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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swarovski Aktiengesellschaft v. Zhang Yulin

Case No. D2009-0947

1. The Parties

The Complainant is Swarovski Aktiengesellschaft of Liechtenstein.

The Respondent is Zhang Yulin of Shanghai the People`s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <swarovski-beads.com> is registered with 35 Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2009. On July 14, 2009, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On July 15, 2009, 35 Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. On July 21, 2009, the Center transmitted an email to the parties in Chinese and English regarding the language of the proceeding. On July 23, 2009 the Complainant submitted a request that English be the language of the proceeding. The Respondent did not file any submissions with respect to the language of the proceeding by the due date (July 28, 2009).

The Center has verified that the Complaint together with the amendment to the Complaint satisfies 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 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2009. The Respondent did not submit any formal response.

The Center appointed Sebastian Hughes as the sole panelist in this matter on September 2, 2009. 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

A. Complainant

The Complainant is a Liechtenstein company and the owner of trade mark registrations for the trade mark SWAROVSKI in China and many other countries around the world (the "Trade Mark").

The Complainant is also the owner of several domain names, including <swarovski.com> and <swarovski.net>. Both of these domain names are resolved to the Complainant`s official website, located at "www.swarovski.com" (the "Swarovski Website"). The Swarovski Website enables Internet users to access information regarding the Complainant and its merchandise, and to purchase genuine Swarovski products.

B. Respondent

The Respondent is an individual with an address in China.

The disputed domain name was registered on January 14, 2008.

5. Parties` Contentions

A. Complainant

The following facts are alleged by the Complainant in the Complaint.

A. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

Since its inception in 1895, the Complainant has manufactured and sold various crystal products under the Trade Mark, including crystal stones, crystal figurines, jewellery, and crystal beads that are used in the jewellery made and marketed by the Complainant.

The Trade Mark has been used extensively in China and many other countries around the world. The Trade Mark was held to be a "well-known mark" in China in a decision of the Beijing No. 2 People`s Intermediate Court in March 2009.

The disputed domain name completely contains the Trade Mark. The addition of the generic word "beads" does not serve to prevent confusing similarity.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use the Trade Mark in a domain name or in any other manner.

The Respondent has never been known by the disputed domain name and has no legitimate interest in the Trade Mark.

The Respondent is using the disputed domain name to misdirect Internet traffic to the Respondent`s own website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

WIPO administrative panels have stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]".

The Respondent`s advertising and sale of purported Swarovski products demonstrates that he is not making a bona fide offering of goods or services, nor does he have a legitimate interests. Furthermore, purporting to sell Swarovski products does not give the Respondent the right to register and use the Trade Mark as a domain name without the consent of the Complainant.

The Respondent`s misappropriation of the disputed domain name was no accident. Where a mark is famous and well known, it is "not one traders would legitimately choose unless seeking to create an impression of an association" with the complainant.

C. The disputed domain name was registered and is being used in bad faith

The Respondent has registered the disputed domain name in bad faith by doing so with knowledge of the Complainant`s rights in the Trade Mark. It is inconceivable that the Respondent was unaware of the Complainant`s rights in the Trade Mark. Similarly, the website to which the disputed domain name is resolved ("the Respondent`s website") offers to sell a variety of Swarovski beads such as "Swarovski Bicone Beads", "Swarovski Round Beads", and "Swarovski Cube Beads". Furthermore, the Respondent has passed himself off as "the professional supplier and wholesaler of Swarovski beads".

The Respondent`s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. "Swarovski" is not a descriptive or generic term; it is a famous and well-known trade mark.

Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent`s registration and use of the disputed domain name other than that of bad faith.

The Respondent`s method of infringement, using the Trade Mark to lure consumers to the Respondent`s website, demonstrates bad faith use under the Policy.

In addition, the Respondent`s registration and use of the disputed domain name creates "initial interest confusion", which attracts Internet users to the Respondent`s website. As a result of the Respondent`s use of the Trade Mark, users are "initially interested" in viewing the site because of its purported affiliation with the Complainant. This is further evidence of the Respondent`s bad faith registration and use of the disputed domain name.

The Respondent`s has used the Trade Mark in the disputed domain name to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy. Similarly, the Respondent has passed himself off as "the professional supplier and wholesaler of Swarovski beads" thereby creating the impression of association with the Complainant and the impression that the beads for sale on the Respondent`s website are genuine Swarovski products.

Registration of a famous mark as a domain name, by an entity that has no legitimate relationship with the mark, is itself sufficient to demonstrate bad faith.

The Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name is so "obviously indicative" of the Complainant`s products that the Respondent`s use of the disputed domain name would "inevitably lead to confusion of some sort" and cause disruption to the Complainant`s business in contravention of paragraph 4(b)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui`erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding, for the following reasons:

(1) The Complainant is a company registered in Austria and is not familiar with the Chinese language;

(2) Swarovski is an international brand with registered marks in multiple jurisdictions, including China, but whose international business primarily operates in English;

(3) The Respondent`s website displays all the contents in English and there is no version of the Respondent`s website with Chinese language content;

(4) As the Respondent has prepared and chosen to display the contents of the Respondent`s website in English (and not Chinese), the Respondent clearly has sufficient capacity to present the Respondent`s case in English, and English is clearly a language in which the Respondent communicates fluently.

The Respondent did not make any submissions with respect to the language of the proceeding by the due date.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties` ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

There is no evidence that the Respondent does not understand the English language.

The disputed domain name is an English language domain name and is not a Chinese language domain name.

The Respondent`s website is entirely in English language and makes no use of Chinese language.

No evidence has been filed to suggest that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding if English is the language of the proceeding.

The Panel finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding.

6.2 Decision

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(1) The disputed domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) 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 has rights in the Trade Mark acquired through registration and use.

The disputed domain name comprises the Trade Mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

The use of a hyphen in the disputed domain name does not serve to distinguish the disputed domain name in any way. The hyphen used in the disputed domain name should be disregarded in determining the question of confusing similarity.

The Panel finds that the designation "swarovski" is the distinctive part of the disputed domain name and the additional term "beads" does not diminish the similarity between the disputed domain name and the Trade Mark. The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(1) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(2) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(3) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent`s registration and use of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

The evidence shows that the Respondent has intentionally registered and used the disputed domain name for the purpose of attracting, for commercial gain, users to the Respondent`s website.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to rebut the Complainant`s prima facie case and to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

By virtue of the use of the Trade Mark in the disputed domain name and the promotion of various "Swarovski" beads on the Respondent`s website, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website, particularly because the Trade Mark is well-known, and it has been registered and used by the Complainant in respect of beads and similar products for many years.

The Panel also finds that the Respondent`s registration and use of the disputed domain name has caused disruption to the Complainant`s business in contravention of paragraph 4(b)(iii) of the Policy.

The failure of the Respondent to respond to the Complainant`s demand letter or to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). The Respondent has demonstrated further bad faith by sending a one line email to the Center following receipt of the Complaint offering to transfer the disputed domain name, and then failing to respond to several emails sent in response by the Complainant`s lawyers and the Center.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <swarovski-beads.com> be transferred to the Complainant.

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Sebastian Hughes
Sole Panelist

Dated: September 11, 2009