WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao Case No. D2010-0642 1. The Parties
The Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondents are ke ying of Lancs, People's Republic of China; no, bing jin of Shanghai, People's Republic of China; fcgem, Wei Pang of Shanghai, People's Republic of China; na no, of Lancs, United Kingdom of Great Britain and Northern Ireland; and fcg, xiong mao of Shanghai, People's Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2010. On April 23, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On April 27, 2010 eNom, Inc. transmitted by email to the Center its complete verification response confirming that the Respondents are listed as the registrants 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 27, 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 is the United States distributor of jewelry designs under the trademark PANDORA, including series of beads, spacers, clips, bracelets and necklaces. The designs are created by artisans of the Complainant's affiliated companies in Denmark.
The Complainant owns various trademarks incorporating the word “pandora” in several countries, since at least 2004.
Pandora and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA trademark, including through the website at “”. The sales of the PANDORA jewelry products have exceeded two-hundred million USD in the United States and nearly twice as much worldwide, through more than 8,000 outlets.
The disputed domain names were created between November, 2009 and April, 2010.
The Panel accessed the web pages placed at the disputed domain names on June 8, 2010.
The domain names , , and point to very similar web sites, with the same design and colors, consisted of e-commerce operations entitled “PANDORA Jewelry Sales” or “PANDORA Beads”. These web sites reproduce the Complainant's trademark and offer for sale “Pandora Necklaces”, “Pandora Beads”, “Pandora Bracelets”, “Pandora Bangles”, Pandora Packages”, etc.
The web site at is entitled “PANJEWELRY” and has a different design. However, it also reproduces the Complainant's trademark PANDORA and offers for sale “Pandora Jewelry”, “Pandora Beads”, “Pandora Bracelets”, “Pandora Charms”, etc.
The web sites at and presents just an error message informing that “The requested URL could not be retrieved”, due to “Connection refused”.
The domain names and do not link to any web page. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The trademark PANDORA has become well-known throughout the world.
(ii) The registrants of the disputed domain names are in fact the same entity, and thus, may properly be considered in the same proceeding under paragraph 3(c) of the Rules.
(iii) The domain names are confusingly similar to the trademark. With exception of , the disputed domain names contain the entire PANDORA trademark. The registration and use of these domain names creates a strong likelihood of confusion as to the source, sponsorship, association, or endorsement of the Respondent's web site. As to , the domain name as a whole is confusingly similar to the Complainant's PANDORA JEWELRY name and mark, and the alternate spelling of “jewellery” does not sufficiently distinguish the domain name. The addition of the terms “store”, “sale(s)”, “online”, “beads”, “esale”, the possessive “s” and the generic top level domains “.com” or “.info” do not prevent the likelihood of confusion.
(iv) The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services. The unauthorized appropriation of another's trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondents. The Respondents have not been commonly known by the domain names. There is no evidence that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. The Respondents are trading on the Complainant's goodwill and use the disputed domain names for purely disreputable purposes. The Respondents' acts amount to acts of trademark infringement and unfair competition by misleading and confusing customers as to the source or origin of the information and products found on its web sites.
(v) The domain names were registered and are being use in bad faith. The Respondents' nefarious purpose in registering the disputed domain names is to capitalize on the reputation of the Complainant's PANDORA mark by diverting Internet users seeking PANDORA jewelry products to the Respondents' own web sites, where consumers may purchase counterfeit goods. The Respondents have knowingly attempted to attract Internet users to their web sites for financial gain by intentionally creating a likelihood of confusion with the Complainant's mark. Finally, the Respondents' registration of multiple domain names confusingly similar to the Complainant's PANDORA mark, and even the passive holding of some, also demonstrates a pattern of conduct that is illustrative of the Respondents' bad faith. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Regardless of the fact the Respondents failed to submit any, reply, the Panel shall consider whether the requirements of the Policy have been met. A. Multiple Respondents
Paragraph 3 (c) of the Rules establishes that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
Several previous cases have shown that the mere fact of registrants being differently named has not prevented a finding that there is one proper respondent in circumstances which indicate that the they may be regarded as the same entity in effect (General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834; Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd.,WIPO Case No. D2007-0500; Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283). Those are the present circumstances.
As noticed by the Complainant, all nine domain names are registered through the same registrar and – with the exception of – use the same name servers. The domain names , , and are formally registered under the same registrant name; while the domains , , and are all registered under the same registrant name.
The domain names , , and host basically the same web site, with the same design, colors and offers for sale.
Some of the web sites hosted on the disputed domain names have internal links to the other domain names, taking the Internet users unknowingly from one site to the other.
Furthermore, the apparently-fictitious addresses provided in the WhoIs data for the domain names and are identical, with the exception of the countries.
A previous UDRP decision, Pandora Jewelry, LLC v. fcg, Xiong Mao, Ke Ying, jh, Lucy Ana,WIPO Case No. D2009-1546, found that the three respondents that had registered other domain names with variations of the PANDORA mark were actually the same entity. Two of the Respondents in that prior case appear to be the same entities as the registrants of the , , and domain names in this case. Additionally, it would appear that the websites analyzed in the referenced Pandora Jewelry, LLC case, supra, resolved to the same kind of web sites as those present at the , , and domain names.
Therefore, the Panel concludes that the variously named registrants are properly treated as a single Respondent entity in the present case. B. Identical or Confusingly Similar
Exhibits 20 - 32 of the Complaint demonstrate numerous registrations of the PANDORA trademark since 2006.
With the exception of the domain name , the trademark PANDORA is wholly encompassed within all the disputed domain names, together with dictionary terms such as “store”, “sale(s)”, “online”, “beads”, “esale” and the possessive “s”. The adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is identical or confusingly similar to the trademark in question (F. Hoffmann-La Roche AG v. sysadmin admin, ltd.,WIPO Case No. D2008-0954).
Moreover, it is clear to the Panel that the domain name is a shortened version of the Complainant's trademark PANDORA JEWELRY, a slight change which is not able to dispel the risk of confusing similarity.
The Complainant has therefore met the burden of proving that the disputed domain names are confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
As it is often very difficult for a complainant to prove that a respondent has no rights or legitimate interests in a domain name (as this can involve the complainant being required to prove a negative), it is considered enough that the complainant establishes a prima facie case which evidences that. In a previous WIPO UDRP case, the panel stressed that “once Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Based on the Respondents' default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain names.
The Respondents are not commonly known by the words “onlinepandorabeads”, “pandoraesale”, “pandorajewelleryonline”, “pandorajewellerysales”, “pandorasbeadsale”, “panjewellery”, “salepandora”, “salepandorasbeads”, or “storepandora”. The Complainant has not licensed the trademark PANDORA to the Respondents.
The Respondents are using many of the domain names to host an e-commerce operation that reproduces the Complainant's trademark and the look and feel of the Complainant's official website, selling jewelry under the Complainant's marks, without any authorization from the Complainant or from its affiliated companies. The other domain names are being passively held.
In these circumstances, there has been no legitimate noncommercial or fair use of the disputed domain names by the Respondent, and accordingly the Complainant has met its burden under the Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark 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 online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel acknowledges that PANDORA is a trademark directly connected with the Complainant's activities as the distributor of distinctive series of Scandinavian jewelry designs.
The registration of the disputed domain names occurred between late 2009 and early 2010, when the Complainant's trademark PANDORA was already well known in the specific field of jewelry, mainly with reference to collectible bracelets. Therefore, the Panel finds it is not feasible that the Respondents could have ignored the Complainant's reputation and business when registering the disputed domain names.
Moreover, the use of the domain names to publish web pages that reproduce the look and feel of the Complainant's official web site, and where there are reproductions of the Complainant's logos and trademarks, proves that the choice of the word “pandora” or “panjewellery” to compose the disputed domain names was not a coincidence.
The Panel is convinced that the addition of the terms “store”, “sale(s)”, “online”, “beads” and “esale” to the trademark PANDORA was intentionally done in order to convince consumers that the web site was related to the Complainant's own business.
The Respondents are clearly using some of the domain names to intentionally attract, for commercial gain, Internet users to their web pages, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their web sites. These domain names are being used as instruments to infringe the Complainant's various intellectual property rights concerning PANDORA jewelry, which the Panel finds definitely characterizes bad faith.
Moreover, there is no justification for the registration of the domain names that presently do not host any web pages and which are being passively held by the Respondents. Actually, the error messages and the references found at those addresses lead the Panel to believe that probably the Respondents have not intentionally caused those web sites to become inactive.
Also, some of the Respondents have previously registered other domain names using the PANDORA mark along with other terms, some of which were even the objects of previous WIPO UDRP decisions ordering the transfer of those addresses to the Complainant.
Additionally, the various listed “identities” and the apparently false information found in the WhoIs database also illustrate the Respondents' bad faith.
Consequently, the Panel concludes that the third condition required to be satisfied under Policy, paragraph 4(a)(iii) has also been fulfilled. 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 names , , , , , , , and be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: June 11, 2010
Full & Egal Universal Law Academy