WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Tian Yu

Case No. D2014-1654

1. The Parties

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

Respondent is Tian Yu of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <swarovskicrystaloutlets.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 20, 2014.

The Center appointed Lynda Zadra-Symes as the sole panelist in this matter on October 29, 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

Complainant claims to be one of the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution in 42 countries and presence in more than 120 countries. In 2012, Complainant’s products were sold in 1,250 of its own boutiques and through 1100 partner-operated boutiques worldwide. Complainant’s approximate worldwide revenue in 2012 was EUR 3.08 billion.

Complainant is the owner of several trademark registrations for the mark SWAROVSKI, including in China for use in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries. The marks include China trademark registration no. 384001, registered on July 30, 1987, China trademark registration no. 385013, registered on August 30, 1989, China trademark registration no. 361346, registered on September 20, 1989, China trademark registration no. 346372, registered on April 20, 1989, China trademark registration no. 3520173, registered on November 7, 2004, China trademark registration no. 4285551, registered on May 28, 2008, and China trademark registration no. 4285550, registered on October 14, 2007.

Respondent registered the disputed domain name <swarovskicrystaloutlets.com> on August 30, 2013.

Complainant alleges that the disputed domain name is being used to operate an online shop that offers for sale various purported SWAROVSKI products and confuses consumers into believing that the website associated with the disputed domain name is an official SWAROVSKI website and/or Respondent is affiliated with or authorized to sell products by Swarovski.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complain to succeed, Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and

(ii) 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 Complainant has rights in the trademark SWAROVSKI (and related marks). The record shows that Complainant has owned registered trademark rights in China for the SWAROVSKI mark since at least 1987, more than 25 years before the disputed domain name was registered on August 30, 2013.

The disputed domain name incorporates the SWAROVSKI mark in its entirety with the addition of the words “crystal” and “outlets”. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” See Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227; see also Swarovski Aktiengesellschaft v. Gsgjxbkxj Oijvioxub, WIPO Case No. D2013-1708. The words “crystal” and “outlets” are generic words commonly used in association with Complainant’s line of business and do not add any distinguishing element to the disputed domain name. Previous UDRP panels have found that coupling or supplementing a trademark with generic or descriptive words does not make a domain name any less identical or confusingly similar, but serves to reinforce the similarity. See Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858 (“The addition of crystal” and “Jewellery”, as generic words appearing to describe the Complainant’s products and the necessary gTLD to the Complainant’s trademark, does not render the disputed domain name any less confusingly similar to the Complainant’s trademark. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark”); see also Swarovski Aktiengesellschaft v. Hellen Admas, WIPO Case No. D2013-1041 (“Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy”). Furthermore, the addition of the top level domain “.com” is also non-distinctive because it is required for the registration of a domain name.

The Panel finds that the disputed domain name is confusingly similar to the Trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Respondent is using <swarovskicrystaloutlets.com> to operate an online shop that offers various purportedly genuine SWAROVSKI products. Respondent has used SWAROVSKI marks without authorization throughout the website and has not disclosed to users that Respondent is not authorized to sell SWAROVSKI products, and that Complainant warovski does not guarantee the authenticity or quality of the products that are being sold on the website. It is clear that Respondent is attempting to create the impression that the website at <swarovskicrystaloutlets.com> is an authorized SWAROVSKI website.

Complainant claims that it did not authorize the use of the SWAROVSKI trademark to Respondent, and that Respondent used the disputed domain name to operate an online shop that sells purportedly genuine SWAROVSKI products. The Panel is satisfied that there is no indication that Respondent was commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of the goods or services.

Respondent has filed no Response. There have been no other communications from Respondent in connection with this case. Without a Response, there is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the SWAROVSKI mark. The Panel also finds that there is no evidence that Respondent is engaged in a bona fide offering of goods or services, Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.

Thus, the Panel finds that Complainant has successfully presented a prima facie case, Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

The evidence submitted by Complainant sufficiently shows that the SWAROVSKI mark is well-known in China and worldwide (as also found by the panels in e.g., Swarovski Aktiengesellschaft v. huang dougong, WIPO Case No. D2013-1605; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning, WIPO Case No. D2012-0976). The record also shows that Complainant owns trademark rights in SWAROVSKI that pre-date the registration of the disputed domain name, which contains Complainant’s trademark in its entirety. Given the international recognition of Complainant’s trademarks, the Panel finds that Respondent was likely aware of or should have known of Complainant’s rights in the trademark SWAROVSKI when registering the disputed domain name. The registration of the disputed domain name, which incorporates a famous mark, by Respondent, who has no legitimate connection or relationship with the mark or the owner of the mark and possesses awareness of Complainant’s trademark rights, constitutes bad faith at the moment of registration (e.g., Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte, WIPO Case No. D2010-0456; Swarovski Aktiengesellschaft v. huang dougong, WIPO Case No. D2013-1605; and Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning, WIPO Case No. D2012-0976).

Complainant has also submitted evidence, by means of printouts of the website to which the disputed domain name resolves, that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. In particular, Respondent is using the SWAROVSKI mark throughout the infringing website located at <swarovskicrystaloutlets.com> in order to offer for sale various purportedly genuine SWAROVSKI products. The use of Complainant’s mark in a domain name (as described under 6.B) by a registrant for the sale of products, that are similar or identical to 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.

Therefore, the Panel finds the disputed domain name was both registered and used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <swavroskicrystaloutlets.com> be transferred to Complainant.

Lynda Zadra-Symes
Sole Panelist
Dated: November 17, 2014