ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. liu ji
Case No. D2011-0353
1. The Parties
Complainant is Swarovski Aktiengesellschaft of Liechtenstein represented by Ali LegalBase (Pvt) Limited of
Sri Lanka.
Respondent is liu ji of People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <swarovski-crystal.org> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
February 23, 2011. On February 23, 2011, the Center transmitted by email to Todaynic.com, Inc. a request
for registrar verification in connection with the disputed domain name. On February 24, 2011, Todaynic.com,
Inc. transmitted by email to the Center confirming that the Respondent is listed as the registrant and
providing the contact details but not responding to the other verification requests. On February 24, 2011, the
Center transmitted to Todaynic.com, Inc. a further email asking that Todaynic.com, Inc. respond to the
additional items included in the verification request. On February 24, 2011, Todaynic.com, Inc. responded to
the further email confirming that the UDRP applies to the domain name, confirming that the domain name
would be locked, and requesting clarification regarding information needed concerning the registration
agreement. On February 28, 2011, the Center sent an email to Todaynic.com, Inc. requesting that
Todaynic.com, Inc. confirm the language of the registration agreement. On March 1, 2011, Todaynic.com,
Inc. responded to the Center’s email asking whether a copy of the agreement was required. On
March 3, 2011, the Center sent an email to Todaynic.com, Inc. confirming that a copy of the agreement was
not required and asking Todaynic.com, Inc. to confirm the language of the registration agreement. On
March 3, 2011, Todaynic.com, Inc. sent an email to the Center confirming that the language of the
registration agreement is Chinese.
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”).
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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 9, 2011. In accordance with the Rules, paragraph
5(a), the due date for Response was March 29, 2011. The Respondent did not submit a response.
Accordingly, the Center notified the Respondent’s default on March 30, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 5, 2011. 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.
The Complaint was submitted in the English language. According to the response received from the
Registrar, the language of the registration agreement for the disputed domain name is Chinese. On
March 3, 2011, the Center transmitted by e-mail to both parties a communication regarding the language of
the proceeding requesting that Complainant provide reasoning by March 6, 2011 as to why the proceedings
should be conducted in English. This communication also invited Respondent to submit comments in
response to any communication transmitted by Complainant regarding the language of the proceedings by
March 8, 2011. On March 3, 2011, Complainant responded to the Center’s communication requesting that
English be recognized as the language of the administrative proceedings. No communication in objection to
this request was submitted by Respondent. On March 9, 2011, the Center issued a communication
confirming that the Complaint was accepted in the English language and offered the Respondent the
opportunity to reply in the English or Chinese both languages. Since no reply was submitted by Respondent
and the present circumstances do not include a prejudice to the Respondent, this decision is written in the
English language.
4. Factual Background
Complainant is based in Liechtenstein and is a producer of cut crystal, gemstones, and other decorative
items. Complainant has provided details of its European Community and International registrations for its
SWAROVSKI mark, its Swan device mark, and its crystallized mark which cover a broad range of goods and
services. Complainant has also provided copies of registration certificates corresponding to its trademarks in
China including Registration No. 384001 for SWAROVSKI registered on July 30, 1987, Registration No.
385013 for SWAROVSKI (in Chinese) registered on August 30, 1989, Registration No. 361346 for
SWAROVSKI (in Chinese) registered on September 20, 1989, and Registration No. 3520173 for
SWAROVSKI Design (in English and Chinese) registered on November 7, 2004. Complainant also owns
domain names incorporating its SWAROVSKI trademark including <swarovski.com> and <swarovski.net>,
which were created on January 11, 1996 and April 16, 1998, respectively.
Respondent liu ji created the <swarovski-crystal.org> domain name on January 23, 2010.
5. Parties’ Contentions
A. Complainant
Complainant claims to be the world’s leading producer of cut crystal, genuine gemstones, and created
stones and claims to have production facilities in 19 countries, distribution to 43 countries, and a presence in
over 120 countries. Complainant estimates that its 2009 worldwide revenue was EUR2.25 billion.
Complainant claims to advertise its SWAROVSKI trademark worldwide and throughout China, and has
provided a copy of a 2010 article from Fashion Wear Today announcing its use of a Chinese fashion model
as an ambassador for its goods in China as evidence of its notoriety in this jurisdiction. Complainant has
also provided a copy of a 2009 judgment issued by the Beijing high court confirming that its marks are wellknown and have a reputation among consumers in China. In addition to these materials, Complainant has
provided copies of an article from “In Style” magazine in the United Kingdom of Great Britain and Northern
Ireland and a “Newswire” press release concerning the use of its goods in recent motion pictures as
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evidence of promotion of the goods sold under the SWAROVSKI mark and the public’s association of the
SWAROVSKI mark with these goods.
Complainant has provided an example of a webpage featured on the disputed domain name
<swarovski-crystal.org> which appears to be a domain name registry holding page featuring links to external
websites. Complainant claims that the use of its SWAROVSKI trademark in the disputed domain name will
lead to initial interest confusion and diversion of web traffic from its <swarovski.com> and <swarovski.net>
domain names. Additionally, Complainant maintains that the addition of the term “crystal” to its trademark in
the disputed domain name does not lessen the confusing similarity between the domain name and
Complainant’s SWAROVSKI trademark because the term “crystal” is generic and relates to the goods
produced by Complainant. Finally, Complainant affirms that there is no connection or affiliation between
Respondent and Complainant, and that Respondent has not received a license or consent to use
Complainant’s trademarks in any manner.
Complainant alleges that Respondent has a history of registering infringing domain names relating to
registered trademarks and has provided numerous examples of domain name registrations held by
Respondent found through reverse WhoIs searches, including other domain names incorporating
Complainant’s SWAROVSKI trademark. Furthermore, Complainant maintains that it is inconceivable that
Respondent was unaware of Complainant’s rights when registering the <swarovski-crystal.org> domain
name given that the SWAROVSKI trademark is famous and well-known.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel has reviewed the Complaint and annexes to the Complaint. The Panel’s findings are set forth
below.
A. Identical or Confusingly Similar
The disputed domain name <swarovski-crystal.org> includes Complainant’s SWAROVSKI trademark in its
entirety. The question is whether the inclusion of the term “crystal” in the disputed domain name creates a
sufficiently different impression from the SWAROVSKI trademark as a whole.
The Panel is not entirely convinced that the term “crystal” is necessarily a generic term in contexts. Because
the term “crystal” may have more than one definition, for this Panel its meaning would not be immediately
apparent when viewed alone. However, the use of “crystal” with Complainant’s SWAROVSKI trademark as
featured in the disputed domain name <swarovski-crystal.org> has a descriptive function given that crystal is
provided under Complainant’s SWAROVSKI trademark. Prior cases have held that the addition of a
descriptive term to a distinctive trademark such as SWAROVSKI does not create a domain name which is
distinguishable from the trademark. See, e.g., Nintendo of America, Inc v. Gray West International, WIPO
Case No. D2000-1219 (holding that the addition of “-games” to the domain name <pokemon-games.com>
did nothing to reduce confusing similarity with the POKEMON trademark) and Diageo Brands B.V., Diageo
North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case
No. D2004-0627 (Holding that domain names including <gilbeys-vodka.com>, <gordonsvodka.com>, and
popov-vodka.com> were confusingly similar to the GILBEYS, GORDONS, and POPOV trademarks in which
complainant had established rights because the word “vodka” is descriptive of the goods offered by
complainant under these marks).
Based on the descriptive characteristics of the term “crystal” when combined with Complainant’s established
SWAROVSKI trademark, the Panel finds that Complainant has satisfied the requirements of paragraph
4(a)(i) of the Policy.
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B. Rights or Legitimate Interests
Complainant has provided ample evidence of its established rights in the SWAROVSKI trademark including
registrations issued by the European Community, International, and China trademark offices. A review of
trademark office records and the annexes to the complaint indicate that Complainant has rights in its
SWAROVSKI dating back to 1965 and established rights in the mark in the People’s Republic of China, the
jurisdiction identified in Respondent’s contact information, as early as 1987. Additionally, Complainant has
provided evidence of its Chinese registration for the SWAROVSKI word mark and other trademarks in China
incorporating the Chinese language version of the SWAROVSKI trademark which were registered in 1989
and 2004. Complainant’s <swarovski.com> and <swarovski.net> domain names were created on
January 11, 1996 and April 16, 1998, respectively.
The disputed domain name <swarovski-crystal.org> was created on January 23, 2010. Complainant’s
trademark rights in SWAROVSKI precede this domain name registration. Additionally, Complainant’s
domain names <swarovski.com> and <swarovski.net> were created prior to the disputed domain name.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s
SWAROVSKI trademark, that Respondent is associated or affiliated with Complainant, or that Respondent
has any other rights or legitimate interests in the term “swarovski”. As such, the Complainant has made out
its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the
Policy.
C. Registered and Used in Bad Faith
Respondent’s contact address is located in the People’s Republic of China. Complainant has provided a
copy of a decision issued by a Chinese court which acknowledges that the SWAROVSKI trademark is wellknown and recognized by consumers in this jurisdiction. Based upon the distinctiveness of Complainant’s
SWAROVSKI trademark and the established notoriety of the trademark, it is difficult to believe that
Respondent was unaware of Complainant’s business when registering the disputed domain name
<swarovski-crystal.org>. Any doubt in favor of Respondent is further minimized when considering
Respondent ‘s use of the term “crystal” in the domain name, a term descriptive of goods provided by
Complainant under its well-known SWAROVSKI trademark.
The webpage submitted with the Complaint features a passive registrar holding page with links to third party
websites which was at one time featured at <swarovski-crystal.org>. There is no evidence in the record to
indicate that Respondent has used the <swarovski-crystal.org> domain name to promote a bona fide intent
to offer goods or services. The only evidence of use of the domain name is for the passive registrar holding
page submitted with the Complaint. As established in Telstra Corporation Limited v. Nuclear Marshmallows
(WIPO Case No. 2000-0003), the passive holding of a domain name following its bad faith registration can
satisfy the requirements of paragraph 4(a)(iii) if the circumstances of the Respondent’s behavior are
indicative of bad faith. In this case, Respondent has registered a domain name composed of a distinctive
and well-known trademark and a term descriptive of the goods provided under that trademark. Moreover,
there is evidence in the record indicating that Respondent has registered similarly composed domain names.
The Panel is of the opinion that Respondent’s pattern of domain name registration behavior is indicative of
bad faith regardless of whether the use is active or passive. Additionally, a simple Internet search for
“Swarovski crystal” illustrates that the two terms are commonly used in reference to Complainant’s products,
indicating that registration and use of the disputed domain name <swarovski-crystal.org> has the potential to
divert web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names regardless of the
content featured on the associated website.
Having considered the Complaint and related materials, the Panel finds it difficult to imagine a scenario
where Respondent’s use of the domain name could coexist with Complainant’s trademarks and domain
names without consumer confusion given the well-known status of Complainant’s SWAROVSKI trademark
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and the common use of Complainant’s trademark with the term “crystal” in reference to Complainant’s
goods. Furthermore, Respondent’s pattern of registration of similar domain names contributes to a finding of
bad faith. Finally, Respondent’s lack of any legitimate commercial or fair use of the domain name support a
finding in Complainant’s favor. This Panel notes that prior panels have found for complainants in similar
scenarios involving well-known marks and passive domain names, See, e.g., Pizza Hut, Inc. v. RJ, Inc.,
WIPO Case No. D2000-0939 (finding bad faith given that respondent had not made, nor taken any
preparatory steps to make, any legitimate commercial or fair use of the domain name) and Harrods Limited
v. Surrinder Gill, WIPO Case No. D2003-0243 (finding bad faith, noting that it was difficult to see how the
trademark could have been registered and used in good faith given its reputation).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the
Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the domain name <swarovski-crystal.org> be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: April 19, 2011