WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Almonte Joslyn

Case No. D2012-2266

1. The Parties

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

The Respondent is Almonte Joslyn of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <dswarovski.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 19, 2012. On November 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2012, the Registrar 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 November 23, 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 November 26, 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 November 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2012.

The Center appointed Luis C. Schmidt as the sole panelist in this matter on January 9, 2013. 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.

According to Complainant’s amendment to the Complaint, the Panel recognizes Almonte Joslyn as the only Respondent, since according to the Registrar, PrivacyGuardian.org is a service provider related to the Registrar and has no interest in the Complaint or the procedure.

4. Factual Background

The Complainant is a leading global producer of cut crystals, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. The Complainant asserts that in 2011, its products were sold in 1, 218 of its own boutiques and through 1000 partner-operated boutiques worldwide. Further, its approximate revenue in 2011 was EUR 2.87 billion. The Complainant uses the SWAROVSKI trade marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries.

The Complainant has registered the SWAROVSKI trademarks globally. The Complainant listed the following examples of these trademark registrations:

The Complainant claims that substantial time, effort and money have been spent advertising and promoting the SWAROVSKI trademarks throughout the United States (“US”) and worldwide. As a result, the SWAROVSKI trademark has become famous and well-known in the US. The Complainant also claims to have developed an enormous amount of goodwill in the SWAROVSKI trademark internationally, and the public has come to associate the SWAROVSKI trademark with its high quality merchandise.

The Complainant has registered numerous domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website located at “www.swarovski.com” (the “Complainant’s website”). The Complainant’s website enables Internet users to access information regarding Complainant and its merchandise and to purchase genuine SWAROVSKI products.

The disputed domain name was registered on July 3, 2011.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

The Complainant submits that the disputed domain name is confusingly similar to its registered trademark SWAROVSKI. The Complainant states that previous UDRP administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark. See, Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872.

The Complainant states that the addition of the letter “d” as a prefix to the SWAROVSKI trademark does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademarks, as the word “Swarovski” is the distinctive element of the domain name. See, Swarovski Aktiengesellschaft v. Li XiaoLi, WIPO Case No. D2012-1401 (September 5, 2012); Swarovski Aktiengesellschaft v. hanguo, WIPO Case No. D2012-0749 (June 4, 2012) and Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022 (January 26, 2011).

The Complainant further states 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. See, Swarovski Aktiengesellschaft v. Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028 (July 6, 2012) and Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067 (January 26, 2011).

A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Name

The Complainant submits that its rights in the SWAROVSKI trademark have been recognized by several WIPO administrative panels. In Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 (April 19, 2011) the panel stated that the “Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including registrations issued by the European Community, International, and China trademark offices…Complainant’s trademark rights in SWAROVSKI precede this domain name registration”.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent has no connection or affiliation with it and has not received any license or consent, express or implied, to use the SWAROVSKI trademark in a domain name or in any other manner.

The Complainant states that the Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or the name “Swarovski”. See, Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (September 14, 2000).

The Complainant further states that the disputed domain name is being used to advertise purported SWAROVSKI accessory products and misdirects Internet traffic to the Respondent’s website, located under the “www.dscrystal.net” domain name (“Respondent’s Website”). Furthermore, Complainant states that such a use is contrary to a bona fide offering of goods or services or a legitimate interest. See, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 (July 20, 2000).

The Complainant claims that UDRP administrative panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067 (March 20, 2001). The Complainant states that the Respondent has used the SWAROVSKI trademark in the disputed domain name to create the impression that it is associated with the Complainant. Furthermore it had used the SWAROVSKI trademark throughout the Respondent’s Website and offers purported SWAROVSKI mobile accessory products for sale on the Respondent’s Website only because it was seeking to create an association with the Complainant.

The Complainant further submits that the misappropriation of the disputed domain name was no accident. Where a mark is famous and well-known, as with the SWAROVSKI trademark, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the complainant (see, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). The use of the SWAROVSKI trademark is clearly for the purpose of misleading consumers into believing that the Respondent and the disputed domain name are associated with or approved by the Complainant. The Complainant states that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.

The Complainant states that previous UDRP panels have held that when a respondent chooses to incorporate a well-known trademark into a domain name without the authorization of the trademark holder, this is not considered a bona fide offering. See, General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 (July 30, 2007).

A.3. Registration in Bad Faith

The Complainant claims that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI trademarks, as it is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI trademarks. See, e.g.Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080 (February 29, 2012).

By quoting Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 (February 20, 2011), the Complainant states that “the Respondent must have been aware of the Complainant’s mark when the domain name was registered, as it is unlikely that the Respondent would choose the domain name she did, unless seeking to create an impression of association with the Complainant”. Furthermore, the Complainant states claims that the selection of the disputed domain name, which wholly incorporates the SWAROVSKI trademark cannot be a coincidence, since “Swarovski” is not a descriptive or generic term, but a famous and well-known trademark.

The Complainant submits that registration of a famous trademark, like SWAROVSKI, as a domain name by an entity that has no legitimate relationship with the trademark is itself sufficient to demonstrate bad faith. See Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0445 (April 27, 2011).

A.4. Use in Bad Faith

The Complainant claims that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name, since the Complainant’s trademarks are well known in the US and worldwide.

The Complainant states that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the SWAROVSKI trademark in the disputed domain name throughout the Respondent’s Website and purports to sell Swarovski products. In, Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011) it was stated that such conduct “demonstrates awareness of the Complainant’s mark and an intention to capitalize on its fame”. The panel in that case also concluded that “the only logical explanation for the Respondent’s choice of the disputed domain names is that it was for the purpose of attracting and misleading Internet users to the Respondent’s websites for commercial advantage. This constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy”.

The Complainant submits that many UDRP panelists have held that the Respondent’s very method of infringement, using the exact SWAROVSKI trademark to lure consumers to the websites at the disputed domain names demonstrates bad faith use under the Policy. See e.g., Swarovski Aktiengesellschaft v. lin, WIPO Case No. D2010-2052 (January 21, 2011).

The Complainant further submits that the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the Respondent’s Website because of its purported affiliation with the Complainant. This is further evidence of the Respondent’s bad faith registration and use of the disputed domain names. See, Swarovski Aktiengesellschaftv. Hopper Dirt, WIPO Case No. D2011-1525 (December 5, 2011).

The Complainant further submits that it is unlikely that the Respondent can prove good faith use of the disputed domain name because it is difficult to conceive of a use that would not infringe the SWAROVSKI trademark. See, Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878 (January 18, 2005).

The Complainant claims that the Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort” and cause disruption to the Complaint’s business in contravention of paragraph 4(b)(iii) of the Policy. See, AT&T v. Rice, WIPO Case No. D2000-1276 (November 25, 2000).

The Complainant states that the purpose of the Respondent’s use of the SWAROVSKI trademarks in the disputed domain name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy. See, Microsoft Corporation v. Source One Management Services, Inc., WIPO Case No. D2005-0508 (July 4, 2005).

The Complainant further states that the Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilizing the SWAROVSKI trademarks is compounded by the efforts to mislead consumers into believing the site was operated or authorized by the Complainant. The Respondent, without a valid consent, utilizes the SWAROVSKI trademarks throughout the Respondent’s Website and offers for sale a number of mobile accessory products that are identical or similar to the product sold at the official Complainant’s website. UDRP administrative panels have determined that this type of behavior is indicative of bad faith. See, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 (July 15, 2006).

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (June 27, 2000).

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which the Complainant has rights.

The Complainant is the owner of numerous trademark registrations for the trademark SWAROVSKI. It has registered a large number of US and International trademarks for SWAROVSKI including, inter alia, US trademark SWAROVSKI, Registration No. 1739479, registered on December 15, 1992 in relation to goods and services in International Classes 8, 11, 14, 18, 21, 25.

Furthermore, upon reviewing the Respondent’s information and assessing that it lives in Hong Kong, this Panel has investigated that among other trademarks, the Complainant is the owner of the Hong Kong trademark SWAROVSKI Registration No. 19892489, registered on February 6, 1987 in relation with goods in International Class 14, before the Intellectual Property Department of the Government of Hong Kong Special Administrative Region.

The disputed domain includes the term “Swarovski” as the distinctive element in conjunction with the letter “d”. Domain names comprised of the well-known trademarks in conjunction with other non-distinctive elements, such as single letters, does not give said domain names a distinctive element per se. Therefore, the Panel finds that the inclusion of a foreign element in the disputed domain name causes confusion between the domain name and the Complainant’s mark for purposes of the Policy.

The disputed domain name includes the Complainant’s trademark SWAROVSKI in full as the distinctive part of the disputed domain name. 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. See, Swarovski Aktiengesellschaft v. WutianhaoWIPO Case No. D2010-0503 (May 24, 2010).

This Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s trademarks SWAROVSKI.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant’s trademark SWAROVSKI.

The Complainant has been using its SWAROVSKI trademark since at least 1972 (according to US trademark Registration No. No. 934915) to promote its merchandise. The Respondent registered the disputed domain name nearly forty years later, when the Complainant’s trademark was already well-known worldwide and after the Complainant had developed goodwill in the SWAROVSKI trademark internationally.

Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name incorporating such marks could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (March 10, 2010).

This Panel has not found evidence that supports that the Respondent has ever been known by or owns the trademark SWAROVSKI in association with its own goods or services. The Respondent has used the disputed domain name in association with a website that uses the SWAROVSKI trademark throughout and offers purported Swarovski products for sale, which supports the contention that the Respondent chose the disputed domain name only because it was seeking to create an association with the Complainant. See, Swarovski Aktiengesellschaft v. Li XiaoLi, WIPO Case No. D2012-1401 (September 5, 2012), and Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981 (August 1, 2011). The Panel finds use of the disputed domain name in association with copies or imitations of the Complainant’s products is not a legitimate use of the disputed domain names.

Previous UDRP administrative panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067 (March 20, 2001).

Thus, this Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name had been registered and is being used in bad faith.

The Complainant is a leading global producer of cut crystals, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2011, its products were sold in 1,2 18 of its own boutiques and through 1, 000 partner-operated boutiques worldwide. Further, its approximate revenue in 2011 was EUR 2.87 billion. The Complainant advertises its cut glass and jewelry in association with its trademark SWAROVSKI throughout the world.

When the disputed domain name was registered on July 3, 2011, the Complainant’s SWAROVSKI trademark had been registered around the world for over several decades in relation to goods and services in many International Classes including natural or synthetic precious stones of all types and for every purpose, gemstones, genuine and imitation jewellery.

Previous UDRP decisions have concluded that the SWAROVSKI trademark is well-known and that unauthorized registrants utilizing the SWAROVSKI trademark in domain names have done so specifically with the Complainant’s trademark in mind. See, e.g. Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445 (April 27, 2011). In the case Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-2241 (February 20, 2012) the panel stated “that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered”, as “it is unlikely that the Respondent would choose the Domain Name she did, unless seeking to create an impression of association with the Complainant”.

From the evidence provided by the Complainant, this Panel finds that the Respondent has been engaging in "typosquatting”, a practice by which a registrant deliberately introduces slight deviations into famous marks for commercial gain. As seen on Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (August 1, 2002), “typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.”

Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the disputed domain name in bad faith. In any event, as past UDRP panels have held, typosquatting is itself evidence of 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 <dswarovski.com> be transferred to the Complainant.

Luis C. Schmidt
Sole Panelist
Date: January 23, 2013