WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. shi pi

Case No. D2012-2067

1. The Parties

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

The Respondent is shi pi of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <cheapswarovskionsale.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 26, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 30, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on November 27, 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 producer of cut crystal, genuine gemstones and created stones with a presence in more than 120 countries and owns trademark registrations for SWAROVSKI in association with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries.

The Respondent registered the disputed domain name <cheapswarovskionsale.com> on June 19, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <cheapswarovskionsale.com> is confusingly similar to the trademark SWAROVSKI, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.

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

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

The Complainant requests that the disputed domain name <cheapswarovskionsale.com> be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreement for the disputed domain name <cheapswarovskionsale.com>, as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented its reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center’s communications to this effect were both in English and Chinese.

According to paragraph 11(a) of the Rules, 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.

Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its case. Therefore a panel may objectively assess the parties’ language ability in the proceeding. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel’s conclusion is based primarily on the fact that the website established at the disputed domain name <cheapswarovskionsale.com> presents its contents exclusively in English. In addition, the Panel notes that the Respondent did not object to the Complainant’s request on the language of the proceeding despite having been provided with the opportunity to respond to the notifications in both English and Chinese. On the other hand, it may be genuinely difficult for the Complainant to translate all the submissions into and take part in the proceeding in the language of the registration agreement.

Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.

B. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), 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. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.

The Panel finds that before the registration of the disputed domain name the trademark SWAROVSKI had been registered and used on the Complainant’s products, particularly on jewelry, in China and many other countries.

The disputed domain name is <cheapswarovskionsale.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “cheapswarovskionsale”, which can easily be read as “cheap”, “swarovski” and “on sale”. It is established by numerous decisions made under the Policy that adding generic words to a complainant’s mark may not preclude a finding of confusing similarity (Prada S.A. v. Roderick G. Arnold, WIPO Case No. D2002-0928). Given that the disputed domain name contains the Complainant’s trademark SWAROVSKI, adding the generic terms “cheap” and “on sale” does not preclude the disputed domain name from being confusingly similar to the Complainant’s trademark SWAROVSKI as the mark remains the distinctive portion of the disputed domain name.

The Panel therefore finds that the disputed domain name <cheapswarovskionsale.com> is confusingly similar to the Complainant’s registered trademark SWAROVSKI. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

The Complainant asserts, and provides evidence to demonstrate, that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.

It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy applies here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.

Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond to these contentions.

Through examining the website established at the disputed domain name, i.e. “www.cheapswarovskionsale.com”, the Panel finds that the site not only shows the Complainant’s trademark SWAROVSKI prominently and repeatedly (without any disclosure as to the relationship, if any, between the Complainant and the Respondent) but sells apparently counterfeit SWAROVSKI jewelry, such as crystal necklaces, bracelets and earrings. Since the disputed domain name was registered and would appear to be fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The Panel therefore finds that the Respondent’s use of the disputed domain name that is confusingly similar to the Complainant’s mark to attract consumers to a website that is selling apparently counterfeit SWAROVSKI products is highly likely to cause confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products offered on the Respondent’s website.

The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) 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 <cheapswarovskionsale.com> be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Date: December 11, 2012