WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski AG v. Perfect Privacy, LLC / Nicholas Tucker

Case No. D2018-0493

1. The Parties

The Complainant is Swarovski AG of Triesen, Liechtenstein, represented by Lorenz Seidler Gossel, Germany.

The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Nicholas Tucker of Longwood, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <swarovskicrystalpalace.com> is registered with Top Shelf Domains LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2018, 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 10, 2018, 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 amended Complaint on March 13, 2018.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 5, 2018.

The Center appointed Andrew Brown QC as the sole panelist in this matter on April 13, 2018. 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

A. The Complainant

The Complainant produces cut crystal and genuine gemstones. It operates under the registered trade mark SWAROVSKI (discussed in further detail below). The Complainant has operated since 1895, when Mr. Daniel Swarovski invented and patented an electric cutting machine for cutting crystals. It has production facilities in 18 countries and retail stores in more than 120 countries, and employs more than 30,000 people. Its revenue in 2014 was EUR 3,000,000,000.

The Complainant has also used the trade mark CRYSTAL PALACE in conjunction with its SWAROVSKI mark. It appears that the CRYSTAL PALACE mark was used to refer to collaborations between the Complainant and lighting designers. The Complainant has provided evidence of the use of its SWAROVSKI and CRYSTAL PALACE marks on CD covers, gallery catalogues, articles and magazines.

The Complainant owns and operates under the following relevant registered trade marks:

The Complainant operates the website “www.swarovski.com”. Customers who wish to purchase the Complainant’s goods can visit its website and be directed to local stores in order to make a purchase.

B. The Respondents

The Respondents in this proceeding are Perfect Privacy, LLC of Jacksonville, Florida, United States and Nicholas Tucker of Longwood, Florida, United States. No response has been received from the Respondents.

C. The Disputed Domain Name

As noted above, the disputed domain name is <swarovskicrystalpalace.com>. It was registered on February 29, 2016 (the “Relevant Date”).

The Complainant has provided evidence of the website that was located at the disputed domain name. The website featured a series of “articles” posted by a Rachel Watsford. The articles were posted in Malay language, but the headings and surrounding text (such as links leading to the website’s “Contact Us”, “About Us” and “Privacy Policy” pages) were in English. The translated versions of the articles provided by the Complainant show that the subject matter of the articles was holiday destinations, gambling, lotteries and financial investment. It is unclear whether the Respondents would be paid for clicks through to the articles posted on the website located at the disputed domain name.

As noted by the Complainant, the website located at the disputed domain name did not advertise or offer similar goods to those produced and sold by the Complainant. It contains no references to the Complainant, other than the disputed domain name itself. The translated “About Us” section of the website states:

“For those of you who are still investigating beautiful places as holiday destinations, we may be able to provide some relevant information. We at swarovskicrystalpalace.com have gathered together some beautiful and impressive places for all of you.

Not only that. We also offer a wide variety of interesting information about the places that we recommend to you. We will give you all the information from the history of the place to the varieties of food.

Besides that we also want to introduce you to several very good and trustworthy products from those places. From the provision of entertainment to some very famous products, you can find out all about them in our following article.”

5. Parties’ Contentions

A. Complainant

The Complainant has submitted that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights under paragraph 4(a)(i) of the Policy.

The Complainant relies on its registered trade marks for the words SWAROVSKI and CRYSTAL PALACE to satisfy paragraph 4(a)(i). Those trade marks include those listed above, all of which predate registration of the disputed domain name. It submits that the disputed domain name wholly includes both of its registered trade marks. The Complainant has submitted that even if “crystalpalace” in the disputed domain name was taken to be a descriptive use, paragraph 4(a)(i) would be satisfied given the use of its mark SWAROVSKI.

In relation to paragraph 4(a)(ii) of the Policy, the Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that the Respondents do not own any trade mark rights for SWAROVSKI or CRYSTAL PALACE. Instead, it submits that SWAROVSKI is exclusively recognised as a badge of origin for the Complainant, and that any use of that mark by the Respondents would infringe its trade mark rights. The Complainant has argued that none of the circumstances provided for under paragraph 4(c) of the Policy apply to the Respondent in the present case, and that the Respondent has failed to demonstrate any of those circumstances apply by failing to respond.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith, in satisfaction of paragraph 4(a)(iii) of the Policy. To show bad faith at the time of registration, it argues that the Respondents must have been aware of the Complainant and its SWAROVSKI marks when the disputed domain name was registered. This is because of the very well-known nature of the Complainant and its business.

To show bad faith through use, the Complainant submits that the Respondents intentionally used the Complainant’s trade marks in the disputed domain name in order to attract customers looking for the Complainant’s website and goods. Those customers who ended up on the Respondents’ website would instead be presented with articles relating to gambling, holiday destinations and financial investment. The Complainant submits that this causes disruption to the Complainant’s business by diverting users from its genuine website.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the SWAROVSKI and CRYSTAL PALACE trade marks by virtue of its trade mark registrations set out above, registered in the United States and the European Union.

The Panel finds that the disputed domain name is confusingly similar to both of these trade marks.

The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondents used or 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) that the Respondents have been commonly known by the disputed domain name, even if they had acquired no trade mark or service mark rights; or

(iii) that the Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or tarnish the trade mark or service mark at issue.

As already noted above, no response or evidence has been provided by the Respondents. However, the overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

There is no evidence of the Respondents using or making demonstrable preparations to use the disputed domain name or a domain name corresponding to that domain name in connection with a bona fide offering of goods or services. Nor is there any evidence of the Respondents being commonly known by the disputed domain name.

Accordingly, and in the absence of any response from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondents have registered or have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that the Respondents have registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) that the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Panel is satisfied that the Respondents registered the disputed domain name in bad faith for the following reasons:

(i) As noted above, SWAROVSKI is a distinctive trade mark that refers to the founder of the Complainant. SWAROVSKI is a world-wide brand and is well-known in the market. In the absence of any evidence demonstrating that the Respondents intended any good faith use of the mark SWAROVSKI when registering the disputed domain name, the only available inference is that the use of that mark was intended to attract consumers looking for the Complainant.

(ii) This finding is confirmed by the Respondents’ further use of the Complainant’s mark CRYSTAL PALACE in the disputed domain name. Although that mark is less distinctive than the Complainant’s SWAROVSKI mark, the use of the Complainant’s two registered marks in conjunction with one another as the disputed domain name dispels any doubt that the registration by the Respondents of the disputed domain name was intended to attract customers looking for the Complainant. The Panel finds that the Respondents must have been aware of the Complainant’s well-known trade marks when registering the disputed domain name.

As to use in bad faith, the Complainant has relied on paragraph 4(b)(iii) of the Policy, which provides that bad faith can be found where “the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor”. There is no evidence that the Respondents are competitors of the Complainant, nor is there any evidence that the Respondents are offering goods similar to those sold by the Complainant (as noted by the Complainant itself). Accordingly, this particular basis for a finding of bad faith cannot be made out.

However, the Panel is satisfied that the Respondents used the disputed domain name in bad faith for the following reasons:

(i) Paragraph 4(b)(iv) provides that the bad faith requirement is met where a respondent has intentionally attempted to attract, for commercial gain, 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 location or of a product or service on the respondent’s website or location. This is often satisfied by evidence that the website displayed at the disputed domain name is being used to advertise goods or services in some way related to the disputed domain name, or to link to a competitor’s products. There is no such evidence of advertising or linking to a competitor’s products in this case.

(ii) Despite this, close scrutiny of the Respondents’ website reveals two factors supporting a finding of bad faith under paragraph 4(b)(iv). The first is that some of the gambling “articles” posted on the Respondents’ website contain links to third party gambling websites. These websites contain advertising, “live chat” windows and pop-up windows encouraging the visitor to install software. The Panel infers that this hyperlinking is for the purpose of commercial gain.

(iii) The second factor supporting a finding of use in bad faith is that the Respondents’ website permits visitors to the website to post comments, which requires the visitor to enter their name and email before their comment will be posted. Users searching for the Complainant who visit the Respondents’ website could be deceived into entering their user information in the belief they are dealing with the Complainant, due to the use of two of the Complainant’s trade marks in the disputed domain name. This provides the Respondents with user information which is potentially able to be used or sold for commercial gain.

(iv) Paragraph 4(b) of the Policy is not exhaustive of the circumstances that amount to use in bad faith. In the present case, the Panel finds a further ground of use in bad faith in the way in which the Respondents purport to endorse certain holiday locations and products ostensibly in the name of the Complainant. The Panel finds that the “About Us” section of the website to be found at the disputed domain name makes claims that some consumers would regard as providing endorsements from the Complainant. For example:

“We at swarovskicrystalpalace.com have gathered together some beautiful and impressive places for all of you.”

“We also offer a variety of interesting information about the places that we recommend to you.”

“Besides that we also want to introduce you to several very good and trustworthy products from those places.”

The right to recommend and endorse products and places to visit using the Complainant’s well-known SWAROVSKI trade marks vests solely with the Complainant. Claimed endorsements by the Respondents using the Complainant’s trade marks are false and misleading to consumers and would also fall within the scope of use of the disputed domain name in bad faith. This is particularly so where the Panel is satisfied that the Respondents have no rights or legitimate interests in the disputed domain name.

(v) The Panel also takes into account the fact that the Respondents have failed to answer the Complainant’s allegations. If the website located at the disputed domain name was being used and maintained bona fide, it could be expected that the Respondents would have taken steps to defend these proceedings.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel concludes that the requirements of paragraph 4(a)(iii) are 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 <swarovskicrystalpalace.com> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Date: April 23, 2018