WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Whoisguard Protected / Zhangyun, Yun Zhang

Case No. D2014-0405

1. The Parties

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

The Respondent is Whoisguard Protected of Panama, Panama / Zhangyun, Yun Zhang of Xian, Shanxi, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2014. On March 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 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 March 24, 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 March 25, 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 March 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on April 22, 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.

4. Factual Background

The Complainant spends substantial time, effort and money advertising and promoting its SWAROVSKI trademark in Panama and worldwide. As a result, the SWAROVSKI trademark has become famous and well known in Panama.

The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com” (the “Swarovski website”). The Swarovski website enables Internet users to access information regarding the Complainant and its merchandise and to purchase genuine Swarovski products. True copies of printouts of certain pages from the Swarovski website are attached as Annex I to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant introduces that the disputed domain name <swarovskijewelrysales.com>, is confusingly similar to the SWAROVSKI trademark and that previous UDRP 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 (Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872). The disputed domain name fully incorporates the Complainant’s trademark SWAROVSKI and its trade name, and it is identical and confusingly similar to this trademark in which the Complainant has rights. It argues with reference to series of UDRP decisions (General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138). The addition of the terms “jewelry” and “sales” as suffixes to the SWAROVSKI trademark does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark (Swarovski Aktiengesellschaft v. Jun Qiao, WIPO Case No. D2013-1617). Moreover the technically necessary generic Top-Level Domain (“gTLD”) does not render the disputed domain name any less confusingly similar to the Complainant’s trademark. The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI trademark in the disputed domain name or in any other manner. The Respondent has never been known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or the corresponding name Swarovski (Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610). The disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the infringing website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest (Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyProtect.org, WIPO Case No. D2013-0643). Furthermore the Complainant argues 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 the Respondent has used the SWAROVSKI trademark throughout the infringing website and offers purported Swarovski products for sale on the infringing website which supports the contention that the Respondent chose the disputed domain name only because it was seeking to create an association with the Complainant. Moreover, the Complainant introduces that the Respondent’s use of the disputed domain name to sell goods similar to and purporting to be those produced and sold by the Complainant can be taken into consideration by the panel in determining bona fide or legitimate use and that the respondent’s prior use of the domain name was not bona fide and therefore there was no legitimate interest (E. Gluck Corporation v. James L. Clark d/b/a Animationwerks, WIPO Case No. D2000-1651). The Respondent’s use of the SWAROVSKI trademark is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. The Respondent does not have a legitimate interest in the SWAROVSKI trademark. The Complainant refers to previous UDRP decisions according to which, incorporating a well-known trademark into a domain name, without the authorization of the trademark holder, cannot be considered a bona fide offering (Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709). The Panel concludes that the Respondent in this case did not have any right or legitimate interest in the disputed domain name.

Furthermore, the Complainant essentially argues that the disputed domain name is also being used in bad faith, as 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 Complainant’s trademark, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the SWAROVSKI trademarks (Swarovski Aktiengesellschaft v. Michael Edwards, WIPO Case No. D2013-0779). Furthermore, 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. The Complainant’s trademarks are well known in Panama and worldwide; the disputed domain name is confusingly similar to the registered trademarks of the Complainant (Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819; Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-2241). Moreover, the infringing website offers for sale a variety of Swarovski products such as “Swarovski Pendants”, “Swarovski Necklaces”, “Swarovski Bracelets” and more. The Respondent would not have advertised products purporting to be Swarovski products if it was unaware of the Complainant’s reputation (Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638). The registration of a famous mark, like the SWAROVSKI trademarks, as a domain name by an entity that has no legitimate relationship with the trademark owner is itself sufficient to demonstrate bad faith (Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ ning ning,WIPO Case No. D2012-0979). The Complainant refers to previous UDRP panels which have found that coupling a descriptive word with the complainant’s trademark or even a word similar to the complainant’s trademark in a domain name constitutes bad faith on the part of the respondent (Swarovski Aktiengesellschaft v. N/A, delu xei, WIPO Case No. D2013-0708; Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524; Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).

The Complainant introduces that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated SWAROVSKI trademark in the disputed domain name, throughout the infringing website and attempts to attract consumers for commercial gain by purporting to sell Swarovski products (Swarovski Aktiengesellschaft v. Luca Vogler, WIPO Case No. D2013-0664). Furthermore, the Complainant argues that 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 (Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170). In addition, the Respondent’s registration and use of the disputed domain name creates “initial interest confusion”, which attracts Internet users to the infringing 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 name (Swarovski Aktiengesellschaft v. Hopper Dirt, WIPO Case No. D2011-1525). Furthermore, the Complainant introduces 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 Complainant’s business in contravention of paragraph 4(b)(iii) of the Policy (AT&T v. Fred Rice, WIPO Case No. D2000-1276). The registration of a famous mark, like the SWAROVSKI trademark, as a domain name by an entity that has no legitimate relationship with the mark is itself sufficient to demonstrate bad faith (AT&T Corp v. Woppies, WIPO Case No. D2000-1724; Ameriquest Mortgage Co.v. Phayze Inc., WIPO Case No. D2002-0861). Moreover, the Respondent has used the disputed domain name in bad faith as UDRP panels have previously found that the use of a trademark in a domain name, that is connected to a well-known product, by an individual who has no connection with the trademark, suffices as “opportunistic bad faith” use and registration (Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071). The purpose of the Respondent’s use of the Complainant’s trademarks in the disputed domain name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy (Microsoft Corporation v. Source One Management Services, Inc., WIPO Case No. D2005-0508). The Respondent’s attempt to attract consumers for commercial gain to the disputed domain name by creating confusion among consumers by utilising the Complainant’s trademark is compounded by the efforts to mislead consumers into believing the website was operated or authorised by the Complainant. The Respondent, without valid consent, utilises the SWAROVSKI trademark in the disputed domain name, throughout the infringing website and offers products identical or similar to Swarovski products for sale at the infringing website. The Complainant further introduces that previoius UDRP panels have determined that this type of behaviour is indicative of bad faith (PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700; Nikon, Inc. andNikon Corp. v. Technilab, Inc.,WIPO Case No. D2000-1774).

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name <swarovskijewelrysales.com> incorporates the Complainant’s trademark SWAROVSKI. The addition of the terms “jewelry” and “sales”, as suffixes to the SWAROVSKI trademarks does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark (Swarovski Aktiengesellschaft v. Jun Qiao, WIPO Case No. D2013-1617). Previous UDRP panels have held that domain names are likely to be held confusingly similar to established trademarks if they incorporate the trademark or a variation of the trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778). Moreover, the inclusion of the gTLD suffix “.com” does not avoid confusing similarity of the domain name and the trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858). The Complainant’s registration and use of the relevant trademark predates the Respondent’s registration of the disputed domain name.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, has not used or has not made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has no connection or affiliation with the Complainant 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. There is no evidence that the Respondent before any notice of the dispute, has not used, or has not made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Panel accepts the Complainant’s arguments that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, as it knew at the time of the registration that it could not make any actual use of the disputed domain name without tarnishing the Complainant’s trademark. The Respondent has never been known by the disputed domain name and has no legitimate interest in the Complainant’s trademarks or the name (Swarovski (Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610). The disputed domain name is being used to advertise purported Swarovski products and the disputed domain name misdirects Internet traffic to the Respondent’s website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest (Swarovski Aktiengesellschaft v. skouta sekio/ PrivacyProtect.org, WIPO Case No. D2013-0643). There is no doubt 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 has used the SWAROVSKI trademarks throughout the website, offer Swarovski products for sale on the website and has done nothing to identify itself as being independent from the Complainant, which supports the contention that the Respondent chose the disputed domain name only because it was seeking to create an association with the Complainant. The Respondent’s use of the disputed domain name to sell goods similar to and purporting to be those produced and sold by the Complainant is taken into consideration by the Panel in determining bona fide or legitimate use and that that the Respondent’s use of the disputed domain name is not bona fide and therefore there is no right or legitimate interest (E. Gluck Corporation v. James L. Clark d/b/a Animationwerks, WIPO Case No. D2000-1651). The Respondent’s use of the SWAROVSKI trademark is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or of a product or service on that website or location.

The Complainant has submitted the evidence, unchallenged by the Respondent, that the Respondent has registered the disputed name in bad faith because it was registered with the knowledge of the Complainant’s rights in the Complainant’s trademark and 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. The Complainant’s trademarks are well known worldwide and the disputed domain name is confusingly similar to the registered trademarks of the Complainant (Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819; Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-2241). The registration of a famous mark, like the SWAROVSKI trademarks, as a domain name by an entity that has no legitimate relationship with the trademark is itself sufficient to demonstrate bad faith (Swarovski Aktiengesellschaft v. Liu Ji, WIPO Case No. D2011-0445; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ ning ning,WIPO Case No. D2012-0979). The Respondent’s registration and use of the disputed domain name attracts Internet users to the 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 name (Swarovski Aktiengesellschaft v. Hopper Dirt, WIPO Case No. D2011-1525). The Panel finds that the disputed domain name is also being used in bad faith, as it intentionally attempts, for commercial purpose, to attract 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 of the products or services posted on the Respondent’s website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049).

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case

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 <swarovskijewelrysales.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: April 29, 2014