WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. zhang zhengcong

Case No. D2014-1422

1. The Parties

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

The Respondent is zhang zhengcong of Kunming, Yunnan Province, China.

2. The Domain Name and Registrar

The disputed domain name <swarovskioutletaustria.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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.

On August 21, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceeding commenced on August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 18, 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, Swarovski Aktiengesellschaft, is a producer of cut crystals genuine gemstones and created stones with productions facilities in 19 countries and a presence in over 120 countries. In 2012, the Complainant's products were sold at revenue of 3.08 billion Euros.

The Complainant markets its products worldwide through its boutiques and through partner-operated boutiques worldwide.

Since its establishment in 1895, the Complainant has manufactured and sold various crystal products under the trademark SWAROVSKI.

The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. for example: Chinese trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987; International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, designated for Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Liechtenstein, Morocco, and others; International trademark registration No. 528189 – Swarovski, with the registration date of September 6, 1988, designated for Albania, Benelux, Switzerland, Germany, Egypt, Spain, France, Italy, Morocco, and others; Community trademark registration No. 000120576 – SWAROVSKI, with the registration date of October 15, 1998; Community trademark registration No. 000120501 – Swarovski (logo), with the registration date of October 27,1999; Community trademark registration No. 003895091 – SWAROVSKI, with the registration date of August 23, 2005; International trademark registration No. 663366 – SWAROVSKI, with the registration date of October 17, 1996, designated for Armenia, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, China, Cuba, Czech Republic, Croatia, Hungary, and others; Community trademark registration No. 6865794 – Swarovski (logo), with the registration date of February 5, 2009; and many more.

Through extensive use around the world, the SWAROVSKI trademark has generated vast good will and has become famous in connection with jewelry.

The Complainant also developed a formidable presence on the internet and is the owner of several domain names, which contain the name "swarovski". For example: <swarovski.com> and <swarovski.net>.

The disputed domain name <swarovskioutletaustria.com> was registered on May 22, 2014.

The disputed domain name resolves to a website offering jewelry for sale in German and English and displaying the SWAROVSKI trademark and logo.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's SWAROVSKI trademark and name. The Complainant further contends that the addition of the descriptive term "outlet" and the geographic location "Austria" do not avoid a finding of confusing similarity.

The Complainant further argues that the SWAROVSKI trademark has generated vast good will through the Complainant's extensive use around the world and specifically in China and has become a well-known trademark.

The Complainant further argues that the public associates the mark SWAROVSKI exclusively with high quality items by the Complainant.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its SWAROVSKI trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official Swarovski website.

The Complainant further argues that the Respondent does not at any point identify itself as being independent from the Complainant. The Respondent has not only used the SWAROVSKI mark under the disputed domain name, but also operates an online shop which utilises the SWAROVSKI mark throughout, displays the Swarovski swan logo on the home page, and offers for sale goods that are similar to those sold by the Complainant which is a blatant infringement of the SWAROVSKI mark.

The Complainant further contends that the Respondent is 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.

The Complainant further claims that the disputed domain name is a blatant infringement of the SWAROVSKI mark and no bona fide use was being made under the disputed domain name. The Complainant argues that this is clear evidence that the Respondent was trying to pass itself off as the Complainant and was exploiting the goodwill associated with the SWAROVSKI mark in order to obtain commercial gain.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant's famous and well-known trademark when registering the disputed domain name.

The Complainant further argues that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent incorporates the Complainant's trademark in the website to which the disputed domain name resolves.

For all of the above reasons, 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

A. Procedural Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Panel cites the following with approval:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of English characters, rather than Chinese characters;

b) The disputed domain name includes the English words "outlet" and "Austria";

c) According to the evidence provided by the Complainant, the website under the disputed domain name resolves to an online marketplace, which is operated in German and English;

d) The Respondent did not object to the Complainant's request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of numerous trademark registrations for the SWAROVSKI mark around the world. For example: Chinese trademark registration No. 384001 – SWAROVSKI, with the registration date of July 30, 1987; International trademark registration No. 303389A – SWAROVSKI, with the registration date of October 9, 1965, and many more.

Also, the Complainant's rights in the SWAROVSKI mark have been established in numerous UDRP decisions (see, e.g.,Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353 and Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139).

The disputed domain name differs from the registered SWAROVSKI trademark by the additional words "outlet" and "Austria" and the additional generic Top-Level Domain ("gTLD") ".com".

The disputed domain name integrates the Complainant's SWAROVSKI trademark in its entirety, as a dominant element.

The additional words "outlet" and "Austria" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, as they are common terms in the Complainant's field of business. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "the incorporation of the Complainant's SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant's marks" (Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028).

Indeed, the disputed domain name entirely incorporates the SWAROVSKI trademark, adding the words "outlet" and "Austria". The addition of such generic prefix and suffix is not enough to avoid similarity, nor does it add anything to avoid confusion: "Given the fame and notoriety of the Complainant's SWAROVSKI mark, the addition of the words "buy" and "jewelery" does not provide sufficient distinction from the Complainant" (Swarovski Aktiengesellschaft v. hanguo, WIPO Case No. D2012-0749).

Furthermore, the addition of a geographical name or indicator to a trademark, and in particular to the SWAROVSKI trademark, does not serve to differentiate the domain name from the Complainant: "[t]he geographical name "China" does not assist in distinguishing the disputed domain name from the Complainant's mark. The fact that crystal beads are being manufactured by the Complainant for jewelry such as bracelets and necklaces as well as its substantial market in China as shown in Annexes D, G and H to the Complaint will make actual confusion among consumers even more likely" (Swarovski Aktiengesellschaft v. siqi Ai AKA aisiqi, WIPO Case No. D2010-2057). The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity. (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the SWAROVSKI trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SWAROVSKI trademark since the year 1965. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval:

"The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. "Swarovski" is not a descriptive or generic term; it is a famous and well-known trade mark. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).

See also: "[it] is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name resolved, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the domain name resolved.

The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent's use of the highly distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant:

"By registering and using the 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, 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" (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.

Indeed, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Complainant submitted evidence proving that the Respondent is using the disputed domain name to promote goods that are identical to the goods being offered by the Complainant.

Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".

Further, the Panel finds that the Respondent has incorporated the SWAROVSKI marks on its website in order to attract consumers for commercial gain by purporting to sell the Complainant's products: "Respondent's bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as 'necklaces', 'bracelets' and 'earrings' using an identical name to the Complainant's trademark. That past practice confirms not only the Respondent's awareness that the advertised products were 'Swarovski' products, but also the Respondent's actual use of the Complainant's name in bad faith" (see Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170). The Panel also notes that the website does not accurately and prominently disclose the Respondent's relationship with the Complainant.

The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b)(iv) of the Policy.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademarks and the Respondent's use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 <swarovskioutletaustria.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: October 1, 2014