WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pandora Jewelry, LLC v. fcg, Xiong Mao, Ke Ying, jh, Lucy Ana Case No. D2009-1546 1. The Parties
The Complainant is Pandora Jewelry, LLC, of Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent are fcg, Xiong Mao of Shanghai, China, Ke Ying of Lancs, China, and jh, Lucy Ana of China. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2009. On November 18, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On the same date, November 18, 2009, eNom transmitted by email to the Center its verification response confirming (1) fcg, Xiong Mao of Shanghai, China is listed as the registrant of the disputed domain names and ; (2) the Respondent Ke Ying of Lancs, China is listed as the registrant of the disputed domain name ; and (3) the Respondent jh, Lucy Ana of “Sdgfdag”, China is listed as the registrant of the disputed domain name and providing the contact details for the disputed domain names. 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 11, 2009.
The Center appointed David Perkins as the sole panelist in this matter on December 18, 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 4.A The Complainant
4.A.1 The Complainant was formed in January 2003. It is affiliated to Pandora Invest ApS, a Danish company. The Complainant is the United States distributor of jewelry created in Denmark which is sold in Europe, the United States, Australia and Asia under the PANDORA trademark. The jewelry comprises a distinctive series of beads, spacers, clips, bracelets and necklaces which capture what the Complaint describes as “the expressive spirit of Scandinavian design”. The PANDORA jewelry system was first developed in Denmark in 1999 and first sold in the United States in the spring of 2000.
4.A.2 The 2008 Annual Report of the parent company, Pandora Invest ApS, records Group revenues of Danish Kroner (Dkr) 1,662,039,000.00. This equates approximately to USD330 million.
4.A.3 The Report states that PANDORA jewelry products are sold through more than 8,000 outlets worldwide. The Complaint also states that sales of PANDORA jewelry in the United States have exceeded USD200 million. The PANDORA trademarks
4.A.4 The Complainant is the proprietor of the following registered trademarks:
Country
Registration No.
Mark
Class(es)
Date(s) applies for / registered
United States of America
3,065,374
PANDORA
JEWELRY
14
Filed: September 21, 2004
Registered: March 7, 2006
United States of America
3,640,357
PANDORA UNFORGETABLE MOMENTS
14
Filed: August 9, 2007
Registered: June 16, 2009
United States of America
3,613,181
PANDORA (stylised)
14 & 16
Filed: August 9, 2007
Registered: April 28, 2009
Canada
707,735
PANDORA JEWELRY
14
Filed: September 24, 2004
Registered: February 19, 2008
Mexico*
888,612
PANDORA JEWELRY
14
Filed: March 14, 2005
Registered: June 27, 2005
Japan
5,037,381
PANDORA JEWELRY
14
Filed: October 15, 2004
Registered: March 30, 2007
Japan
5,256,920
PANDORA (stylised)
14
Filed: November 28, 2007
Registered: August 14, 2009
Japan
5,256,919
PANDORA UNFORGETABLE MOMENTS
14
Filed: November 28, 2007
Registered: August 14, 2009
* The registrant is Pandora Smykker USA APS of Denmark, a company in the same Group as the Complainant. The website
4.A.5 The Complaint states that the Complainant and its affiliated companies have extensively advertised and marketed jewelry products through the PANDORA website which resolves to its domain name , was created on October 31, 2002 and the registrant is Pandora Jewelry AS of Denmark, an affiliated company with the Complainant.
4.A.6 The Complaint states that the Complainant and its affiliated companies have also extensively advertised and marketed its jewelry products under the PANDORA mark on television, in radio commercials, newspapers and magazines, store circulars, point-of-sale materials and displays. Exhibited to the Complaint are advertisements for PANDORA products in the June 2008 United States edition of ELLE; the May 2008 edition of The Oprah Magazine; a number of undated advertisements for various items of PANDORA jewelry; and what appear to be pages from their official website. 4.B The Respondents
4.B.1 In the absence of a Response, all that is known of the Respondents is set out in the Complaint.
4.B.2 The disputed domain names were created and are registered as follows:
created September 23, 2009 Registrant, Ke Ying
created October 9, 2009 Registrant, fcg, Xiong Mao
created October 16, 2009 Registrant, fcg, Xiong Mao
created October 3, 2009 Registrant, jh, Lucy Ana
4.B.3 The Complainant submits that the three registrants of the four disputed domain names are, in fact, the same entity. The basis for this submission is as follows:
4.B.3.1 The homepage of three of the four disputed domain names , and contain an identical notification at the bottom of each page “© 2008-2009 , Inc. All rights reserved.” The fourth disputed domain name contains an almost identical notification, “© 2008-2009 , Inc. All rights reserved”.
4.B.3.2 The content of the homepages of the websites to which the first three mentioned disputed domain names resolve is identical, the homepage of the website to which the fourth disputed domain name resolves - namely, - being distinguished only by addition of the letter “e” in front of the Complainant's PANDORA trademark.
4.B.3.3 Clicking on the listings of jewelry items on the and home pages takes the user to a page within the website, which give the user the ability to ”Add to Cart” and subsequently “Proceed to Checkout” through .
4.B.3.4 As noted in paragraphs 3 and 4.B.2 above, two of the disputed domain names are registered under the same name. They are and .
4.B.3.5 The Complainant asserts that the address provided the disputed domain registration is clearly false, which the Complainant says is another indication that the ownership of the four disputed domain names is, in fact, the same. 5. Parties' Contentions 5.A Complainant The identity of the registrant of the four disputed domain names
5.A.1 As noted in paragraph 4.B.3.3 above, two of the disputed domain names resolve to a webpage within another disputed domain name. Citing Chinmoy Kumar Ghose v. IDCS and Maria Sliwa,WIPO Case No. D2003-0248, the Complainant says that this indicates ownership by the same entity, In that case, the disputed domain names and were registered in different names but were held to be owned or controlled by the same person.
5.A.2 The Complainant also cites Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659, which involved four disputed domain names all incorporating the Complainant's KAZAA trademark but variously registered in the name of the three Respondents. Because all four domain names were registered with the same registrar, using the Domains by Proxy service and were all directed to essentially identical websites, the Panel held it was most likely that the domains were controlled by a single party.
5.A.3 Finally, the Complainant cites Six Continents Hotels, Inc v. Amjad Kusar also known as InterMos,WIPO Case No. D2003-0663. This involved three disputed domain names all incorporating the Complainant's HOLIDAY INN trademark but separately registered in the names of the two Respondents. Finding that the three disputed domain names were owned by a single entity, the Panel relied - inter alia - on the fact that all three were registered with the name registrar, used the same services, resolved to the same website and incorporated the Complainant's HOLIDAY INN trademark.
5.A.4 Save as stated in paragraph 4.A.4 above, the Complainant is the proprietor of the PANDORA registered trademarks listed in that paragraph. All those trademarks were applied for and registered before any of the disputed trademarks were created. Identical or Confusingly Similar
5.A.5 Since all the four disputed domain names incorporate the PANDORA trademark, the Complainant asserts that they are confusingly similar to that trademark.
5.A.6 The Complainant cites a number of decisions under the Policy where it has been held that the addition of words, letters or numbers to a trademark used in a domain name does not alter the fact that the domain is confusingly similar to that trademark. Accordingly, the Complainant's case is that addition of the terms “diy”, “mart, “sale” and the letter “e” to the PANDORA trademark do not avoid the disputed domain names being confusingly similar to that trademark. The cases cited are American Online, Inc v. Anson Chan,WIPO Case No. D2001-0004 where the disputed domain name was and the Complainant's trademark was ICQ, and Lacoste Alligator SA v. Wang Limited,WIPO Case No. D2009-0559, where the disputed domain name was and the Complainant's trademark was LACOSTE.
5.A.7 As to the disputed domain names and , the Complainant asserts that where both the Complainant's and the Respondent's businesses involve the sale of jewelry products, likelihood of confusion is the greater. The Complainant cites Lacoste Alligator S.A. v. China Bizseas,WIPO Case No. D2009-0493, where the disputed domain name was , which resolved to a website selling counterfeit LACOSTE merchandise.
5.A.8 The Complainant also asserts that adding to the PANDORA trademark a word which is descriptive or suggestive of the services offered by the Complainant is another indication of a likelihood of confusion, citing World Natural Bodybuilding Federation, Inc v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642, where the disputed domain name was and the Complainant's trademark was PRONATURAL. Rights or Legitimate Interests
5.A.9 The Complainant's case is that the Respondents cannot bring themselves within any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.10 Additionally, not only is the Complainant's PANDORA trademark prominently used in the websites to which the four disputed domain names resolve, that use includes the stylised crown device over the letter “o” in PANDORA, which is a feature of United States trademarks 3,640,357 and 3,613,181 and Japanese trademarks 5,256,920 and 5,256,919 and is also as used on the Complainant's own website and in the advertisements of its products described in paragraph 4.A.6 above. In the circumstances, such use of the disputed domain names cannot, the Complainant says, be in connection with a bona fide offering by the Respondents of goods or services. The Complainant cites four cases decided under the Policy where comparable use of the disputed domain names was held not to be a bona fide use. They are America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 where the disputed domain names were and ; Hoffmann-La Roche Inc v. Samuel Teodorek,WIPO Case No. D2007-1814, where the disputed domain name was and the Complainant's trademark was ACCUTANE, the brand name for a dermatological preparation for the treatment of acne; AltaVista Company v. James A. Maggs, NAF Claim No. 95545, where the disputed domain name was ; the World Natural Bodybuilding Federation case referred to in paragraph 5.A.8 above; and F. Hoffmann-La Roche AG v. Direct Privacy LTD,WIPO Case No. D2009-1220 where the disputed domain name was and and the Complainant's trademark was TAMIFLU for its swine flue vaccine.
5.A.11 Further, the Complainant has not licensed or otherwise authorised the Respondents to use the PANDORA trademark.
5.A.12 Still further, the goods offered on the websites to which the four disputed domain names resolve are counterfeit according to a Declaration dated November 16, 2009 made by an employee of the Complainant, a Mr. John White. Such use, the Complainant says, is neither legitimate, nor fair and is clearly intended for commercial gain to mislead would-be consumers of the Complainant's authentic PANDORA products. Registered and Used in bad Faith
5.A.13 After learning of the registration on September 23, 2009 of the disputed domain name counsel for the Complainant sent a cease and desist letter dated October 1, 2009 by email and FedEx to the registrant. A delivery failure notification was received for the email and the FedEx package was returned.
5.A.14 On October 6, 2009 the Center issued a Decision in Pandora Jewelry, LLC v. WhoisGuard / Xiong Mao, fcg,WIPO Case No. D2009-1096 ordering transfer to the Complainant in that administrative proceeding of the disputed domain name . That decision was transmitted to the Parties on October 9, 2009.
5.A.15 The same day, October 9, 2009, the Respondent in this administrative proceeding, Xiong Mao, registered the disputed domain name . Shortly thereafter, on October 16, 2009 the Respondent, Xiong Mao, also registered the disputed domain name . Consequently, the Complainant says that the Respondents in the case were by the date of registration of those disputed domain names well aware of the Complainant and its rights in the PANDORA trademark.
5.A.16 As further evidence of the Respondents' bad faith, the Complainant relies upon:
- the worldwide reputation of PANDORA jewelry products enjoyed by the Complainant and its affiliated companies;
- the extensive advertising and marketing of those PANDORA products dating from at least 2000, well before registration of the disputed domain names in September and October 2009;
- the absence of licence or other permission from the Complainant to the Respondents to use the PANDORA trademark. In this respect, the Complainant cites Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163, and the Lacoste Alligator case,WIPO Case No. D2009-0559 referred to in paragraph 5.A.6 above;
- the slavish use by the Respondents of the Complainant's stylised PANDORA trademark at the websites to which the disputed domain names resolve (see paragraph 5.A.10 above); and
- the consequent clear intention of the Respondents to attract Internet users to those websites, which offer counterfeit PANDORA jewelry (see paragraph 5.A.12 above), by creating a likelihood of confusion with the Complainant's PANDORA trademark as to the source, sponsorship, affiliation or endorsement of those websites. In this respect, the Complainant again cites the Lacoste Alligator SA case, as well as Prada S.A. v. Domains forLife,WIPO Case No. D2004-1019 where the disputed domain name was and Farouk Systems Inc. v. O, WIPO Case No. D2007-1201 where the disputed domain name was and the Complainant's CHI trademark was known worldwide for its hair care products. In those two cases, the websites to which the disputed domain names resolved offered respectively, counterfeit PRADA and CHI products.
5.A.17 Hence the Complainant asserts that circumstances clearly exist on the facts such as to demonstrate bad faith registration and use of the disputed domain names within paragraph 4(b)(iv) of the Policy. The Complainant cites similar fact decisions under the Policy including the America Online, Inc. case,WIPO Case No. D2001-0004 referred to in paragraph 5.A.6 above; State Fair of Texas v. G, NAF Claim No. 95288, where the disputed domain name was held to have been registered and used in bad faith, the Complainant being the owner of the service mark BIG TEX; and Group Kaitu, LLC, Darkside Productions, Inc v. Group Kaitu LLC, aka Manilla Industries, Inc,WIPO Case No. D2005-1087, where 27 disputed domain names all included the Complainant's registered United States trademarks for EROS, EROS GUIDE, EROS MEN and PERVY and were directed to websites advertising adult oriented goods and services competing with those operated by the Complainant Group Kaitu, LLC's licensee, the Co-Complainants, Darkside Products, Inc. 5.B Respondents
No Response has been filed by any of the Respondents. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondents' domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain names in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the domain names in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. The identity of the Respondents
6.5 The Complaint is addressed to three Respondents. On balance, the Panel agrees that they are most probably one entity. In the decision in the Pandro Jewelry, LLC case - referred to in paragraph 5.A.15 - one of the Respondents, Xiong Mao, fcg, has the same name as the registrant of two of the disputed domain names in this case. Additionally, the other factors referred to in paragraph 4.B.3 above are persuasive that the three Respondents are, in fact, one entity.
6.6 However, whether the Respondents are three separate entities or one and the same entity is not, in the Panel's view, of relevance to whether the Respondents', or any of them individually, have rights or legitimate interests in the four disputed domain names or whether they registered and are using those domain names in bad faith. The Panel's decision is of equal application to the three Respondents whether they are individual entities or the same entity. However, it should be noted that, in relation to paragraph 4(a)(iii) of the Policy if, as appears to be the case here, the three Respondents are, indeed, one entity, use of fictitious names to register domain names can be regarded as an indicia of bad faith. Identical or Confusingly Similar
6.7 The Complainant has established rights in the trademark PANDORA both through the registrations listed in paragraph 4.A.4 above and also through extensive use worldwide since 2000 in relation to its PANDORA jewelry products.
6.8 Each of the four disputed domain names incorporates the PANDORA mark and that mark is the dominant feature of each domain name. As such, those domain names are clearly confusingly similar to the Complainant's PANDORA mark.
6.9 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.10 There is no evidence to suggest that the Respondents can bring themselves within any of the circumstances set out in paragraph 4(c) of the Policy. Indeed, on the facts set out in the Complaint - which are summarised in paragraphs 5.A.10 to 12 above, - it is clear that the Respondents' use of the disputed domain names is neither fair nor in connection with a bona fide offering of goods or services.
6.11 Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.12 The facts and matters set out in paragraphs 5.A.13 to 17 clearly demonstrate circumstances falling within paragraphs 4(b)(iii) and (iv) of the Policy and accordingly, the two requirements of paragraph 4(a)(iii) of the Policy are met by the Complainant. Given the apparent identity of the Respondent inWIPO Case No. D2009-1096 and the Respondent fcg, Xiong Mao in this case, it seems probable that the Respondent's actions also falls within paragraph 4(b)(ii) 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 disputed domain names , , and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: January 5, 2010
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