Westmore · UDRP DecisionSwarovskishine.com
The Panel ordered transfer of <swarovskishine.com>. It found the domain confusingly similar to the Complainant’s SWAROVSKI trademark because it incorporated the mark in its entirety with the generic suffix “shine.” The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith was established from the Respondent’s prior involvement in similar SWAROVSKI disputes, the reputation and distinctiveness of the mark, and use of the domain for a website reproducing the Complainant’s logo and presenting itself as “Swarovski Sale US,” thereby creating confusion for commercial gain.
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This decision illustrates a straightforward application of the UDRP where a reputed trademark is reproduced in full, the additional term does not distinguish the domain, and the associated website impersonates an official sales channel. The combination of website content, lack of authorization, respondent default, and prior similar disputes supplied mutually reinforcing grounds for transfer.
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. Simon Zhang Case No. D2014-1421 1. The Parties The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka. The Respondent is Simon Zhang of Shenzhen, Guangdong Province, China. 2. The Domain Name and Registrar The disputed domain name <swarovskishine.com> 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 August 19, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 August 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2014. The Center appointed Knud Wallberg as the sole panelist in this matter on September 18, 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 major international purveyor of crystals, gemstones, and created stones. The Complainant is the owner of marks for SWAROVSKI as well as related figurative marks around the world, including in the listed country of residence of the Respondent, China. As a consequence of the extensive use, advertising, and revenue associated with its SWARVOSKI mark worldwide, the Complainant enjoys a high degree of reputation around the world, including in China. The Complainant holds several domain name registrations that include the SWAROVSKI mark, the main website being “www.swarovski.com”. The disputed domain name <swarovskishine.com> was registered on February 20, 2013. 5. Parties’ Contentions A. Complainant The Complainant contends that (i) the disputed domain name <swarovskishine.com> is identical or confusingly similar to the Complainant’s trademark; that (ii) the Complainant has not authorized any activities by the Respondent, nor any use of its trademarks and that the Respondent has no rights or legitimate interests in the disputed domain name; and that (iii) the Respondent registered and is using the disputed domain name in bad faith. The Complainant further draws attention to the fact that the Respondent has previously been ordered by other UDRP panels to transfer the domain names <swarovskishine.net> ( Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2013-1034 ), <swarovskimall-online.com> ( Swarovski Aktiengesellschaft v. Simon Zhang , WIPO Case No. D2013-1068 ), <swarovskistorellc.com> ( Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2013-1731 ) and <swarovskisave.com> ( Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2014-0583 ) to the Complainant. These domain names were all used in the same manner as the disputed domain name in this case. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the statements and documents submitted by the parties. 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 these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar The disputed domain name <swarovskishine.com> combines the Complainant’s registered trademark SWAROVSKI in its entirety with the addition of the generic term “shine”. The Panel finds that the disputed domain name <swarovskishine.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark in its entirety. The addition of the generic term “shine” as suffix to the trademark to form the disputed domain name does not, to this Panel, dispel a finding of confusing similarity. It has also long been held by UDRP panels that the generic Top-Level Domain (gTLD) suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case. The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. Given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been and is using the disputed domain name (see below in Section 6.C) does not support a finding of rights or legitimate interests. Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the Respondent’s prior involvement in very similar cases (see above under Section 5.A) but also the extent of use of the Complainant’s trademark, the reputation and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain name was registered in bad faith. The disputed domain name is used for a website which, inter alia, by reproducing the Complainant’s logo and by using the phrase “Welcome to Swarovski Sale US” clearly gives the Internet user the impression that the website is an official Swarovski website and that the Respondent is an authorised seller of Swarovski products. This is not the case, and the Panel therefore finds that the Respondent by its registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain. Noting that the disputed domain name incorporates a well-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and 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 <swarovskishine.com> be transferred to the Complainant. Knud Wallberg Sole Panelist Date: September 29, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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