The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Bryan Winkler of Baltimore, Maryland, United States of America (“USA”).
The disputed domain name <swarovskielementsat.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, 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 April 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2014.
The Center appointed Charles Gielen as the sole panelist in this matter on May 6, 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 Complainant owns several registrations of the trademark SWAROVSKI in a number of countries in the world, such as in the USA (among others registration number 934915 registered on May 30, 1972) and as a Community Trademark (registered on July 21, 2009) covering the whole of the European Union. The oldest registration dates back to August 19, 1965 and is registered in Austria. These registrations were obtained for a number of classes of goods and services, such as jewelry, watches, stones and clothing.
The disputed domain name <swarovskielementsat.com> was created on November 15, 2013.
The Respondent has registered the disputed domain name on November 15, 2013 and is operating an online shop in the German language with some English language content that offers for sale various purported Swarovski products e.g., “Swarovski Bangles”, “Swarovski Charms”, “Swarovski Halsketten” (meaning “Swarovski Necklaces”) and more. The Respondent is using the disputed domain name to confuse consumers into believing that the website displayed at the disputed domain name is an official Swarovski website and/or the Respondent is affiliated with or is authorised to sell products by the Complainant.
However, the Respondent is not an authorised seller of Swarovski products, and the Complainant does not guarantee the authenticity or quality of the products that are being sold on the website of the Respondent.
The Respondent does not at any point identify himself as being independent from the Complainant. The Respondent has not only used the SWAROVSKI trademarks in the disputed domain name, but also operates an online shop which utilises the SWAROVSKI trademarks throughout, displays the Swarovski swan logo on the home page, uses identical marketing material published by Swarovski and offers for sale goods that are similar to those sold by the Complainant which according to the Complainant is a blatant infringement of the SWAROVSKI trademarks.
The Respondent did not reply to the Complainant’s contentions.
The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision.
The Complainant proves that it has rights in the trademark SWAROVSKI based on different trademark registrations in the world. This trademark is very distinctive. The disputed domain name contains this trademark as the first word. The other parts of the disputed domain name (the word “elements” and the letters “at”) are descriptive; for “elements” this does not need further explanation. The letters “at” refer to Austria which is confirmed by the use of the Austrian flag on the website of the Respondent. In assessing confusing similarity one has to compare the trademarks with the disputed domain name as a whole. However in making the comparison, the dominant elements of the disputed domain name normally play a bigger role, in particular where such dominant element forms the first part of the disputed domain name, such as in this case. In relation to the descriptive elements the part of the disputed domain name consisting of the word “swarovski” clearly dominates the disputed domain name. In making the comparison between the trademark and the disputed domain name the generic Top-Level Domain (“gTLD”) suffix is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademarks. Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First of all, the Respondent makes a commercial use of the disputed domain name by offering products, identical with, or similar to the products offered for sale by the Complainant under its SWAROVSKI trademarks. It is unclear whether the products offered by the Respondent are genuine Swarovski products; however the Complainant made it clear that it did not give permission to the Respondent to use any of the SWAROVSKI trademarks and the Complainant also states that the products are being sold by the Respondent without there being any control by the Complainant over the quality of the such products. Even if the Respondent would only sell original Swarovski products (which has not become clear in this case because the Respondent did not file a response), this would not automatically give him the right to use the trademark in the disputed domain name. One of the factors that UDRP panels have held as being relevant in this context is that the respondent’s website accurately and prominently discloses the relation with the trademark owner, which in this case has not been done.
The Respondent did not present any allegations or evidence of rights or legitimate interests he might have in the disputed domain name. In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls that the trademark SWAROVSKI is a globally well-known trademark and is used and registered before the disputed domain name was registered. It must be held that the Respondent knew of the existence of the trademark at the time of its registration, which is clearly reflected by the fact that he offers for sale products identical or similar to the products offered for sale by the Complainant and using the SWAROVSKI trademarks. In doing this the Respondent creates the impression of being connected to the Complainant which is not the case. Under paragraph 4(b)(iv) of the Policy registration and use of the disputed domain name in order to intentionally attract customers by creating a likelihood of confusion with the trademarks of the Complainant is a clear indication of bad faith registration and use of the disputed domain name. The Complainant points at the case Swarovski Aktiengesellschaft v. putian coco kiss, WIPO Case No. DCC2012-0001 (<swarovski-crystal.cc>) in which the panel stated that “By registering and using the disputed domain name incorporating the well-known and well-established registered trademark SWAROVSKI, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record in the Case File, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.” This Panel is of the opinion that such reasoning equally applies in the case. The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <swarovskielementsat.com> be transferred to the Complainant.
Date: May 23, 2014
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