit from the confusion with the Complainant’s mark by attracting Internet users to the Respondent’s website because of a purported affiliation with the Complainant and at the same time diverting web traffic away from the Complainant’s own websites <swarovski.com> and <swarovski.net>.

The Panel has accordingly no hesitation in finding on the facts and the undisputed evidence that the Respondent’s registration and use of the disputed domain name was in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 disputed domain name <1swarovski.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Date: July 23, 2012