WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Domains By Proxy, LLC / ming robot

Case No. D2012-1366

1. The Parties

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

The Respondent is Domains By Proxy, LLC / ming robot, ming robot of Scottsdale, Arizona, United States of America (“USA”) and Shenyang, Liaoning, China, respectively.

2. The Domain Name and Registrar

The disputed domain name <swarovski-onsale.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2012. On July 5, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On July 9, 2012, GoDaddy.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 the Complainant on July 10, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 10, 2012.

The Center verified that the Complaint together with the amendment to 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 July 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2012.

The Center appointed Mladen Vukmir as the sole panelist in this matter on August 6, 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 corporation organized under the laws of the Principality of Liechtenstein, with its principal place of business at Triesen, Liechtenstein. The Complainant is the exclusive owner of famous and well-known SWAROVSKI trademarks for among other things cut crystal and genuine gemstones registered in the USA and globally.

The Complainant protects its SWAROVSKI trademarks by obtaining several USA, European Community and international trademark registrations, as listed and evidenced in Annexes B and C, which include, among others, the following verbal and figurative trademarks in numerous classes, dating from as early as 1972 through 2010:

• SWAROVSKI, International Registration no. 857107;

• SWAROVSKI, International Registration no. 527385;

• SWAROVSKI, International Registration no. 528189;

• SWAROVSKI, International Registration no. 303389;

• SWAN Design, International Registration no. 528759;

• SWAN Design, International Registration no. 528188;

• SWAROVSKI, USA registration no. 3864495;

• SWAROVSKI, USA registration no. 934915;

• SWAROVSKI, USA registration no. 1739479;

• SWAROVSKI, USA registration no. 1785590;

• SWAROVSKI, USA registration no. 2402230;

• SWAN Design, USA registration no. 3230029;

• SWAN Design, USA registration no. 3864494;

• SWAROVSKI, CTM registration no. 007462922;

• SWAROVSKI, CTM registration no. 003895091;

• SWAN Design, CTM registration no. 003920634.

Besides the above-listed trademarks, the Complainant registered several domain names, including <swarovski.com> and <swarovsky.net>, which point to the Complainant’s official website located at “www.swarovski.com”, as evidenced by the Complainant in Annexes H and I to the Complaint.

There is no information available about the Respondent other than the information contained in the verification response of the Registrar, GoDaddy.com, LLC as of July 9, 2012 and in the Complaint.

According to the WhoIs (Annex A to the Complaint), the Respondent registered the disputed domain name with the Registrar on January 11, 2012.

The Panel reviewed the print-outs of the representative pages of the websites, to which the disputed domain name resolved in the past and at the time of filing of the Complaint, submitted by the Complainant in Annexes J and K to the Complaint. After reviewing the latter, the Panel determined that the Respondent used and/or is using the SWAROVSKI trademarks throughout the websites associated with the disputed domain name, as well as in the “title bar” of said websites, and used to advertise and/or is advertising for sale various products for which the Complainant alleges to be purported Swarovski products which was not disputed by the Respondent (“Purported Swarovski Products”). According to the Annex J to the Complaint, the disputed domain name first resolved to an online shop that offered for sale various Purported Swarovski Products, e.g. rings, earrings, bracelets, necklaces and more. Furthermore, according to the Annex K to the Complaint, at the time of filing of the Complaint, the disputed domain name re-directed to an online shop operated under the domain name <swarovski-onsales.com>, which is very similar, if not identical to the aforementioned online shop that was first operated under the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

• the SWAROVSKI trademarks are famous and well-known;

• the Complainant has developed an enormous amount of goodwill in the SWAROVSKI trademarks internationally, and the public has come to associate the SWAROVSKI trademarks exclusively with high quality items marketed by Swarovski;

• the disputed domain name is a blatant infringement of the SWAROVSKI trademarks and no bona fide use is being made of the disputed domain name;

• the Respondent is not an authorized seller of the Complainant’s products, and the Complainant does not guarantee the authenticity or quality of the products sold on the website associated with the disputed domain name;

• the Respondent is trying to pass itself off as the Complainant and is exploiting the goodwill associated with the SWAROVSKI trademarks in order to obtain commercial gain;

• the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”;

• the Respondent’s method of infringement, using the exact SWAROVSKI trademarks to lure consumers to its website demonstrates bad faith use within the meaning of the Policy.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is confusingly similar to a trademark in which the Complainant has rights; and

(ii) the 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

The Complainant has established that it is the owner of a number of SWAROVSKI trademarks in the United States, European Union and internationally, some of which are listed under Section 4 Factual Background hereof. Further, the Complainant has established that its SWAROVSKI trademarks are internationally well-known trademarks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.

It is well-established that the threshold test for confusing similarity under the Policy 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 disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The disputed domain name consists of three parts, of which the first part carrying the semantic load is identical to the Complainant’s distinctive SWAROVSKI trademark used in the disputed domain name in its entirety, without any modification. The second part is a hyphen followed by the third part consisting of the generic term “onsale”. Said generic term “onsale” consist of two words “on” and “sale” which is the term usually used for the products being offered at the discounted prices.

Hence, it is evident that the disputed domain name incorporates the Complainant’s SWAROVSKI trademark in its entirety and it is clearly recognizable within the disputed domain name. Incidentally, this Panel finds that the Complainant has presented enough evidence showing that its SWAROVSKI trademarks have been extensively used, including on the Internet, and are, in fact, well-known marks worldwide, including within the relevant Internet community. Moreover, as the Complainant appositely pointed out, the word “Swarovski” is not a descriptive or generic term, so consumers associate this term exclusively with the Complainant and its products owing to the international goodwill that the Complainant has developed in the SWAROVSKI trademarks over the years.

The hyphen as the second part of the disputed domain name is in this Panel’s opinion insignificant and does little to avoid confusing similarity of the disputed domain name with the SWAROVSKI trademark of the Complainant. It should be noted that at least four other UDRP panels in previous cases found the hyphen to be insufficient to overcome the confusing similarity of the domain names consisting of the SWAROVSKI trademark, one or more hyphen/s followed by one or more generic term/s such as “jewelry”, “crystal” etc. (see Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022; Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067; and Swarovski Aktiengesellschaft v. Bruce Bush, WIPO Case No. D2012-0628.

Further, the Panel upholds the Complainant’s contention that the generic term “onsale”, used by the Respondent in combination with the Complainant’s entire SWAROVSKI trademark and hyphen in creation of the disputed domain name, is insufficient for establishing indubitable difference between the disputed domain name and SWAROVSKI well-known trademarks. As the Complainant asserts, the term “onsale” gives the impression that the Complainant’s Swarovski products are being sold at the Respondent’s website and may also denote the same are being offered at a discount. Moreover, since the websites associated with the disputed domain name, in fact, offered/offer for sale various Purported Swarovski Products, Internet users would have been/would most likely be confused into thinking that the subject matter websites are websites associated with or endorsed by the Complainant because of the use of the SWAROVSKI trademarks.

Therefore, as the Complainant demonstrated, the Respondent, clearly, did not intend to distinguish the disputed domain name from the Complainant’s trademarks by adding the hyphen and the generic term “onsale” to the Complainant’s entire unique trademark SWAROVSKI. Quite the opposite, adding said generic words may, in fact, reinforce consumer confusion as to the connection between the Complainant and the disputed domain name. Namely, the Respondent does not identify itself in any manner anywhere on the websites associated with the disputed domain name, much less by indicating no affiliation with the Complainant. On the contrary, the homepage and “About Us” section of the subject matter websites contain statements inducing the visiting Internet users/consumers to conclude that the websites and/or the products offered for sale through the websites are genuine offerings made either by the Complainant or at least one of its authorized dealers.

It should be noted, that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself. See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0., and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. Also, see the numerous panel decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyProtect.org Domain Admin / Trade Out Investments Ltd, WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252; and Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947.

As for the applicable generic top-level domain (gTLD) “.com” in the disputed domain name, it is a consensus view that it can usually be disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).

Taking into consideration the renown of the Complainant’s SWAROVSKI trademarks and the semantic load that the word “Swarovski” carries in the disputed domain name, as well as the previous practice in the UDRP, in this Panel’s view, the hyphen and the term “onsale” are not sufficient to overcome the overall confusing similarity between the disputed domain name and the Complainant’s SWAROVSKI trademarks.

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the Policy, paragraph 4(a)(i), i.e. has proven that the disputed domain name is confusingly similar to its SWAROVSKI trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.

In the case at hand, the Complainant has established that it is the owner the well-known SWAROVSKI trademarks protected worldwide, and that it has extensively used the same trademark on the Internet through its websites “www.swarovski.com” and “www.swarovski.net”.

Furthermore, the Complainant has stated that it is neither affiliated in any manner with the Respondent nor has authorized, licensed, permitted or otherwise consented to the Respondent’s use of its SWAROVSKI trademark in the disputed domain name. Quite the opposite, the Complainant emphasizes that the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademarks or the name “Swarovski”. The disputed domain name misdirected/s Internet traffic to the associated infringing websites, where Purported Swarovski Products are advertised for sale. The Complainant rightfully asserts that such use is contrary to a bona fide offering of goods or services or to a legitimate interest.

The Respondent failed to deliver a response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.

In addition, the Panel accepts the Complainant’s contentions that there is no indication that the Respondent is commonly known by the disputed domain name, that it has used the same in connection with a bona fide offering of goods and services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. On the contrary, the Panel finds that it can be safely concluded that the Respondent deliberately chose to include the Complainant’s SWAROVSKI trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers and that such use cannot be considered as a legitimate noncommercial or fair use.

Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

“(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.”

With regard to the bad faith at the time of registration, the Panel notes that it is unlikely that the Respondent was unaware of the Complainant and its SWAROVSKI trademarks. As the Complainant pointed out in the Complaint, “[p]roducts purporting to be Swarovski products would not have been advertised on the Infringing Website if the Respondent was unaware of Swarovski’s reputation”. On the other hand, the Complainant provided sufficient evidence to show that its SWAROVSKI trademarks are well-known globally and vested with significant goodwill.

Finally, the evidence of the content available on the websites associated with the disputed domain name, provided by the Complainant in the Annexes J and K to the Complaint, indicate that the Respondent used/is using said websites to advertise for sale Purported Swarovski Products with the intent to achieve commercial gain by misleadingly diverting consumers.

Therefore, it is safe to assume that the Respondent must have been aware of the Complainant, its SWAROVSKI trademarks and the Complainant’s business, and that it has registered the disputed domain name in order to trade on the renown of the Complaint’s trademarks and goodwill. In the Panel’s view, it cannot be denied that the word “Swarovski” carries distinction, and given the above-described use of the disputed domain name by the Respondent, it is obvious that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product or service on the Respondent’s website or location.

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case.

In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 disputed domain name <swarovski-onsale.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Dated: August 20, 2012