WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. discountswarovski.biz discountswarovski.biz discountswarovski.biz

Case No. D2013-1766

1. The Parties

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

The Respondent is discountswarovski.biz discountswarovski.biz discountswarovski.biz, of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <discountswarovski.biz> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2013, 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.

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 October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.

The Center appointed Martine Dehaut as the sole panelist in this matter on November 21, 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.

4. Factual Background

The Complainant is a corporation organized under the laws of the Principality of Liechtenstein and is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries.

In 2012, Swarovski’s products were sold in 1,250 of its own boutiques and through 1,100 partner-operated boutiques worldwide. According to the Complainant, the Swarovski Group’s approximate worldwide revenue in 2012 was EUR 3.08 billion.

Swarovski uses the SWAROVSKI mark in connection with crystal jewellery stones and crystalline semi-finished goods. The SWAROVSKI mark has been registered in many countries all over the world, including trademark registrations in Romania, where the Respondent appears to be located, which date back to 1965.

Furthermore, Swarovski registered and is using several domain names such as <swarovski.com> and <swarovski.net>. These domain names point to the official Swarovski website where users can access information and purchase genuine Swarovski products.

The disputed domain name was registered on May 29, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the SWAROVSKI trademarks in that the mere addition of the term “discount” as prefix fails to distinguish the signs at issue.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with Swarovski and has never been authorized to use the SWAROVSKI trademarks in any way whatsoever. No license has been granted.

The Respondent has never been known by the disputed domain name.

Yet, the Respondent is operating an online shop at the website at the disputed domain name so as to advertise and to offer for sale purported Swarovski products, namely Swarovski necklaces, earrings, bracelets and pendants. In addition, the Respondent displays on the home page of his website the Swarovski swan logo, leading consumers to falsely believe that the disputed domain name is connected with the official Swarovski website.

Such a use that wrongfully capitalizes on the Complainant’s goodwill in the SWAROVSKI trademarks is clear evidence of the Respondent’s bad faith which exploits the Complainant’s goodwill to misdirect Internet users to its website in order to take advantage of the SWAROVSKI trademarks’ reputation and to obtain commercial gain.

The Complainant further states that the Respondent must have been aware of the Complainant’s trademarks and domain names at the time of the registration of the disputed domain name as the SWAROVSKI trademarks are well known in Romania, where the Respondent appears to be located.

Such circumstances, among others, indicate that the disputed domain name has been registered and used in bad faith and damages the Complainant’s goodwill and reputation in the trademark SWAROVSKI.

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

According to paragraph 4(a) of the policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the dispute domain name:

(i) the domain name 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 interest in respect of the domain name; and

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

A. Identical or Confusingly Similar

Having taken into consideration the list of trademark registrations annexed to the Complaint, which includes in particular trademarks with effect in Romania, submitted by the Complainant, the Panel finds that the Complainant has duly proven its rights in the trademark SWAROVSKI which predate the registration of the disputed domain name.

The disputed domain name completely incorporates the trademark SWAROVSKI, and simply associates it with the descriptive word “discount”. Confronted with the expression “discount Swarovski”, any Internet user will understand that he/she will be offered Swarovski products at a discount price. This finding is consistent with previous decisions, including Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929. Based on the above, the Panel holds that the first requirement of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

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

Paragraph 4(c) of the Policy lists numerous, although unbounded, circumstances likely to demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

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

In the present case, the Complainant asserts not to have granted to the Respondent any authorization to use the trademark SWAROVSKI whatsoever nor to have granted any license giving the right to the Respondent to use the disputed domain name. In addition, the Complainant states that the Respondent has never been known by the disputed domain name. The Complainant also states that it is in no way associated or affiliated with the Respondent.

The Panel has now to consider the arguments of the Complainant related to the content of the website operating under the disputed domain name, presented as offering for sale goods similar to and purporting to be those produced and sold by the Complainant.

While the content of a website is usually disregarded when assessing the risk of confusing similarity, it is likely to play a significant role in evaluating whether the disputed domain name is used in connection with a bona fide offering of goods or services or whether the Respondent is making a legitimate or fair use of the disputed domain name without seeking to misleadingly divert consumers for commercial gain. It has to be borne in mind that the resale of genuine trademarked goods, even by an unauthorized dealer, is not necessarily considered as an illegitimate offering of goods.

Asserting that the disputed domain name is used to sell infringing goods could be judged as an insufficient argument if not supported by strong evidence. Indeed, the Panel may be convinced that the goods displayed on the disputed website are not genuine. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A.v. Chunhai Zhang, WIPO Case No. D2012-0136. In the present case, no evidence is adduced by the Complainant to demonstrate that the goods distributed are counterfeit. However, the panel notes that the website offers the goods with discounts that represent 85% of the alleged original price. Such huge discounts may indicate that the goods offered on the website are not authentic.

In any event, the Panel finds that the home page of the Respondent’s website does not contain any notice informing Internet users that it is not related to the official Swarovski website. On the contrary, the home page of the Respondent’s website operating under the disputed domain name gives the impression that the website is the official website of the Complainant: it reproduces the swan logo of the Complainant, it reproduces a picture of models holding Swarovski products, and it contains a mention of a 2013 copyright for “Swarovski Jewelry”. Such circumstances are usually regarded as evidencing a lack of any bona fide offering, e.g. Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211. In other words, the website hosted under the disputed domain name has the overall appearance of an official website affiliated with the Complainant.

Considering the above, the Panel takes the view that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent seeks to falsely divert consumers to the Respondent’s website by taking advantage of the goodwill and the reputation in the SWAROVSKI trademark. It has been concluded in that way in the decision Swarovski Aktiengesellschaft v. Johnny Person D / WhoisGuard Inc., supra.

The Respondent has failed to respond to the Complaint and thus has not taken this opportunity to challenge the Complainant’s assertions and to demonstrate any rights or legitimate interests in the disputed domain name.

Based on the above, the Panel considers that the Complaint complies with the conditions set forth in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)iii of the policy, the Complainant must prove that the Respondent has registered and is using the disputed domain name in bad faith. Paragraph 4(b) gives examples of circumstances likely to constitute evidence of both bad faith registration and bad faith use. Paragraph 4(b)(iv) particularly cites as possible circumstances:

“[the use of a domain name intentionally to attempt] to attract, for commercial gain, Internet users to [the Respondent’s] website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

In the present case, the Complainant has provided evidence indicating that the trademark SWAROVSKI enjoys a strong reputation throughout the world, and particularly in Romania, prior to the registration of the disputed domain name.

The Panel considers as very unlikely that the Respondent would not have been aware of the SWAROVSKI mark and of the product line developed by the Complainant at the time it registered the disputed domain name, considering the renown of the Complainant and the fact that the Complainant and the Respondent operate in the same field of activity. Clearly, the Respondent had the brand Swarovski in mind when it chose to register the disputed domain name.

Additionally, the use made of the disputed domain name confirms that the Respondent is well aware of the existence of the Complainant’s rights, trademarks and activities. See Skype Limited v. Xiaochu Li, WIPO Case No. D2005-0996. The Respondent’s website actually has the appearance of an official Swarovski website.

Indeed, it results from the information and documents submitted by the Complainant that the disputed domain name is used in connection with a website offering for sale purported Swarovski products. As stated above no disclaimer whatsoever is to be found on the home page of the Respondent, to inform Internet users that it is not associated with the Complainant.

Consequently, the disputed domain name is used in bad faith in order to attract consumers likely to be confused into believing that they are directed to the official Swarovski online store, particularly when the Complainant’s Swan logo is illegitimately reproduced, as well as a promotional picture of models holding Swarovski products.

Such a use, the Panel believes, demonstrates that the Respondent aims to mislead Internet users for its own commercial gain and cannot be regarded as a legitimate non-commercial or fair use., LEGO Juris A/S v. Ken Roling, WIPO Case No. D2011-1413.

The Panel also considers that the goods sold by the Respondent are likely to be counterfeits. Indeed, they are sold with discounts that represent 85% of the alleged original price. The Panel has strong doubts as to whether genuine goods bearing the Swarovski brand can be retailed with such drastic discounts.

Furthermore, during the procedure to settle this dispute, it came out that the phone number and the address given to the Registrar in the registration process were fakes. This conduct is in line with a finding of bad faith.

Consequently, the Panel has no doubt 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 <discountswarovski.biz> be transferred to the Complainant.

Martine Dehaut
Sole Panelist
Date: December 5, 2013