WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. zhong jingtao
Case No. D2013-1940
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is zhong jingtao of Hangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <swarovskiösterreich.com> [xn--swarovskisterreich-l3b.com] is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2013. On November 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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”).
Subject of the Complaint was initially the transfer of two domain names, <swarovskiösterreich.com> and <xn--swarovskisterreich-l3b.com>. The Center informed the Complainant on November 26, 2013 that the second domain name is the character-converted version of the first “internationalized” domain name. Therefore, the Center informed the Complainant that the proceedings would continue under the assumption that the Complaint concerned only one domain name, namely <swarovskiösterreich.com> [xn--swarovskisterreich-l3b.com]. The Complainant did not object against this assumption.
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 December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Christian Schalk as the sole panelist in this matter on January 7, 2014. 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules. The language of the proceedings is English.
The Panel has taken note of the Center’s accurate assumption that the Complaint concerns only one domain name, namely <swarovskiösterreich.com> [xn--swarovskisterreich-l3b.com], referred hereinafter to the “disputed domain name”.
4. Factual Background
The Complainant is a leading producer of cut crystal, genuine gemstones and created stones with a commercial presence in more than 120 countries. In 2012, the Complainant’s products were sold in 1250 own boutiques and through 1100 partner-operated boutiques worldwide. The approximate revenue of the Complainant’s group of company was EUR 3.08 billion in 2012.
The Complainant’s goods and marketing activities have received considerable attention in the media.
The Complainant owns various trademark rights in the term “Swarovski” in many countries of the world. Especially, in China, the Complainant has trademark rights in the Latin version of SWAROVSKI as well as in its Chinese version. The Complainant owns among others the following Chinese trademarks:
Chinese trademark registration No. 384001 for SWAROVSKI (Latin version), registration date July, 30,1987, covering goods and services in Int. Class 14;
- Chinese trademark registration No. 385013 for SWAROVSKI (Chinese version), registration date August, 30,1989, covering goods and services in Int. Class 14;
- Chinese trademark registration No. 361346 for SWAROVSKI (Chinese version), registration date September, 20,1989, covering goods and services in Int. Class 14;
- Chinese trademark registration No. 346372 for SWAROVSKI (Latin version) and a device, registration date April, 20,1989, covering goods and services in Int. Class 14;
- European Community Trademark registration No. 3895091 SWAROVSKI, registration date August 23, 2005; covering goods and services in Int. Classes 2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28, 34, 35 and 41;
- European Community Trademark registration No. 6865794 SWAROVSKI and device, registration date February 05, 2009; covering goods and services in Int. Classes 9, 11, 14, 18, 21, 25 and 26.
Furthermore, the Complainant’s trademark rights in the SWAROVSKI trademarks have been recognized already by several URDP panelists. See, for instance, Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net,
WIPO Case No. D2013-1043 and Swarovski Aktiengesellschaft v. Luly Stephanie,
WIPO Case No. D2013-0846).
The Complainant owns also several domain names featuring the term “Swarovski”, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website. This website allows Internet users to access information regarding the Complainant’s products and to purchase them online.
The Respondent registered the disputed domain name on March 30, 2013.
The Panel has typed the disputed domain name in the Google search engine. Already the eighth hit shown by this search engine displays the disputed domain name. The headline of this hit is “Sonderangebote: Swarosvski Österreich” (in English: “Special offers: Swarovski Austria”). Internet users clicking on this hit are directed to a website in German language where certain products are offered for sale, such as “Swarovski Necklaces”, “Swarovski Bracelets” and “Swarovski Earrings”. All products are offered with a substantive discount of 50% and more. This website shows elements of a typical online store, such as a password field, a function to register as a new client and credit card symbols. While the navigation fields are in German language, the products offered on this website are described only in English language. On the upper left side of this website, there is a banner where it is written “MADE WITH SWAROVSKI ELEMENTS”. The same banner is displayed on the right of a picture of a jewellery product which is prominently shown in the upper centre of the website.
On the bottom of the website it is written “Copyright © 2010-2014 Swarovski Österreich, All Rights Reserved; Links Swarovski Schmuck, Swarovski Österreich, Swarovski Online kaufen”.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s SWAROVSKI marks. The Complainant argues in this context, that the Respondent has chosen the disputed domain name to cause confusion among Internet users between the websites to which the disputed domain name resolves and the websites of the Complainant.
The Complainant believes that Internet users who have arrived at the infringing website will most likely be confused into thinking that this website is an official website of the Complainant because of the use of the Complainant’s name. It is the Complainant’s opinion that such behaviour is illegal because it wrongfully capitalizes on the Complainant’s goodwill in its SWAROVSKI marks to divert Internet traffic to an infringing website. The Complainant refers in this context to Ticketmaster Corp. v. Polanski,WIPO Case No. D2002-0166, to support its arguments. The Complainant adds here, that the panels in General Electric Company, GE Osmotics v. Optima di Frederico Papi, WIPO Case No. D2007-0645 and Arthur Guiness Son & Co.(Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, found that even if Internet users would find out once they have arrived at a website associated with a domain name that it is not the trademark holder’s domain name, this does not detract from the fact that the respondent’s use of the complainant’s trademark in the disputed domain name is what Internet users initially attracted to the disputed domain name in the first place.
The Complainant argues further that the addition of the term “Österreich” (meaning Austria), as suffix to the SWAROVSKI marks does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant explains in this context that the term “Swarovski” stands for a famous family business in Austria, which has been founded in 1895 in Wattens and which operates now a number of shops throughout Austria. Therefore, the Complainant believes that the only reason for using the term “Österreich” along with the SWAROVSKI trademark is, to create an association with the Complainant and its business in Austria, which strengthens the confusing similarity with the Complainant’s SWAROVSKI marks. The Complainant cites among others Swarovski Aktiengesellschaft v. Matthew Mitchel,
WIPO Case No. D2012-0073; Swarovski Aktiengesellschaft v. Steward Donald,
WIPO Case No. D2012-0169 and Swarovski Aktiengesellschaft v. linyuan zhang,
WIPO Case No. D2012-0259 in order to supports its findings.
The Complainant asserts also that coupling a common word with the Complainant’s mark or even a word similar to the Complainant’s mark in a domain name does not negate a finding for confusing similarity. In this context, the Complainant refers to Swarovski Aktiengesellschaft v. Hellen Admas,
WIPO Case No. D2013-1041 and Swarovski Aktiengesellschaft v. Xue Yan Yang,
WIPO Case No. D2012-1041.
Furthermore, the Complainant argues that some panels have held in other UDRP cases where the Complainant was a party as well, that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety, see Swarovski Aktiengesellschaft v. cao zhiming,
WIPO Case No. D2012-1028 and Swarovski Aktiengesellschaft v. Liu Ji,
WIPO Case No. D2011-0445.
The Complainant alleges further that the Respondent has no legitimate interest or rights in the disputed domain name. The Complainant asserts that the Respondent has no connection or affiliation with the Complainant and has not received any express or implied license or consent to use the Complainant’s mark as a part of the disputed domain name. In addition, the Respondent has never been known under the disputed domain name.
The Complainant argues also that the fact that the disputed domain name is being used to advertise purported products of the Complainant and that the disputed domain name misdirects Internet traffic to an infringing website, does not constitute a bona fide offering of goods and services or a legitimate interest. The Complainant believes therefore, that the Respondent’s misappropriation of the disputed domain name was no accident since it was the Respondent’s intention to mislead consumers into believing that the Respondent is associated with or approved by the Complainant and by this, the Respondent is seeking to trade on the Complainant’s goodwill. The Complainant refers in this context to Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709 where the panel has stated that when a respondent has chosen to incorporate a well-known trademark without the authorisation of the trademark owner, this cannot be considered as a bona fide offering of goods and services. The Complainant cites furthermore Red Bull GmbH v. Credit du Léman SA, Jean Denis Deletraz,
WIPO Case No. D2011-2209, where the panel has stated that the registration of several domains incorporating a well-known trademark by the same respondent does not create a legitimate interest in the infringing domain name. In this context, the Complainant explains that the Respondent registered the disputed domain name to sell purported products of the Complainant at an infringing website.
Moreover, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith.
The Complainant is convinced that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant explains in this context that the SWAROVSKI mark is well known not only in China but worldwide as it has been stated by the panel in Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819. Therefore, the selection of the disputed domain name, which wholly incorporates the Complainant’s trademark SWAROVSKI cannot be a coincidence. The Complainant believes also that the Respondent would not have advertised products purporting to be the Complainant’s products if it was unaware of the Complainant’s reputation.
The Complainant contends in addition that the disputed domain name is being used in bad faith. The Complainant argues in this context that the Respondent has done nothing to identify itself as being independent from the Complainant but has, on the contrary, incorporated the Complainant’s SWAROVSKI mark in the disputed domain name, throughout the infringing website to which the disputed domain name resolves and attempts to attract consumers for commercial gain by purporting to sell the Complainant’s products. The Complainant refers in this context to Swarovski Aktiengesellschaft v. Tevin Duhaime,
WIPO Case No. D2012-2170, where the panel has stated that the use of a domain name by a registrant for the sale of products that are similar or identical to the Complainant’s products is consistent with the finding of bad faith use under the Policy.
The Complainant asserts also that another evidence for bad faith registration and use of the disputed domain name by the Respondent is, that its registration and use creates an “initial interest confusion” which attracts Internet users to the website to which the disputed domain name resolves because of its purported affiliation with the Complainant (see Swarovski Aktiengesellschaft v. Hopper Dirt,
WIPO Case No. D2011-1525).
Other indications for the Complainant are that the Respondent, without valid consent, utilises the Complainant’s SWAROVSKI trademark in the disputed domain name and has linked it with a website where products identical or similar to the Complainant’s products are offered for sale which, as a consequence, inevitably lead to confusion of some sort and cause disruption of the Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy. The Complainant refers to AT&T v. Rice,
WIPO Case No. D2000-1276 and PRL USA Holdings, Inc. v. Yan Shif,
WIPO Case No. D2006-0700, where panels have adopted the same position. Furthermore, the Respondent’s attempt to attract customers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the SWAROVSKI marks is compounded by the efforts to mislead consumers into believing that the site was operating or authorized by the Complainant. The Complainant argues that various UDRP panels have determined that such behaviour is indicative of bad faith and cites in this context PRL USA Holdings, Inc. v. Yan Shif, supra and Nikon, Inc.,Nikon Corporation. v. Technilab, Inc.,
WIPO Case No. D2000-1774.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) the disputed 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 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 Panel finds that the Complainant has established trademark rights in the term “Swarovski”. The disputed domain name is not identical to the Complainant’s trademark. However, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of a descriptive or a geographical term to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis *,
WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,
WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,
WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,
WIPO Case No. D2002-0002.)
In this case, the term “Österreich” is without any distinctive character. The term “Österreich” is the English word for Austria where the Complainant has its head office and where it operates many stores. The only distinctive element of the disputed domain name consists of the term “Swarovski”, which is identical to the Complainant’s trademark. As it has been stated in various UDRP cases, the addition of a generic or descriptive word or geographic description such as the above mentioned term “Österreich” as part of the disputed domain name does not remove the strong possibility of confusion (see Swarovski Aktiengesellschaft v. James Johnson,
WIPO Case No. D2012-0080; Montage Hotel & Resorts, LLC v. Daniel Kirchhof / Unister GmbH,
WIPO Case No. D2011-1042 and Carlsberg A/S v. Personal / decohouse, decohouse,
WIPO Case No. D2011-0972).
In addition, the generic Top-Level Domain (gTLD) “.com” suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with the SWAROVSKI trademarks in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,
WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,
WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,
WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, the Panel finds that there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
Given the Complainant’s worldwide interests in the trademark SWAROVSKI and the fact that the Respondent refers to the Complainant’s products on the website to which the disputed domain name resolves, it is unlikely that the Respondent was unaware of the Complainant both before registering the disputed domain name, and especially once the Respondent had begun to use it.
The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g.,Edmunds.com, Inc. v. Digi Real Estate Foundation,
WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,
WIPO Case No. D2000-0554). The Respondent has directed the disputed domain name to its own website, which looks like a website of the Complainant itself or of its Austrian affiliate and where the Respondent apparently offers for sale purported products of the Complainant.
Given the reputation of the Complainant’s trademark, the Panel believes that the only reason why the disputed domain name has been registered by the Respondent and then directed to this website was, to capitalize on the reputation and goodwill established by the Complainant in order to redirect Internet traffic intended for the Complainant away from it to the website to which the disputed domain name resolves to create income. Such behaviour cannot constitute a bona fide offering of goods or services or a legitimate use of the disputed domain name.
The Panel finds for these reasons that the Respondent has no rights or legitimate interests in the disputed domain name and that therefore, the requirement of paragraph 4(a)(ii) of the Policy is also met.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:
(i) circumstances indicating that the respondent 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 owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location of a product.
According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,
WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.
Given the notoriety of the Complainant due to its immense presence in the media, its products which the Complainant sells worldwide and even in China, where the Respondent apparently is domiciled , and the fact that the Respondent refers to the Complainant and its products on the website to which the disputed domain name resolves, the Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical,
WIPO Case No. D2003-0864). Therefore, the Panel is convinced that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent has directed the disputed domain names to a website where he pretends to sell products of the Complainant. It is a well-known fact that Internet users, searching for products of a specific company, for instance, the Complainant’s jewellery, do often type search terms that combine trademarks and descriptive words hoping to narrow down their search results. Such combination could consist of the terms such as “Swarovski” and “Österreich”. If the Respondent’s website appear among the search results, then Internet users could believe that when visiting the Respondent’s website, that it is either the website of the Complainant or of a third party somehow linked with it In this case, Internet users have good reasons to believe that this website is of the Complainant itself or of its Austrian affiliate. The design of the website to which the disputed domain name resolves is similar to the Complainant’s website. In addition, the statement “Copyright © 2010-2014 Swarovski Österreich, All Rights Reserved” in the footer of the website even strengthens the Internet user’s assumption on the Complainant’s ownership. Such a statement cannot lead to any other conclusion. Also, the appearance and style of the products displayed on the Respondent’s website is very similar to the products offered on the Complainant’s own website.
The Panel believes that the only reason for this would be to trade of the Complainant’s trademark rights by the Respondent, which allows the Respondent to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912). Therefore, the Panel is convinced that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, the Respondent has provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs information for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the Written Notice of the Complaint was returned because it could not be delivered and also the courier service provider could not reach the Respondent. Therefore, the Panel notes that the Respondent is in breach of the registration agreement (see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.
Given all facts and circumstances of this case, the Panel finds therefore, 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 <swarovskiösterreich.com> [xn--swarovskisterreich-l3b.com] be transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: January 23, 2014
