WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. WhoisGuard, Inc.

Case No. D2014-0362

1. The Parties

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

The Respondent is WhoisGuard, Inc. of Panama City, Panama.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 Registrar in this response informed that the specific language of the Registration Agreement as used by the registrant for the disputed domain name is English.

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 March 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 03, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on April 9, 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 Swarovski and its merchandise and to purchase genuine Swarovski products. True copies of printouts of certain pages from the Swarovski Website were attached as Annex G to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <swarovskiok.org> fully incorporates the Complainant’s trademark SWAROVSKI and its trade name, and that it is identical or confusingly similar to this trademark in which the Complainant has rights. It argues with reference to series of WIPO 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. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138). The disputed domain name incorporates the Complainant’s trademark in its entirety as its initial and most prominent part, as well as the purely descriptive English term “ok”. A combination of a generic term with the distinctive trademark SWAROVSKI does not distinguish the disputed domain name from the Complainant’s trademark and the necessary generic Top-Level Domain (gTLD) to the Complainant’s trademark, does not render the disputed domain name any less confusingly similar to the Complainant’s trademark (Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858). The Complainant concludes that the disputed domain name is confusingly similar to his trademark SWAROVSKI.

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 trademark SWAROVSKI in a domain name or in any other manner. The Respondent has never been known by the disputed domain name and has no legitimate interests in the trademark SWAROVSKI or the name “Swarovski” (Marriott International, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610). The disputed domain name is being used to advertise Swarovski products and therefore it misdirects Internet traffic to the infringing website. The Complainant contends that the Respondent is not an authorized seller of Swarovski products, and it does not guarantee the authenticity or quality of the products that are being sold.

Such 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 WIPO panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark].” (Drexel University v. David Brouda, WIPO Case No. D2001-0067). 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 Complainant’s trademark throughout the infringing website and offers purported Swarovski products for sale on the infringing website which supports the contention that it chose the disputed domain name only because it was seeking to create an association with the Complainant. The Respondent’s use of the Complainant´s 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 Swarovski’s goodwill and reputation. Accordingly, the Respondent does not have a right or legitimate interest in the Complainant’s trademark. The Complainant refers to the WIPO panel decisions according 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 Complainant concludes that the Respondent in this case does not have any right or legitimate interest in the disputed domain name.

Furthermore, the Complainant essentially argues 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 SWAROVSKI trademarks, 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; Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819). Furthermore, the infringing website offers for sale a variety of purported 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 Swarovski’s reputation (Swarovski Aktiengesellschaft v. Transure Enterprise Ltd, WIPO Case No. D2009-1638). The registration of a famous mark, like the SWAROVSKI trademark, as a domain name 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 further contends that the disputed domain name is also being used in bad faith. 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).

The Respondent’s use of the disputed domain name is an attempt by the Respondent to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SWAROVSKI trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This ongoing activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use. Furthermore the Complainant argues that WIPO 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 a 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 contends 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 Swarovski’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 Swarovski’s business in contravention of paragraph 4(b)(iii) of the Policy (AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276). Further, 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 Companyv. Phayze Inc., WIPO Case No. D2002-0861). Moreover the use of a trademark in a domain name, which 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 trademark 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 SWAROVSKI trademarks, 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 Complainant’s trademark in the disputed domain name, throughout the infringing website, in the “title bar” of the infringing website and offers products identical or similar to the Complainant’s products for sale at the infringing website. The Complainant further contends that WIPO 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 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 <swarovskiok.org> incorporates the Complainant’s trademark SWAROVSKI in its entirety. The second word in the disputed domain name “ok” is a generic English term, a dictionary word. 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 “.org” does not here 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).

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 used or has 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 been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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 of the Complainant.

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. Moreover the Respondent has never been commonly known by the disputed domain name and has no legitimate interest in the SWAROVSKI trademark or the name “Swarovski” (Marriott International, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610). The Panel finds that the Respondent before any notice of the dispute, had not used, or had 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 is not commonly known by the disputed domain name. It has never been licensed or granted permission from the Complainants to use its trademark. The Respondent was in the Panel’s view fully aware that the Complainant had established rights in the SWAROVSKI trademark at the time the Respondent registered the disputed domain name. The Panel also notes that the mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Panel accepts the argument of the Copmplainant that the disputed domain name is being used to advertise products that purport to be those of the Complainant 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). The Respondent’s use of the disputed domain name to intentionally trade on the well-known mark of another, in order to lure Internet users to a website unrelated to the trademark owner, cannot and does not constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

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 its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.

The Complainant has submitted the evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant’s trademark at the time it registered the disputed domain name. The Respondent has registered the disputed domain name in bad faith because it was doubtless registered with the knowledge of the Complainant’s rights in the trademark SWAROVSKI, 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). The Panel accepts the argument of the Complainant that the Respondent’s bad faith is evidenced by several circumstances indicating that it must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. In such a way the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the trademarks in a corresponding domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400). Registration of a famous mark, like the trademark SWAROVSKI, as a domain name by an entity that has no legitimate relationship with the mark, 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). Furthermore, the Panel notes that the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated trademark SWAROVSKI in the disputed domain name and 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). Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant’s business, the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of the disputed domain name. 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 <swarovskiok.org> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: April 23, 2014