The Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America represented by Lathrop & Gage L.C., United States of America.
The Respondents are Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America and naiyang ren of Shanghai, People’s Republic of China (the “Respondent”).
The disputed domain name <pandoraforyou.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2010. On November 1, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On November 1, 2010, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2010, providing the registrant and contact information disclosed by eNom, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2010.
The Center verified that the Complaint together with the amendment to 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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on December 3, 2010. 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 Complainant is the distributor in the United States of America of jewelry designs created by artisans of the Complainant’s affiliated companies in Denmark. The Complainant claims that it has, together with its affiliated companies, created a distinctive, unique series of, inter alia, beads, spacers, clips, bracelets and necklaces which are original works of art that capture the “expressive spirit of Scandinavian design”. The jewelry system was first developed in Denmark in 1999 and first marketed outside of the United States of America by an affiliated company in the year 2000. Jewelry bearing the PANDORA trade mark is sold in the primary geographical segments of Europe, the United States of America and Asia Pacific. The Complainant was first formed on January 1, 2003, and there are currently thousands of retailers in the United States of America and worldwide that carry this line of jewelry products.
The Complainant and/or its affiliated companies are the owners of various trade marks incorporating the word “PANDORA” (the “PANDORA marks”). Details of several registrations of the PANDORA marks (which include the mark PANDORA JEWELRY) were provided in the Complaint, namely registrations in the United States of America, Mexico, Japan and Canada. The Complainant also claims that extensive advertising and marketing of jewelry products under the PANDORA marks have been undertaken, including through its websites at “www.pandora-jewelry.com” and “www.pandora.net”. Sales of Pandora jewelry products have exceeded USD 200 million in the United States of America, and nearly twice as much worldwide.
The Complainant asserts that the distribution of Pandora jewelry products is carefully controlled through the selection of authorized retailers and franchisees. The Respondent is not an authorized retailer, yet its home page at the disputed domain name allows customers to link to pages within the website for “Pandora Necklaces”, “Pandora Bracelets”, “Pandora Beads”, “Pandora Bangles”, and “Pandora Packages”. The Complainant asserts that the products sold on the Respondent’s website are counterfeit. The Respondent also imitates the overall look and feel of the Complainant’s affiliated company’s website at “www.pandora.net”. It copies the layout, the PANDORA marks in stylized form, and the Complainant’s copyrighted images.
The disputed domain name was registered on February 9, 2010.
A cease and desist letter was sent to Whois Privacy Protection Service, Inc. on July 15, 2010 by the Complainant’s representative in these proceedings.
The Complainant asserts, firstly, that the disputed domain name is confusingly similar to the Complainant’s PANDORA trade marks, in which it has rights. The disputed domain name contains the entire PANDORA trade marks. Numerous UDRP panelists have held that the addition of a descriptive or non-distinctive matter to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of “foryou” and the generic top-level domain “.com” to the PANDORA marks therefore does not prevent the confusing similarity.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name:
(i) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is relying on consumers’ recognition of the Complainant’s PANDORA marks to attract consumers to its own website which uses the Complainant’s PANDORA marks without license or authorization in order to sell counterfeit goods.
(ii) There is no bona fide offering of goods or services by the Respondent. The Respondent’s misappropriation of another’s trade mark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondent.
(iii) The use of the Complainant’s trade mark in this case is infringing and cannot therefore be considered bona fide use. It is also unfair competition as it misleads and confuses customers as to the source or origin of the information and products found on the Respondent’s website. These actions of the Respondent will lead consumers to mistakenly believe that the Complainant is the source of the Respondent’s counterfeit jewelry products or that the Respondent’s website is affiliated with, operated by and/or sponsored by the Complainant.
(iv) The Respondent is not, and has never been commonly known by the disputed domain name. There is no evidence of the Respondent doing business under the name “pandoraforyou.com” at any time prior to February 9, 2010.
(v) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is, instead, trading on the Complainant’s goodwill and is using the disputed domain name to offer and promote counterfeit goods. The Respondent is in no way connected with the Complainant and is trading on the Complainant’s Pandora marks for commercial gain, all to the detriment of consumers and the Complainant.
(vi) The Respondent is wrongly seeking to capitalize on the positive reputation associated with the Complainant’s PANDORA marks in the marketplace.
Thirdly, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. This is demonstrated by the following facts:
(a) The Respondent’s purpose in registering the disputed domain name which incorporates the Complainant’s PANDORA marks in its entirety is to capitalize on the reputation of the Complainant’s PANDORA marks by diverting Internet users seeking jewelry products under the Complainant’s PANDORA marks to the Respondent’s website, whereby consumers may purchase counterfeit goods offered and sold under the PANDORA marks.
(b) The Complainant started promoting its PANDORA marks through extensive advertising and marketing well before the registration of the disputed domain name. Together with its affiliated companies, the Complainant enjoys a worldwide reputation for its Pandora jewelry products.
(c) There is no relationship between the Complainant and the Respondent.
(d) The Complainant has not given the Respondent permission to use its PANDORA marks in a domain name, or to use it in any manner on the Respondent’s website. Such unauthorized use suggests opportunistic bad faith.
(e) Apart from the use of the PANDORA marks on its website and placing the PANDORA marks on the Respondent’s own counterfeit products, the Respondent also used the Complainant’s copyrighted images and imitates the overall look and feel of the Complainant’s own website. This further demonstrates that the Respondent was well aware of the Complainant and its marketing and advertisements.
(f) The Respondent’s failure to respond to the Complainant’s cease and desist letter constitutes another basis to infer bad faith in the registration and use of the disputed domain name.
(g) The Respondent has knowingly attempted to attract Internet users to the Respondent’s website for financial gain by intentionally creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the goods offered or promoted through the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the PANDORA marks, through registrations of the trade mark and use, in respect of jewelry products.
As to whether the disputed domain name is confusingly similar to the Complainant’s PANDORA marks, it is well-established in previous UDRP decisions that the generic top level domains such as “.com”, “.org”, “.net”, etc., are to be disregarded. The Panel also accepts as correct the general principle established by numerous earlier UDRP decisions that the addition of a generic or descriptive word to a third party’s trade mark generally does not prevent the confusing similarity. In this instance, the element “foryou” in the disputed domain name is descriptive and does not serve to remove the confusing similarity, especially since the products sold on the website are for personal use or to be bought as gifts.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
The Respondent did not file any Response and in failing to take advantage of the opportunity presented to show that it has rights or legitimate interests in the disputed domain name, so the Panel makes an appropriate inference. The Panel finds that there is prima facie evidence that has been presented by the Complainant that there are no rights or legitimate interests on the part of the Respondent in the disputed domain name. Apart from the fact that the Respondent has not been licensed nor authorized by the Complainant to use the PANDORA marks, or to register and use the disputed domain name, the sale of apparent counterfeit PANDORA jewelry products on the Respondent’s website is evidence of the absence of any right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy cites examples of four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 the 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 respondent’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 trade mark 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 its web site 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 the respondent’s web site or location or of a product or service on respondent’s web site or location
It is clear that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and to attract, for commercial gain, Internet users to its website or other on-line location or websites, with the deliberate intention of creating confusion with the Complainant’s PANDORA marks. Further, the registration and use of the disputed domain name for the purpose of selling apparent counterfeit PANDORA jewelry products cannot by any means constitute good faith use or registration.
Hence, the Panel is convinced that the disputed domain name has been registered and used in bad faith. Accordingly, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <pandoraforyou.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: December 9, 2010