Complainant is Pandora Jewelry, LLC of United States of America represented Lathrop & Gage LLP, United States of America.
Respondent is Ke Ying of People’s Republic of China. 2. The Domain Name 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 July 21, 2010. On July 21, 2010, the Center transmitted by email to eNom, Inc. a request for Registrar verification in connection with the disputed domain names. The same day, eN, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2010.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 18, 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 or its affiliated companies own, amongst others, the following trademark registrations:
TRADEMARK
REG. No.
Class
(Int’l)
DATE OF REGISTRATION
COUNTRY
PANDORA JEWELRY
3065374
14
March 7, 2006
United States
PANDORA UNFORGETTABLE MOMENTS
3640357
14 and 16
June 16, 2009
United States
PANDORA
3613181
14 and 16
April 28, 2009
United States
PANDORA JEWELRY
TMA707735
14
February 19, 2008
Canada
PANDORA JEWELRY
888612
14
June 27, 2005
Mexico
PANDORA JEWELRY
5037381
14
March 30, 2007
Japan
PANDORA
5256920
14
November 28, 2007
Japan
PANDORA UNFORGETTABLE MOMENTS
5256919
14
August 14, 2009
Japan
The disputed domain name was registered on April 28, 2010.
The disputed domain name was registered on April 29, 2010.
The disputed domain name was registered on May 18, 2010.
The disputed domain name was registered on May 28, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- That Complainant is the United States distributor of unique and distinctive jewelry designs created by artisans of Complainant’s affiliated companies in Denmark.
- That Complainant and its affiliated companies have created a unique, distinctive series of beads, spacer, clips, bracelets and necklaces which are each original works of art that capture the expressive spirit of the Scandinavian design.
- That Complainant’s ultimate corporate parent sells PANDORA jewelry products in the primary geographical segments of Europe, United States and Asia Pacific.
- That Complainant’s unique jewelry system was first developed in Denmark in 1999, and first marketed outside the United States by an affiliated company of Complainant in the spring of 2000.
- That Complainant was first formed in the United States on January 1, 2003 in order to sell PANDORA jewelry, and there are currently thousands of retailers in the United States and worldwide that carry Complainant’s unique products under the PANDORA trademark.
- That Complainant and its affiliated companies are owners of various trademarks registrations that incorporate “PANDORA”.
- That Complainant and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA trademark, including through the website at
“”, which resolves to the website “”; television and radio commercials, as well as advertisements in newspapers and magazines and displays.
- That Complainant and its affiliated companies’ sales of the PANDORA jewelry products have exceeded two-hundred million dollars in the United States and nearly twice worldwide.
- That PANDORA products are sold through more than 10,000 points of sale worldwide.
- That the PANDORA trademark has become widely-known in the United States and throughout the world.
- That Complainant is the owner of the United States Patent Number 7,007,507 entitled Necklaces and Bracelets with Keepers, which was duly, validly and legally issued to the Complainant in March 7, 2006.
- That Complainants affiliated companies have claimed patent rights throughout the world, including Chinese Patent No. 2004 800208669.7
- That Complainant’s corporate parent produces nearly all of its jewelry products in house through its production facilities in Thailand.
- That Respondent is not an authorized retailer.
- That Respondent appears to stamp Complainant’s PANDORA trademark on the counterfeit jewelry products sold through the disputed domain names. I. Identical or Confusingly Similar
- That the disputed domain names contain the PANDORA trademark in its entirety .
- That Respondent’s domain names create a strong likelihood of confusion as to the source, sponsorship or endorsement with the Complainant.
- That the alternate spelling of “jewellery” does not sufficiently distinguish the disputed domain names and the PANDORA JEWELRY trademark.
- That the addition of the terms “store”, “sale”, “shop”, and “beads”, and the plural “s” in the disputed domain names and the generic top level domain “.com” to the PANDORA trademark reproduced in its entirely does not prevent the likelihood of confusion.
- That the addition of the terms “store”, “sale”, “shop”, and “beads” to Complainant´s PANDORA trademark in the disputed domain names, where both Complainant´s and Respondent´s businesses involve the sale of jewelry products, including beads, actually enhances the likelihood of confusion. II. Rights or Legitimate Interests
(a) Respondent has no used the domain names for a bona fide offering of goods or services.
- That Respondent is relying on consumers’ recognition of Complainant’s name and PANDORA trademark to attract users to its own websites which use the Complainant’s PANDORA trademark without license or authorization of any kind in order to sell counterfeit goods.
- That Respondent’s commercial activities undertaken through use of the domain names are neither fair use nor bona fide under the Policy.
- That an 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 Respondent.
- That Respondent’s use of Complainant’s trademark is infringing use.
- That the disputed domain names display Complainant’s registered trademark PANDORA prominently in the header of the web pages associated with them.
Respondent has not been commonly known by the domain names.
- That Complainant asserts that Respondent is not and has never been commonly known by the disputed domain names at the time of their registration or at any time.
- That while the websites at the disputed domain names declare that they were established in 2008, there is no evidence of Respondent doing business under those names in 2008 or at any time prior to the registration of the domain names that were mentioned above.
(a) Respondent is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain.
- That there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain.
- That Respondent is trading on Complainant’s goodwill and is using the disputed domain names to offer and promote counterfeit goods without the Complainant’s authorization.
- That such actions do not represent a bona fide offering of goods or services under the Policy.
- That Respondent is intentionally trading on Complainant’s PANDORA trademark in the disputed domain names for commercial gain, all to the detriment of the rightful trademark owner.
- That Respondent uses the disputed domain names for purely disreputable purposes.
- That Respondent’s websites located in the disputed domain names offer for sale and sell counterfeit goods, falsely using the PANDORA trademark.
- That the actions mentioned above will likely lead consumers to believe mistakenly that Complainant is the source of Respondent’s counterfeit jewelry products offered under the PANDORA trademark or that Respondent is affiliated with or sponsored by Complainant.
- That Respondent, by its use and registration of the disputed domain names, which contain Complainant’s trademark in its entirety, wrongly seeks to capitalize on the positive reputation and good will associated with Complainant’s PANDORA trademark in the marketplace. III. Registered and Used in Bad Faith
- The Complainant has promoted its PANDORA trademark through its extensive advertising and marketing since well before the registration of the disputed domain names.
- That Complainant and its affiliated companies enjoy a positive worldwide reputation for its quality PANDORA jewelry products.
- That there exists no relationship between Respondent and Complainant.
- That Complainant has not given Respondent permission to use Complainant’s PANDORA trademark in domain names or to use it in any manner whatsoever on Respondent’s websites or otherwise.
- That Respondent has not merely appropriated Complainant’s PANDORA trademark in plain text form, Respondent also has copied the distinctive stylization of Complainant’s trademark and displays it prominently on the websites identified by the disputed domain names.
- That Respondent has previously registered numerous domain names containing Complainant’s trademark PANDORA, as evidenced in Pandora Jewelry, LLC v. fcg, Xiong Mao, Ke Ying, jh, Lucy Ana, WIPO Case No. D2009-1546 and Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
- That Respondent’s awareness of the Complainant’s PANDORA trademark is illustrated by Respondent’s registration of the disputed domain names after the WIPO Arbitration and Mediation Center issued the decision inWIPO Case No. D2009-1546 ordering the transfer of the domains
; - That Respondent is now, and was at the time of registration, fully aware of the PANDORA trademark, but refuses to relinquish ownership of the disputed domain names incorporating the Complainant’s PANDORA trademark in its entirety in order to continue diverting Internet users to websites which sell counterfeit “Pandora” jewelry products, all to the detriment of the public as well as Complainant. - That Respondent’s websites have no legitimate business connection with Complainant or its jewelry products offered under the PANDORA trademark. - That Complainant has not granted Respondent permission or license of any kind to use the PANDORA trademark in domain names. - That such unauthorized use of Complainant’s trademark by Respondent suggests opportunistic bad faith. - That by operating the disputed domain names, Respondent has knowingly attempted to attract for financial gain Internet users to Respondent’s websites by intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or the goods offered or promoted through Respondent’s websites. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In accordance with the Policy, Paragraph 4(a), the Complainant must prove that: (i) The domain name in question 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. In the administrative proceeding, Complainant must prove that each of these elements are present. As Respondent has failed to submit a Response to Complainant’s contentions, the Panel may choose to accept as true all of the allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar Complainant or Complainant’s affiliates are the holders of several trademark registrations for PANDORA and PANDORA UNFORGETABLE MOMENTS in the world. The disputed domain names , , and are confusingly similar to Complainant’s trademark PANDORA. Said trademark PANDORA is entirely incorporated in the domain names , ; and . The addition of the of the terms “store”, “sale”, “shop”, and “beads”, the alternate spelling of “jewellery” and the plural “s” does not confer a distinctive character to the disputed domain names, in relation to Complainant’s trademarks. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; see also, Mutatis Mutandis, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández,WIPO Case No. D2006-1506, Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713. The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). Therefore this Panel finds that the domain name is confusingly similar to Complainant’s trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 or service mark at issue.” (Policy, paragraph 4(c)). The Respondent has not submitted evidence showing its preparations to use the disputed domain names with a bona fide offering of goods or services, nor has Respondent proven that it has been commonly known as , , and , or that it is making a legitimate noncommercial or fair use of the disputed domain names. Respondent has not submitted evidence showing that it is a licensee of Complainant, or that it has been authorized in any manner to use the trademark PANDORA. Panels acting under the Policy have held that registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain names to Respondent, but rather indicates bad faith under paragraph 4(c) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Limited,WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v. Kownacki, NAF Claim No. 95079). Respondent has not contested Complainant’s statements and evidence arguing illegitimate, commercial use of the disputed domain name. Therefore, this Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names , , and . The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith: (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The disputed domain names intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark PANDORA, as to the source, sponsorship, affiliation or endorsement of said sites, and the goods and services offered in them. This conduct clearly falls within the scope of Paragraph 4(b)(iv) of the Policy and constitutes bad faith. (See Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200; PNY Technologies Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0544; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.) The registration of these many variations of domain names incorporating the trademark PANDORA, especially considering that the elements added to said trademark, such as “jewellerystore”, “sale beads”, “store jewellery” and “shop beads”, are specifically related to Complainant’s business, cannot be considered to be random. There is a clear intent to link Respondent’s domain names to Complainant, its trademarks and its trade. In addition to this fact, Complainant has cited other cases in which Respondent has been found to hold domain names incorporating third parties’ trademarks in bad faith. This proves a pattern of conduct actionable under paragraph 4(v) (ii) of the Policy. This Panel finds that the domain names have been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been 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 names ; ; and be transferred to the Complainant. Kiyoshi Tsuru
Sole Panelist
Dated: September 1, 2010
Full & Egal Universal Law Academy