Westmore · UDRP DecisionSwarovski-singapore.net
The Panel ordered transfer of <swarovski-singapore.net>. It found the domain confusingly similar to the registered SWAROVSKI mark because it incorporated that mark as its dominant element and merely added the geographical term “Singapore.” The Respondent had no rights or legitimate interests because the Respondent was not authorized to use the mark, had used the domain for a website purporting to sell SWAROVSKI products, and provided no evidence of a bona fide offering. Bad faith was established because the Respondent knew of the mark and used the domain to attract users by trading on the Complainant’s reputation; shutting down the associated store after the Complainant’s objections did not negate the prior bad-faith use.
The timeline behind swarovski-singapore.net
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 swarovski-singapore.net — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates that appending a geographical term to a distinctive trademark may reinforce rather than dispel an apparent association with the trademark owner. It also shows that prior use of a domain for a store purporting to sell the trademark owner’s products can establish actual knowledge and support findings on both legitimate interests and bad faith. Removing the commercial website after an objection did not cure the earlier 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. Kay Kom Case No. D2014-0273 1. The Parties The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka. The Respondent is Kay Kom of Nanjing, Jiangshu, China. 2. The Domain Name and Registrar The disputed domain name <swarovski-singapore.net> 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 February 24, 2014. On February 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 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 March 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2014. The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 10, 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 is a well-known producer of crystal jewellery stones and related products for the fashion and jewellery industries. The Complainant has production facilities in 18 countries and distributes its products around the world. In 2012, the Complainant’s products were sold in 1250 of its own boutiques and 1100 partner-operated boutiques worldwide. The Complainant’s 2012 revenue was €3.08 billion. The Complainant has registered the SWAROVSKI trademark in many jurisdictions, including the following: SWAROVSKI – Chinese Registration 384001 July 30, 1987; SWAROVSKI - Chinese Characters – Chinese Registration 385013 August 30, 1989; SWAN Design – Chinese Registration 346372 April 20, 1989; SWAROVSKI – International Registration 857107 November 3, 2004; and SWAROVSKI – International Registration 1102042 October 25, 2011. The Complainant has spent substantial time, effort and money advertising and promoting the SWAROVSKI trademark and products in China, Singapore and many other countries, to the point where the SWAROVSKI mark is well-known internationally. The Complainant has registered several domain names, including: <swarovski.com> <swarovski.net> The disputed domain name <swarovski-singapore.net> was registered on December 2, 2013. At the time the Complaint was filed, the disputed domain name reverted to a parking page, but previously the disputed domain name reverted to an on-line store which sold what was purported to be SWAROVSKI branded products at a discounted price. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The Complainant submits that it owns many trademark registrations for the trademark SWAROVSKI around the world, including the following Registrations: SWAROVSKI – Chinese Registration 384001 July 30, 1987; SWAROVSKI - Chinese Characters – Chinese Registration 385013 August 30, 1989; SWAN Design – Chinese Registration 346372 April 20, 1989; SWAROVSKI – International Registration 857107 November 3, 2004; and SWAROVSKI – International Registration 1102042 October 25, 2011. The Complainant contends that the disputed domain name <swarovski-singapore.net> is confusingly similar to the Complainant’s registered trademark SWAROVSKI. The addition of the geographical name or indicator “Singapore” and the addition of a hyphen between the SWAROVSKI trademark and the word “Singapore” does not distinguish the disputed domain name from the Complainant’s famous SWAROVSKI trademark. Rights and Legitimate interests The Complainant contends that the Respondent was never authorized or licensed to use the Complainant’s SWAROVSKI trademark. The Respondent is not commonly known by that name. The Complainant submits that the use of a confusingly similar trademark in association with an on-line store which sells products allegedly bearing the SWAROVSKI trademark at a discounted price does not demonstrate a bona fide offering of goods and services. Registered and Used in Bad Faith The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s famous SWAROVSKI trademark. The Respondent registered and is using the disputed domain name to interfere with the Complainant’s business and is attempting to trade on the goodwill of the Complainant’s reputation. The fact that the Respondent, after receiving the Complainant’s cease and desist letter, removed the on-line store and reverted the disputed domain name to a parking page does not serve to diminish or eliminate bad faith. The Respondent maintains control over the disputed domain name and at any time can upload content and reopen the on-line store. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar The Panel finds that the Complainant owns registered trademark rights in the trademark SWAROVSKI by virtue of the trademark registrations listed in paragraph 4 above. The Panel further finds that the domain name <swarovski-singapore.net> is confusingly similar to the Complainant’s registered trademark SWAROVSKI. The disputed domain name contains as a first and dominant element the Complainant’s trademark SWAROVSKI, which is a unique word, combined with the georgraphical term “Singapore”. The addition of the word “Singapore” does not serve to distinguish the disputed domain name; rather it suggests a specific location attached to the trademarked term. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds, on the evidence filed, that the Complainant’s trademark has a substantial reputation worldwide, and as such the Respondent must have been aware of the Complainant’s trademark rights in the SWAROVSKI trademark. The fact that the disputed domain name at one time reverted to a website that purported to sell SWAROVSKI products, is clear evidence that the Respondent did know about the Complainant’s trademark rights. The Respondent was never authorized or licensed to use the Complainant’s trademark. In the absence of any response, the Panel concludes that the Respondent was not using the disputed domain name in association with a bona fide offering of goods and services. Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Policy was designed to protect trademark owners from this type of abusive registration. The Respondent was clearly aware of the Complainant’s trademark when he registered and used the disputed domain name. The Respondent clearly intended to attract users to his website through the unauthorized use of the SWAROVSKI trademark as the primary element of his domain name. The fact that the associated website has now been shut down, as a result of Complainant’s objections, does not diminish the fact that Respondent did use the domain name with an intention to trade on the Complainant’s reputation. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith. The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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, <swarovski-singapore.net> be transferred to the Complainant. Christopher J. Pibus Sole Panelist Date: April 24, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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