Westmore · UDRP DecisionSwarovskinecklace-sale.com
The Panel ordered transfer of <swarovskinecklace-sale.com>. It found the domain confusingly similar to the Complainant’s SWAROVSKI mark because the added terms “necklace-sale” did not distinguish the domain and instead increased the likelihood of confusion given the Complainant’s jewelry business. The unrebutted use of the domain for an online shop offering unauthorized SWAROVSKI-branded jewelry, without identifying independence from the Complainant, established both the absence of rights or legitimate interests and bad-faith registration and use under paragraph 4(b)(iv) of the Policy.
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Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates how adding product and sales terminology to a well-known trademark may strengthen rather than dispel confusing similarity when the added terms correspond to the trademark owner’s goods. It also shows that removing a website following an ISP complaint does not prevent a bad-faith finding where the record establishes prior commercial use designed to attract users through trademark confusion.
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. swarovskinecklace-sale.com Case No. D2014-0244 1. The Parties The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka. The Respondent is swarovskinecklace-sale.com of Munich, Germany. 2. The Domain Name and Registrar The disputed domain name <swarovskinecklace-sale.com> (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2014. On February 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 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 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 February 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2014. The Center appointed Michelle Brownlee as the sole panelist in this matter on March 27, 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 owns European Community Trade Mark Registration Nos 7462922 registered on July 21, 2009 and 3895091 registered on August 23, 2005 for the mark SWAROVSKI and registration No. 6865794 registered on February 5, 2009 for the mark SWAROVSKI and design. These registrations cover a wide variety of goods and services in every one of the International Classes. The Complainant also owns numerous registrations in many jurisdictions throughout the world for the SWAROVSKI mark. The Respondent registered the Domain Name on or about February 17, 2013. 5. Parties’ Contentions A. Complainant The Complainant uses the SWAROVSKI mark in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles and lighting industries. The Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2011, the Complainant’s products were sold in 1,218 of its own boutiques and through 1000 partner-operated boutiques worldwide. The Complainant’s approximate worldwide revenue in 2011 was EUR 2.87 billion. 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 was using the Domain Name in connection with an online shop that was advertising that it was offering SWAROVSKI branded jewelry for sale. However, the products offered on the site are not manufactured or authorized by the Complainant. The Complainant complained to the Internet service provider (“ISP”) that was hosting the Respondent’s web site at the Domain Name, and the ISP removed the website. The Complainant argues that the Domain Name is confusingly similar to its SWAROVSKI mark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that even though the Respondent’s website is no longer active, the Complainant is not in control of the Domain Name and the Respondent could upload new infringing content to the site at any time. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns rights in the SWAROVSKI trademark. The addition of the words “necklace-sale” in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s trademark. When a famous mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the famous mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions , WIPO Case No. D2007-1140 . In this case, the pairing of the Complainant’s well-known SWAROVSKI trademark with “necklace-sale” is likely to exacerbate confusion because the Complainant sells jewelry, including necklaces. Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s SWAROVSKI mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts: (i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that uses the Complainant’s trademark to attract visitors and that the Respondent is offering goods that it is misrepresenting as the Complainant’s goods when the goods are not authorized by the Complainant while having done nothing to identify itself as being independent from the Complainant. The Respondent has not refuted those allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Name has been used in connection with a web site that attracts Internet users by creating a likelihood of confusion with the Complainant’s trademark, and that the web site is offering for sale goods under the SWAROVSKI mark that have not been authorized by the Complainant while the Respondent has done nothing to identify itself as being independent from the Complainant. The Respondent did not reply to these contentions. Under the circumstances, the Panel finds that the Respondent has registered and used the Domain Name 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, <swarovskinecklace-sale.com> be transferred to the Complainant. Michelle Brownlee Sole Panelist Date: April 8, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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