WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pandora Jewelry, LLC v. wutianhao Case No. D2010-0286 1. The Parties
The Complainant is Pandora Jewelry, LLC of Maryland, United States of America represented by Lathrop & Gage LLP of New York, United States of America.
The Respondent is wutianhao of Xichuan, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 24, 2010. On February 24, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On February 26, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. On February 26, 2010, the Center notified the Complainant that in the absence of an agreement between the parties, the language of the proceedings will be the language of the registration agreement. On March 3, 2010 the Complainant informed the center that the language of the registration agreement is Chinese and requested that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 3, 2010. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 6, 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. 4. Factual Background
The Complainant, Pandora Jewelry, LLC (hereinafter: the “Complainant”), is a United States distributer of unique and distinctive jewelry designs created by artisans of the Complainant's affiliated companies in Denmark.
The Complainant and its affiliated companies sell the PANDORA jewelry products in the primary geographical segments of Europe, United States, Australia and Asia.
The Complainant and its affiliated companies are the owners of multiple trademark registrations for the marks PANDORA around the world. For example: Mexican trademark registration No. 888,612 – PANDORA logo, with the registration date of June 27, 2005; Canadian trademark registration No. 707,735 – PANDIRA logo, with the registration date of February 19, 2008; United States registration No. 3,065,374 – PANDORA logo, with the registration date of March 7, 2006; United States trademark registration No. 3,613,181 – PANDORA logo, with the registration date of April 28, 2009; United States trademark registration No. 3,640,357 – PANDORA logo, with the registration date of June 16, 2009; and others.
The Complainant expended significant resources throughout the years in promotion and advertisement throughout the world. As a result of extensive use and publicity, the PANDORA trademark become widely-know and is solely associated with the Complainant and its affiliated companies.
The Complainant has also developed a formidable presence on the Internet and is the owner of the following domain name, which contains the names “pandora” and “jewelry” . The Complainant is using this domain name in connection with its activities.
The Respondent registered the disputed domain name on November 18, 2009.
The disputed domain name resolves to a web page, which displays the PANDORA logo and offers various jewelry for sale. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the PANDORA trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the PANDORA trademark and that this trademark is widely recognized with the Complainant and the Complainant's affiliated companies, and with their operation. Furthermore, the Complainant argues that it did not have a relationship with the Respondent nor has it not licensed or permitted the Respondent to use the PANDORA mark.
The Complainant further argues that the Respondent is not making a legitimate non-commercial use of the PANDORA mark. The Complainant further argues that the Respondent has not used the disputed domain name for a bona fide offering of goods.
The Complainant further argues that the Responded is using the website for the sale of counterfeit goods, which carry the PANDORA logo. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent registered and acquired the disputed domain name with knowledge of the Complainant and the Complainant's operation and with intention to imitate the Complainant's goods. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent engaged in “cyberflying” by changing the WhoIs information upon receipt of the cease and desist letter from the client. The Complainant argues that this is evidence to the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The PANDORA trademark is registered in multiple territories around the world. For example: Mexican trademark registration No. 888,612 – PANDORA logo, with the registration date of June 27, 2005; Canadian trademark registration No. 707,735 – PANDORA logo, with the registration date of February 19, 2008; United States registration No. 3,065,374 – PANDORA logo, with the registration date of March 7, 2006; United States trademark registration No. 3,613,181 – PANDORA logo, with the registration date of April 28, 2009; United States trademark registration No. 3,640,357 – PANDORA logo, with the registration date of June 16, 2009; and others.
The disputed domain name differs from the registered PANDORA trademark by the additional words “jewelry” and “sale”, and the gTLD “.com”.
The dominant element in the disputed domain name is the Complainant's PANDORA trademark, which is incorporated in its entirety. The words “jewelry” and “sale” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's PANDORA trademark, especially as they represent goods, which are regularly sold under the PANDORA trademark by the Complainant, and services regularly rendered by the Complainant.
Previous UDRP panels have ruled that the mere addition of a non significant element do not sufficiently differentiate the domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “[t]he trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PANDORA trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant, along its affiliated companies, own registrations for the PANDORA trademark since the year 2005. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name lead Internet users to a website, which promotes the sale of jewelry under the PANDORA mark. The Respondent's use of the name “pandora” to promote similar or counterfeit goods to the good being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark PANDORA and subsequent intent to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “[t]he registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for quasi identical goods to the ones the Complainant manufacture and markets (as well as Complainant's counterfeit's good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
In addition, and in accordance with the evidence submitted by the Complainant, it appears that the Respondent is engaged in cyberflying. “Cyberflying” is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint. The Panel agrees with the conclusion of other UDRP panelists that this conduct is itself an indication of bad-faith registration and use under paragraph 4(b) of the Policy. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696; Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc.,WIPO Case No. D2004-0359, and British Broadcasting Corporation v. Data Art Corporation / Stoneybrook,WIPO Case No. D2000-0683.
Based on the evidence presented to the Panel, including on the use of the PANDORA trademark and the “cyberflying” activity engaged by the Respondent, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Further, the disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “A likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant's distinctive registered trademark and the Respondent's use of the domain name, the Panel finds that the registration of the disputed domain name that is confusingly similar to Complainant's mark shows the Respondent intent to operate a website offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either associate affiliated by the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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 the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 19, 2010
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