WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. KING MIC / Whoisguard Protected, Whoisguard Protected

Case No. D2014-0148

1. The Parties

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

The Respondent is KING MIC of Cape Verde; Whoisguard Protected, Whoisguard Inc. of Panama.

2. The Domain Name and Registrar

The disputed domain name <swarovskiok.net> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On January 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2014, 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 February 3, 2014 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 February 5, 2014.

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 February 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2014.

The Center appointed Cherise Valles as the sole panelist in this matter on March 14, 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 information in the registration of the disputed domain name, the content of the website of the disputed domain name and the Complaint is in English. Therefore, the decision is rendered in English.

4. Factual Background

The Complainant is the owner of the trademark SWAROVSKI that the Complainant uses in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. The Complainant has production facilities in 18 countries, distributes to 42 countries and has 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. The Swarovski Group’s approximate worldwide revenue in 2012 was EUR 3.08 billion.

The Complainant is the owner of multiple trademark and design registrations throughout the world, including in Panama, for the mark SWAROVSKI. These include the following:

- International trademark registration No. 527385 for SWAROVSKI;

- International trademark registration No. 528189 for SWAROVSKI;

- International trademark registration No. 303389 for SWAROVSKI;

- International trademark registration No. 303389A for SWAROVSKI

- International trademark registration No. 528759 for the Swan device mark;

- International trademark registration No. 528188 for the Swan device mark;

- Panamanian trademark registration No. 16082601 for SWAROVSKI, registered on April 20, 2007, in class 14.

The disputed domain name <swarovskiok.net> was registered on August 26, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, SWAROVSKI, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Complainant has not provided the Respondent with a cease and desist letter as the Complainant has previously dealt with respondents who rather than discontinue the use of SWAROVSKI marks upon receipt of a cease and desist letter from Swarovski, transfer the domain name to another registrant. This allows the Respondent to continue to exploit the SWAROVSKI marks. Therefore the Complainant has commenced this administrative proceeding without sending the Respondent a cease and desist letter.

The Respondent was, nevertheless, given an opportunity to respond to the Complainant’s contentions in these administrative proceedings, but has not done so.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of the SWAROVSKI mark. The Complainant has submitted evidence in Annex B to the Complaint demonstrating that it is the owner of multiple trademark and design registrations in Panama as well as globally for the mark SWAROVSKI, as indicated in Section 4 above.

The Panel finds that the Complainant’s marks are distinctive. The Panel notes that the disputed domain name entirely incorporates the Complainant’s mark SWAROVSKI. Using the SWAROVSKI mark in its entirety in a domain name does not lessen the finding of confusing similarity. See, among others, Swarovski Aktiengesellschaft v. Gsgjxbkxj Oijvioxub, WIPO Case No. D2013-1708.

The addition of the term “ok” as a suffix to the SWAROVSKI mark does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark. Coupling a common word with a complainant’s mark in a domain name, especially a well-known mark like the SWAROVSKI, does not negate a finding of confusing similarity but serves to reinforce the similarity. See Swarovski Aktiengesellschaft v. WhoisGuard, Inc. / Person, Johnny D, WIPO Case No. D2013-1450.

The Respondent has used the SWAROVSKI mark so as to cause confusion among Internet users between the disputed domain name and the SWAROVSKI mark. The fact that these consumers were initially attracted to the disputed domain name by the use of the SWAROVSKI mark in the disputed domain name is enough to contravene paragraph 4(a)(i) of the Policy. Numerous UDRP panels have found that the fact that consumers realise once they have arrived at a website associated with a domain name that it is not the trademark holder’s domain name does not detract from the fact that the respondent’s use of the trademark in the domain name is what initially attracted the users to the domain name in the first place. See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645.

In the light of the foregoing, the Panel finds that the disputed domain name <swarovskiok.net> is identical or confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s distinctive SWAROVSKI mark in any way or manner. The Respondent has not demonstrated that it has ever made any legitimate offering of goods or services under the Complainant’s SWAROVSKI mark. The Respondent simply utilizes a domain name that is very similar to the Complainant’s mark, with the clear intent to confuse Internet users and improperly redirect consumer traffic. Previous UDRP panels have found that no legitimate interest can be claimed by a respondent when there is no evidence that a respondent is commonly known by the domain name. See Marriott International Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610.

Previous UDRP panels have held that when a respondent chooses to incorporate a well-known trademark (like the SWAROVSKI mark) into a domain name without the authorisation of the trademark holder this cannot be considered a bona fide offering. See Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709. Furthermore, the Respondent’s use of the disputed domain name to sell goods similar to that of the Complainant does not constitute a bona fide offering of goods. See Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyProtect.org, WIPO Case No. D2013-0643.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The disputed domain name is being used to advertise purported Swarovski products and it misdirects Internet traffic to the disputed domain name. Such use is contrary to a bona fide offering of goods or services or a legitimate interest. See Swarovski Aktiengesellschaft v. skouta sekio/PrivacyProtect.org, supra.

The Respondent’s use of the SWAROVSKI mark is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by Swarovski. The Respondent is clearly seeking to trade on Swarovski’s goodwill and reputation and does not have a legitimate interest in the SWAROVSKI mark. The Respondent is selling goods that are similar to those sold by Swarovski and using identical marketing material to the official Swarovski website, creating the impression that the website displayed at the disputed domain name is an official Swarovski website and that the Respondent is an authorised seller of Swarovski products. UDRP panels have previously 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. See Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170.

Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(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;

(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 on-line location, 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 its website or location.

It appears that the Respondent is based in Cape Verde. The Complainant’s trademarks are well-known in many countries in the world, as indicated in Section 4 above, and the Respondent must have been aware of Swarovski’s rights in the SWAROVSKI mark. The Respondent not only uses the Swarovski name but also the Swarovski swan logo, which is displayed on the home page of the disputed domain name. Furthermore, the Respondent would not have advertised products purporting to be Swarovski products, such as “Swarovski Necklaces” and “Swarovski Bracelets” without being aware of Swarovski’s reputation. 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 marks. See Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779.

Considering that the disputed domain name incorporates the SWAROVSKI mark, and that the website at the disputed domain name offers for sale a variety of Swarovski products, the Panel finds that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s mark and thus to profit from its reputation. Previous UDRP panels have found that coupling a descriptive word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name constitutes bad faith on the part of the Respondent. See e.g., Swarovski Aktiengesellschaft v. N/A, delu xei, WIPO Case No. D2013-0708. Furthermore, registration of a famous mark, like the SWAROVSKI mark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith. See Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445.

The Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the disputed domain name because of its purported affiliation with Swarovski. See, Swarovski Aktiengesellschaft v. Hopper Dirt, WIPO Case No. D2011-1525. This is further evidence of the Respondent’s bad faith registration and use of the disputed domain name.

Where a respondent is found to be diverting users to its website to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant’s mark for a site which offers services similar to the complainant).

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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 <swarovskiok.net> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: April 3, 2014