Westmore · UDRP DecisionTheswarovski.org
The Panel ordered transfer of <theswarovski.org>. It found the domain confusingly similar to the Complainant’s SWAROVSKI mark because the mark remained recognizable and dominant despite the addition of “the.” The Respondent lacked rights or legitimate interests and had used the domain for a website displaying the SWAROVSKI mark and offering purported discounted Swarovski jewellery without adequately disclosing its relationship with the Complainant. That use was found intentionally to attract Internet users for commercial gain through confusion, constituting bad faith under paragraph 4(b)(iv) of the Policy.
The timeline behind theswarovski.org
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind theswarovski.org — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a straightforward application of the UDRP to a domain that reproduces a well-known mark with only a common article added and is then used for an inadequately disclosed commercial website offering purported branded goods. It also shows that an ISP takedown and resulting inactivity do not erase evidence of prior active bad-faith use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Swarovski Aktiengesellschaft v. shaoqing peio Case No. D2012-1279 1. The Parties The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka. The Respondent is shaoqing peio of An Hui, China. 2. The Domain Name and Registrar The disputed domain name <theswarovski.org> (the “Domain Name”) is registered with Bizcn.com, Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2012. On June 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 27, 2012, 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 June 28, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On June 28, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments. 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 July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2012. The Center appointed Karen Fong as the sole panelist in this matter on August 10, 2012. 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 is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 8 countries, distribution to 42 countries and a presence in more than 120 countries. In 2010, the Complainant’s products were sold in 1218 of its own boutiques and through 1000 partner-operated boutiques worldwide. Its approximate worldwide revenue in 2011 was EUR 2.87 billion. The Complainant uses the SWAROVSKI trade marks in connection with crystal jewellery stones and crystalline semi-finished goods for the fashion, jewellery, home accessories, collectibles and lighting industries. It has registered the SWAROVSKI trade marks globally, including in China. The registered trade marks in China include the SWAROVSKI trade mark in English and Chinese as well as in combination with the Complainant’s “Swan” logo. The earliest Chinese trade mark registration for SWAROVSKI dates back to 1987. The Complainant spends substantial time, effort and money advertising and promoting the SWAROVSKI trade marks throughout China and worldwide. As a result, the SWAROVSKI trade marks have become famous and well-known in China. 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 Respondent registered the Domain Name <theswarovski.org> on December 20, 2011. The Domain Name is not currently connected to any active web pages after the Complainant filed a complaint to the Internet Service Provider (“ISP”) hosting the website connected to the Domain Name (“the Website”). The Website, which was in English, used to bear the SWAROVSKI trade marks and offered for sale purported discounted SWAROVSKI crystal jewellery. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to the SWAROVSKI trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese. The Complainant submits in Section VIII of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Website is in English which demonstrates that the Respondent has proficiency and is able to communicate in English. The Complainant is a company registered in Liechtenstein and is not familiar with the Chinese language. It is an international business which primarily operates in English. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expenses and inconvenience in having this Complaint translated into Chinese. The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or to the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the trade mark SWAROVSKI. The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case, the Complainant’s registered trade mark SWAROVSKI is the dominant portion of the Domain Name. The addition of the definite article “the” before the word SWAROVSKI does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix “.org”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its SWAROVSKI trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name and has used the Website to offer for sale purported discounted Swarovski crystal jewelry without adequately disclosing its relationship with the Complainant. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Complainant’s SWAROVSKI mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is, in the Panel’s view, evidence that the registration of the Domain Name was in bad faith. The Panel also concludes that the actual use of the Domain Name was in bad faith. Before the ISP take down, the Website bore the SWAROVSKI trade mark and offered for sale purported discounted SWAROVSKI jewellery which showed a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website and the products sold on it were authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. 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 Domain Name <theswarovski.org> be transferred to the Complainant. Karen Fong Sole Panelist Dated: August 24, 2012
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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