The Complainant is Pandora A/S of Glostrup, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Cagir Aras, Alyanschi of Istanbul, Turkey.
The disputed domain name <pandorakiss.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015
The Center appointed Steven A. Maier as the sole panelist in this matter on October 6, 2015. 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 a corporation registered in Denmark. It is a supplier internationally of jewelry including charm bracelets, rings, necklaces and earrings.
The Complainant is the owner (in some instances through its subsidiary companies) of various registrations for the trademark PANDORA. These registrations include:
- Turkey trademark number 2008/66899 for the word PANDORA with a crown device over the “O” (the “Logo”) registered in International Classes 9, 14, 18 and 25 with a protection date of September 17, 2008.
- Community Trade Mark number 000653519 for the word PANDORA registered in International Classes 22, 24, 25 and 26 with a filing date of October 14, 1997.
- United States of America trademark number 3613181 for the word PANDORA and the Logo registered in International Classes 14 and 16 with a filing date of August 9, 2007.
The disputed domain name was registered on September 14, 2013. According to the WhoIs database and the Registrar’s verification, the Registrant name is Cagir Aras and the Registrant organization is Alyanschi.
On the basis of evidence submitted by the Complainant, the disputed domain name has been used to resolve to a website at “www.pandorakiss.com”. The website was headed with the mark PANDORA including the Logo and appeared to offer jewelry for sale online.
The Complainant states that it was founded in Denmark in 1982. It established its own manufacturing base in Thailand in 1989 and began to export to North America in 2003 and elsewhere in Europe in 2004. It is listed on the NASDAQ Copenhagen stock exchange and now sells to over 90 countries through 9,600 points of sale and earned total revenue of approximately EURr 1.6 billion in 2014. It operates a principal website at “www.pandora.net” which received over 285,000 unique visitors in June 2015. As a result of all these matters, the Complainant contends that its mark PANDORA enjoys a high degree of global recognition.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that the disputed domain name comprises the entirety of its trademark PANDORA together with the generic term “kiss” which is not sufficient to negate the confusing similarity between the disputed domain name and the Complainant’s mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no affiliation with the Respondent, that it has not permitted the Respondent to use its mark PANDORA for the purpose of a domain name or otherwise and that the Respondent is not commonly known by the disputed domain name.
The Complainant exhibits screen prints from the website referred to above to which the disputed domain name has resolved. The Complainant points to the prominent use of its trademark PANDORA and the Logo on the home page of that website and contends that the website passes itself of as being connected with the Complainant. The Complainant also states that the website offers counterfeit versions of the Complainant’s products for sale. In the Complainant’s submission, this constitutes neither the use of the disputed domain name for the purposes of a bona fide offering of goods or services nor legitimate noncommercial or fair use.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith.
The Complainant states that its PANDORA trademark and brand are known internationally and that it has marketed its goods and services under the PANDORA mark since 2008, several years before the Respondent’s registration of the disputed domain name. The Complainant contends that it is clear from the Respondent’s use of the Complainant’s PANDORA trademark and the Logo for the purposes of the website that the Respondent has a familiarity with the Complainant’s brand and business. The Complainant adds that would defy common sense to believe that the Respondent coincidentally selected the disputed domain name without knowledge of the Complainant’s trademark.
The Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy). In particular, the Respondent has used the disputed domain name for the purposes of a website which uses the Complainant’s trademark and the Logo to sell counterfeit versions of the Complainant’s products.
The Complainant seeks a transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark 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.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
The Complainant has established that it has registered trademark rights in the name and mark PANDORA. The disputed domain name consists of the term “pandora” together with the terms “kiss” and the generic Top-Level Domain (“gTLD”) “.com” which is typically to be ignored for the purposes of comparison. While in the view of the Panel the name and mark PANDORA is not necessarily distinctive of the Complainant alone, the Panel finds that the Complainant’s registrations nevertheless satisfy the threshold test as to whether the Complainant has sufficient standing to bring this administrative proceeding. The Panel further finds that the addition of the generic term “kiss”, while not necessarily descriptive, is not sufficient to dispel the confusing similarity between the disputed domain name and the Complainant’s mark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel accepts the Complainant’s submissions (which are not contradicted by the Respondent) that it is not affiliated with the Respondent, that it has not authorized the Respondent to use its PANDORA name or trademark for the purposes of a domain name or otherwise and that the Respondent has not commonly been known by the disputed domain name. While these findings give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, it was open to the Respondent to file a Response making submissions as to any rights or legitimate interests that the Respondent may claim, whether on the grounds set out in paragraph 4(c) of the Policy or otherwise. However, the Respondent has not filed any such Response in this proceeding.
The Panel also accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website that passes itself off as being connected with the Complainant by prominently using the Complainant’s PANDORA mark and the Logo in connection with the sale of jewelry. Further, in the light of the Respondent’s non-response, the Panel accepts the Complainant’s submission that the goods offered on the website in question are counterfeit versions of the Complainant’s goods. The Respondent’s use of the disputed domain name in these circumstances does not amount to legitimate use of the Complainant’s trademark for the resale of the Complainant’s goods, nor does it give rise to any other rights or legitimate interests on the part of the Respondent in respect of the disputed domain name.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel repeats its findings set out above concerning the Respondent’s use of the disputed domain name. In the light of these findings and the lack of any Response on the part of the Respondent, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark PANDORA and with the intention of taking unfair advantage of the Complainant’s goodwill in that mark. The Panel further finds that, by using the disputed domain name in this manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pandorakiss.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: October 13, 2015