Swarovski Aktiengesellschaft v. ailong c ailong xiong
Claim Number: FA1407001571172
Complainant is Swarovski Aktiengesellschaft (“Complainant”), represented by Ali Tyebkhan of LegalBase (Pvt) Limited, Sri Lanka. Respondent is ailong c ailong xiong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swarovski-sales.us>, registered with WEB COMMERCE COMMUNICATIONS, LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2014; the National Arbitration Forum received payment on July 25, 2014.
On July 23, 2014, WEB COMMERCE COMMUNICATIONS, LTD. confirmed by e-mail to the National Arbitration Forum that the <swarovski-sales.us> domain name is registered with WEB COMMERCE COMMUNICATIONS, LTD. and that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS, LTD. has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS, LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swarovski-sales.us. Also on July 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "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.
A. Complainant makes the following assertions:
1. Respondent’s <swarovski-sales.us> domain name, the domain name at issue, is confusingly similar to Complainant’s SWAROVSKI mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the SWAROVSKI mark in connection with crystal goods. The mark has been registered with both China’s State Administration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 384,001 registered July 30, 1987) and the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,402,230 registered Nov. 7, 2000). The <swarovski-sales.us> domain name is confusingly similar because the term “sales” and the country-code top-level domain (“ccTLD”) “.us” are not sufficient changes to differentiate this domain name from the mark.
Respondent has no rights or legitimate interests in this domain name. First, Respondent has never been commonly known by this disputed domain name. Second, Respondent is making an unauthorized promotion of goods bearing the SWAROVSKI mark through the domain name’s website.
Respondent registered or used the domain name in bad faith. First, Respondent is capitalizing on a likelihood of confusion because Internet users who visit the domain name’s website may be initially confused as to Complainant’s association with the goods sold on the website—goods falsely bearing the SWAROVSKI mark. Finally, Respondent had notice of Complainant’s SWAROVSKI mark when registering the domain name, as noted by Respondent’s sale of counterfeit or unauthorized goods on the domain name’s website. The <swarovski-sales.us> domain name was registered April 29, 2014.
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.”).
Complainant uses the SWAROVSKI mark in connection with crystal goods. Complainant evidences that the mark has been registered with both China’s SAIC (e.g., Reg. No. 384,001 registered July 30, 1987) and the USPTO (e.g., Reg. No. 2,402,230 registered Nov. 7, 2000). The mark is protected under Policy ¶ 4(a)(i) based on these registrations. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
The <swarovski-sales.us> domain name is confusingly similar because the term “sales” and the ccTLD “.us” are not sufficient changes to differentiate this domain name from the mark. The changes to this mark: the hyphen, term “sales,” and “.us,” illustrate the domain name’s Policy ¶ 4(a)(i) confusing similarity. See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
There is no evidence that Respondent has ever held rights to a mark identical or similar to the <swarovski-sales.us> domain name. As such, Respondent cannot claim to have rights in the mark 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 the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Respondent has never been commonly known by this disputed domain name. The Panel notes that “ailong c” is the listed registrant of record in the domain name’s WHOIS information. In Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013), the panel found no basis for finding a respondent to be known as a given domain name under Policy ¶ 4(c)(ii) when the record was scant of any evidence suggesting otherwise. Here, Respondent has never been commonly known by the domain name under Policy ¶ 4(c)(iii).
Respondent is making an unauthorized promotion of goods bearing the SWAROVSKI mark through the domain name’s website. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel found that the unauthorized resale of Complainant’s goods (counterfeit or otherwise) is neither a Policy ¶ 4(c)(i) bona fide, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Thus, the Panel finds that Respondent’s e-store selling goods under the SWAROVSKI mark is not protectable under Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is capitalizing on a likelihood of confusion because Internet users who visit the <swarovski-sales.us> domain name’s website may be initially confused as to Complainant’s association with the goods sold on the website—goods falsely bearing the SWAROVSKI mark. The Panel notes the domain name resolves to a website purporting to offer off SWAROVSKI-marked goods. Respondent’s bad faith is apparent in that Respondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate SWAROVSKI goods. See 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). Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Finally, Respondent had notice of Complainant’s SWAROVSKI mark when registering the <swarovski-sales.us> domain name, as noted by Respondent’s sale of counterfeit or unauthorized goods on the domain name’s website. Accordingly, the Panel finds that Respondent actually knew of Complainant’s rights in the mark and Respondent is liable for bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swarovski-sales.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 5, 2014
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