Swarovski Aktiengesellschaft v. Peter D Person
Claim Number: FA1406001563094
Complainant is Swarovski Aktiengesellschaft (“Complainant”), represented by Ali Tyebkhan of LegalBase (Pvt) Limited, Liechtenstein. Respondent is Peter D Person (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swarovskicrystal.us>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2014; the National Arbitration Forum received payment on June 6, 2014.
On June 5, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <swarovskicrystal.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 10, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) Rules for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy, "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Swarovski Aktiengesellschaft, 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.
ii. Complainant owns a trademark registration with China’s State Administration for Industry and Commerce (“SAIC”) for the SWAROVSKI mark (Reg. No. 384,001, registered July 30, 1987).
iii. The disputed domain name is confusingly similar to Complainant’s SWAROVSKI mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent has never been known by the disputed domain name.
iii. Respondent offers purported SWAROVSKI products for sale at the infringing website.
i. Respondent has registered and is using the disputed domain name in bad faith.
ii. Respondent is using the disputed domain name to disrupt Complainant’s business.
iii. Respondent is using the disputed domain name to attempt to attract consumers for commercial gain by purporting to sell SWAROVSKI products.
iv. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the SWAROVSKI mark.
Respondent registered the <swarovskicrystal.us> domain name on February 8, 2014.
1. Respondent’s <swarovskicrystal.us> domain name is confusingly similar to Complainant’s SWAROVSKI mark.
2. Respondent does not have any rights or legitimate interests in the <swarovskicrystal.us> domain name.
3. Respondent registered or used the <swarovskicrystal.us> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant alleges that it 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. Complainant contends that it owns a trademark registration with China’s SAIC for the SWAROVSKI mark (Reg. No. 384,001, registered July 30, 1987). See Complainant’s Exhibit C. The Panel finds that because Respondent appears to reside in China, Complainant’s registration of the SWAROVSKI mark with China’s SAIC shows that it has valid rights in the mark under Policy ¶ 4(a)(i). See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <swarovskicrystal.us> domain name is confusingly similar to Complainant’s SWAROVSKI mark. The Panel notes that Respondent includes Complainant’s SWAROVSKI mark in its entirety and merely adds the descriptive word “crystal.” The Panel determines that Respondent’s addition of a descriptive term is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel observes that Respondent adds the country-code top-level domain (“ccTLD”) “.us” to its disputed domain name. The Panel finds that Respondent’s inclusion of a ccTLD does not negate a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <swarovskicrystal.us> domain name is confusingly similar to Complainant’s SWAROVSKI mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that, in order to demonstrate rights and legitimate interest, Policy ¶ 4(a)(i) provides four elements that a respondent may satisfy: (i) a respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; or (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel concludes that no evidence exists on the record to demonstrate that Respondent owns any service marks or trademarks that reflect the <swarovskicrystal.us> domain name. Accordingly, the Panel finds that Respondent does not possess rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).
Complainant asserts that Respondent has never been known by the <swarovskicrystal.us> domain name. Complainant argues that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the SWAROVSKI mark in a domain name or in any other manner. The Panel observes that the WHOIS record lists the registrant of the disputed domain name as “Peter D Person.” See Complainant’s Exhibit A. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel holds that Respondent is not commonly known by the <swarovskicrystal.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant urges that Respondent offers purported SWAROVSKI products for sale at the infringing website. The Panel notes that Respondent’s disputed domain name leads consumers to a website purporting to sell Complainant’s jewelry products or counterfeit versions of Complainant’s jewelry products. See Complainant’s Annex G. The Panel finds that Respondent is using the disputed domain name to sell Complainant’s products or products that compete with Complainant’s products. The Panel holds that Respondent is not using the <swarovskicrystal.us> domain name in connection with a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant alleges that Respondent is using the <swarovskicrystal.us> domain name to disrupt Complainant’s business. The Panel observes that Respondent’s disputed domain name leads to a website offering Complainant’s jewelry products or counterfeit versions of Complainant’s jewelry products for sale. See Complainant’s Annex G. Past UDRP panels have held that a respondent’s use of a domain name to sell a complainant’s products or counterfeit versions of a complainant’s products shows bad faith disruption under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Thus, the Panel finds that Respondent has registered and is using the <swarovskicrystal.us> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent is using the <swarovskicrystal.us> domain name to attempt to attract consumers for commercial gain by purporting to sell SWAROVSKI products. The Panel notes that Respondent uses the disputed domain name to mislead and attract Internet users to a website that purports to sell Complainant’s jewelry products or counterfeit versions of Complainant’s jewelry products. See Complainant’s Annex G. The Panel observes that Respondent may commercially benefit through its use of the website to sell similar or counterfeit products. Accordingly, the Panel holds that Respondent is using the <swarovskicrystal.us> domain name in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant argues that Respondent registered the <swarovskicrystal.us> domain name with knowledge of Complainant’s rights in the SWAROVSKI mark, evidenced by Complainant’s trademarks in China, the USA, and worldwide. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s inclusion of the descriptive term “crystal” in the domain name and Respondent’s use of the domain name to sell Complainant’s products, Respondent had actual knowledge of the SWAROVSKI mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <swarovskicrystal.us> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swarovskicrystal.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 15, 2014
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