WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. yuan

Case No. D2012-1182

1. The Parties

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

The Respondent is yuan of Guangdongsheng, of China.

2. The Domain Name and Registrar

The disputed domain name <cheapswarovskionline.org> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2012. On June 11, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On June 12, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 12, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding 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 June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on July 13, 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, Swarovski Aktiengesellschaft, is a corporation organized under the Principality of Liechtenstein. The Complainant is the producer of cut crystals genuine gemstones and created stones under the mark SWAROVSKI. The Complainant has a presence in over 120 countries.

In 2010, the Complainant’s products were sold at approximate worldwide revenue of EUR 2.66 billion.

The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – SWAROVSKI, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; China trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987; China trademark registration No. 385013 – SWAROVSKI (in Chinese characters), with the registration date of August 30, 1989; International trademark registration No. 663366 – SWAROVSKI, with the registration date of October 17, 1996, designated for Armenia, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, China, Cuba, Czech Republic, Croatia, Hungary, and others; Community Trade Mark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community Trade Mark registration No. 000120501 – SWAROVSKI (logo), with the registration date of October 27,1999; Community Trade Mark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005, and many more.

The Complainant also developed its presence on the Internet and is the owner of several domain names, which contain the mark SWAROVSKI. For example: <swarovski.com> and <swarovski.net>.

The disputed domain name <cheapswarovskionline.org> was registered on March 24, 2012.

The disputed domain name currently resolves to an inactive webpage containing an error message.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI trademark. The Complainant further contends that the addition of the generic words “cheap” and “online” does avoid a finding of confusing similarity.

The Complainant further argues that the SWAROVSKI trademark has generated vast good will through the Complainant’s extensive use around the world and specifically in China and has become a well known trademark.

The Complainant further argues that the public associates the mark SWAROVSKI exclusively with high quality items by the Complainant.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its SWAROVSKI trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not known by the disputed domain name.

The Complainant further argues that the disputed domain name used to resolve to an online market place, offering products that pretend to be by the Complainant. The Complainant contends that the Respondent used the website under the disputed domain name to confuse consumer to believe that it is the official website of the Complainant or that it is affiliated with the Complainant or that the Complainant authorized it to sell the Complainant’s products.

The Complainant further argues that even though the website under the disputed domain name stated that it sells replica products and that it is not is not affiliated with the Complainant, the consumers are still likely to believe that it is authorized by the Complainant.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

The Complainant further argues that the Respondent infringes the Complainant SWAROVSKI mark by the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name <cheapswarovskionline.org> consists of English letters, rather than Chinese characters;

b) The disputed domain name consists of the English words “cheap” and "online";

c) According to evidence provided by the Complainant, the website under the disputed domain name used to resolve to an online marketplace, which operated in English;

d) The Respondent did not object to the Complainant request that English be the language of proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – SWAROVSKI, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; China trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987; China trademark registration No. 385013 – SWAROVSKI (in Chinese characters), with the registration date of August 30, 1989; International trademark registration No. 663366 – SWAROVSKI, with the registration date of October 17, 1996, designated for Armenia, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, China, Cuba, Czech Republic, Croatia, Hungary, and others; Community Trade Mark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community Trade Mark registration No. 000120501 – SWAROVSKI (logo), with the registration date of October 27,1999; Community Trade Mark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005, and many more.

Also, the Complainant’s rights in the SWAROVSKI mark have been established in numerous UDRP decisions (see e.g.Swarovski Aktiengesellschaft v. Bingshu Wu, WIPO Case No. D2010-1734 and Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353).

The disputed domain name <cheapswarovskionline.org> differs from the registered SWAROVSKI trademark by the additional words “cheap” and “online” and the additional gTLD “.org”.

The disputed domain name integrates the Complainant’s SWAROVSKI trademark in its entirety, as a dominant element.

The additional words “cheap” and “online” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are common terms in the Complainant’s field of business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.org” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.org” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the SWAROVSKI trademark, or a variation thereof.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SWAROVSKI trademark since the year 1965. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. ‘Swarovski’ is not a descriptive or generic term; it is a famous and well-known trade mark. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the disputed domain name, it intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved.

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent’s use of a highly distinctive trademark of the Complainant is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.”)

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Complainant submitted evidence proving that the Respondent was using the disputed domain name to promote goods that are identical to the goods being offered by the Complainant.

Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b) of the Policy.

The fact that the Respondent had placed a disclaimer on the website under the disputed domain name, at the time the disputed domain name was active, that it is not affiliated with the Complainant is of no relevance in this matter. Such disclaimer does not eliminate the Respondent's bad faith (See paragraph 3.5 of the WIPO Overview 2.0: “The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.”)

The Panel further notes that the website under the disputed domain name currently resolves to an offline page. This also does not prevent a finding of bad faith registration and use.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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, the Panel orders that the disputed domain name <cheapswarovskionline.org> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: July 22, 2012