WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pandora Jewelry, LLC v. WhoisGuard / Xiong Mao, fcg Case No. D2009-1096 1. The Parties
Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage L.C. of United States of America.
Respondent is WhoisGuard of California, United States of America; Xiong Mao, fcg of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009. On August 14, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 14, 2009, eNom 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 Complainant on August 18, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 20, 2009. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 16, 2009.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 22, 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
The following facts and circumstances are un-contested:
- Complainant is the distributor in the United States of jewelry designs created by artisans of affiliated companies in Denmark. Complainant's ultimate corporate parent sells Pandora jewelry products in Europe, the United States, and Australia/Asia. Pandora's jewelry system was first developed in Denmark in 1999, and first marketed outside the United States by an affiliated company of Complainant in 2000. Complainant was first formed in the United States on January 1, 2003 in order to sell Pandora jewelry. There are currently thousands of retailers in the United States that carry Complainant's jewelry products under the PANDORA mark.
- Pandora or its affiliated companies is/are the owner(s) of several trademarks incorporating the term “pandora”, including the following:
- United States Trademark Registration No. 3,065,374 covering Pandora's trademark PANDORA JEWELRY (stylized) for “jewelry” in Class 14, having a first use in commerce date of May 2004 and a registration date of March 7, 2006.
- United States Trademark Registration No. 3,640,357 covering Pandora's trademark PANDORA UNFORGETTABLE MOMENTS (stylized with Design) for “jewelry” in Class 14 and “pamphlets, brochures, catalogs in the field of jewelry; paperboards; non-textile paper labels; paper and plastic packaging bags; advertisement poster boards of paper and cardboard” in Class 16, having a first use in commerce date of June 2008 and a registration date of June 16, 2009.
- United States Trademark Registration No. 3,613,181 covering Pandora's trademark PANDORA (stylized with Design) for “jewelry” in Class 14 and “pamphlets, brochures, catalogs in the field of jewelry; paperboards; non-textile paper labels; paper and plastic packaging bags; advertisement poster boards of paper and cardboard” in Class 16, having a first use in commerce date of June 2008 and a registration date of April 28, 2009.
- Canadian Trademark Registration No. 707,735 covering Pandora's trademark PANDORA JEWELRY (stylized) for “jewelry” in Class 14, having a filing date of September 24, 2004 and a registration date of February 19, 2008.
- Mexican Trademark Registration No. 888,612 covering Pandora's trademark PANDORA JEWELRY (stylized) in Class 14, having a filing date of March 4, 2005 and a registration date of June 27, 2005.
- Japanese Trademark Registration No. 5037381 covering Pandora's trademark PANDORA JEWELRY (stylized) in Class 14, having a filing date of October 15, 2004 and a registration date of March 30, 2007.
- Pandora and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA mark, through the web site at “”; nationally broadcast television and radio commercials; advertisements in newspapers and magazines of national circulation.
- Pandora and its affiliated companies' sales of the Pandora jewelry products have exceeded two hundred million dollars in the United States and nearly twice as much worldwide. Further, Pandora jewelry products are sold through more than 8,000 outlets worldwide. Pandora is the owner of United States Patent Number 7,007,507, entitled “Necklaces and Bracelets with Keepers” and issued to Pandora on March 7, 2006. This patent is directed to a strand jewelry device and a process of reversibly restricting the movement of ornaments on strands.
- Complainant's sister company, Pandora Production Co. Ltd. is the sole manufacturer of all Pandora jewelry products worldwide, and operates its own production facility. Complainant and its affiliated companies control the distribution of these products through selection of authorized retailers.
- On July 20, 2009, Respondent registered the disputed domain name.
- On July 28, 2009, Pandora, through its counsel, sent a letter via e-mail to Respondent's address indicated in the WhoIs record for the disputed domain name as of July 28, 2009, and to the e-mail address located by an investigator. On July 29, 2009, a confirmation copy was sent via facsimile to the number listed in the WhoIs record. In the July 28 communication, Pandora's counsel advised Respondent that the registration and use of the disputed domain name infringes Pandora's trademark rights in the PANDORA mark and requested that Respondent transfer the disputed domain name to Pandora. 5. Parties' Contentions A. Complainant
In its Complaint, Complainant contends the following:
- The disputed domain name is confusingly similar to a mark in which Complainant has rights. The disputed domain name contains the entire PANDORA mark of Complainant. The addition of the term “yes” and the generic top level domain “.com” to the PANDORA mark does not prevent the likelihood of confusion.
- Respondent has no rights or legitimate interests in the domain name. Respondent has not used the domain name for a bona fide offering of goods or services. Respondent has not been commonly known by the domain name. There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Respondent is trading on Complainant's goodwill and is using the disputed domain name to offer and promote counterfeit goods without authorization from Complainant. Such activity does not represent a bona fide offering of goods or services.
- Respondent's bad faith in registering and using the domain name is demonstrated by numerous facts: Respondent's purpose in registering the disputed domain name which incorporates Complainant's PANDORA mark in its entirety is to capitalize on the reputation of Complainant's PANDORA mark by diverting Internet users seeking jewelry products under Complainant's PANDORA mark to Respondent's own web site where consumers may purchase counterfeit goods offered and sold under the PANDORA mark. There exists no relationship between Respondent and Complainant. Complainant has not given Respondent permission to use its PANDORA mark in a domain name, or to use it in any manner whatsoever on Respondent's web site or otherwise. The only reasonable conclusion is that Respondent was aware of the PANDORA mark, but refuses to relinquish ownership of the disputed domain name incorporating Complainant's PANDORA mark in its entirety or cease diverting Internet users to a web site which sells counterfeit jewelry products purporting to be “authentic” Pandora jewelry, all to the confusion of the public and the detriment of Complainant. By operating the web site located at the disputed domain name, Respondent has attempted to attract for financial gain Internet users to Respondent's web site by intentionally creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or the goods offered or promoted through Respondent's web site. B. Respondent
Respondent did not reply to Complainant's contentions, and is in default. 6. Discussion and Findings
Even if a respondent is in default, a complainant must still make out its case under Policy, paragraph 4(a) that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By submitting copies of registration certificates and printouts of trademark databases such as TARR (see section 4 above), Complainant has shown that it has rights in the PANDORA trademark and in several other marks containing the PANDORA term. The disputed domain name contains the PANDORA mark in its entirety. The addition of the common term “yes” as a prefix, and the gTLD “.com” does not distinguish the domain name from Complainant's mark PANDORA: See MasterCard International v. Bankrate,WIPO Case No. D2008-0704 (“Where a domain name incorporates Complainant's mark in its entirety, the domain name is confusingly similar to Complainant's mark, despite the addition of other words in the domain name and despite the fact that a common word may be appended or a common word inserted therein. This is the so-called ‘objective test' adopted by the majority of panelists.”)
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the PANDORA mark of Complainant. B. Rights or Legitimate Interests
As seen at section 4 above, Complainant contends that Respondent has not used the domain name for a bona fide offering of goods or services, that Respondent has not been commonly known by the domain name, and that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Complainant also asserts that there exists no relationship between Respondent and Complainant, and that Complainant has not given Respondent permission to use the PANDORA mark in a domain name, or in any manner whatsoever on Respondent's web site or otherwise.
Considered together, these contentions are apt to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. It is generally accepted by UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See point 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Respondent has not presented the Panel with any comments or evidence in his own favor. Accordingly, the Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that it has promoted its PANDORA mark through its extensive advertising and marketing since well before the registration of the disputed domain name, and that, together with the registration of its PANDORA marks associated with jewelry, Complainant enjoys a worldwide reputation for its quality Pandora jewelry products. Respondent's silence in this proceeding, and the fact that it is offering jewelry on the web site at the disputed domain name lead the Panel to infer that Respondent registered the domain name in bad faith.
Complainant also contends that Respondent is offering counterfeit Pandora jewelry products for sale on its web site at the domain name at issue. Respondent also did not contest such contention. The Panel concludes that Respondent, by using the domain name at issue, has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or of the products or services listed on its web site, which is a circumstance of bad faith registration and use of the domain name pursuant to Policy paragraph 4(b)(iv). The fact that the products offered for sale on Respondent's web site are not genuine Pandora jewelry but counterfeit products, shows that Respondent, like as the respondent in Pandora Jewelry, LLC v. WhoisGuard/ dsgdsfg, dfgdsfg,WIPO Case No. D2009-1093, is acting with egregious bad faith.
The Panel finds that the third element of the Policy is met. 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 be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: October 6, 2009
Full & Egal Universal Law Academy