The Complainant is Pandora Jewelry, LLC, Maryland of United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is (FAST-12785240), of Hong Kong, SAR of China represented by it self. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2010. On August 11, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On August 12, 2010, FastDomain, Inc. 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 the Complainant on August 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 17, 2010. The Center verified that the Complaint together with the amendment to 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 September 23, 2010. The proceeding was initially suspended from August 24, 2010 until September 22, 2010 for the parties to amicably settle the dispute. The proceeding was recommenced on September 22, 2010 at the request of the Complainant showing that parties have been unable to resolve the matter amicably. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. The Respondent sent an email communication to the Center on October 15, 2010.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 26, 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.
The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules. 4. Factual Background
The Complainant is the United States distributor of unique and distinctive jewelry designs created by artisans of Complainants’ affiliated companies in Denmark. Complainant’s ultimate corporate parent sells Pandora jewelry products in the primary geographical segments of Europe, the United States and Asia Pacific. Complainant also refers to its trademark registrations worldwide.
The disputed domain name was registered on September 21, 2009 and renewed on September 24, 2010 by the Registrar, since it was going to expire in the course of the present proceedings. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s PANDORA trademark since it contains the entire PANDORA trademark of the Complainant and the descriptive term “any” which does not prevent the likelihood of confusion.
The Complainant also contends that the Respondent has no rights or legitimate interest in the disputed domain name since it is relying on consumer’s recognition of Complainant’s trademark PANDORA to attract consumers to its own website which uses the Complainant’s PANDORA trademark without license or authorization of any kind in order to sell counterfeit goods as well as competing jewelry products. Also, the Complainant asserts that the acts of the Respondent represent acts of trademark infringement and unfair competition by misleading and confusing the consumers as to the source or origin of the information and products found on its websites.
Also, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith since:
- The Respondent’s purpose in registering the disputed domain name is to capitalize on the reputation of the Complainant’s PANDORA trademark by diverting Internet users seeking jewelry products under the Complainant’s PANDORA trademark to the Respondent’s own website where consumers may purchase counterfeit goods and packaging offered and sold under the PANDORA trademark as well as competing goods;
- The Complainant’s trademark PANDORA enjoys a worldwide reputation for its quality PANDORA jewelry products;
- There exists no relationship between the Respondent and the Complainant;
- The Complainant has not given the Respondent permission to use its PANDORA trademark in a domain name, or to use it in any manner whatsoever on the Respondent’s website or otherwise; B. Respondent
The Respondent filed a late Response by email dated October 15, 2010 which was administratively deficient in a number of respects, since it only stated that: “now I don’t use the website anymore, as a owner I have got a job now, and no time to handling with the website, so I hope the complaint could purchase the domain and so on. Looking forward to your reply”. 6. Discussion and Findings Procedural Aspects
The first issue is whether the Panel will consider the late and administratively deficient Response of October 15, 2010.
In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. In this case the Panel finds that there are no exceptional circumstances to justify submitting a late response, having in mind also the fact that the Responded was well aware of the proceedings, since parties tried to reach an amicable settlement and proceedings were suspended to such an end.
There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to paragraph 4(b) of the Rules. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of paragraph 5 of the Rules has been determined differently by different panels. The majority of the Panelists assume that they are entitled at their discretion to determine whether to consider responses that are formally incorrect (Young Genius Software AB .v. MWD, James Vargas,WIPO Case No. D2000-0591 ).
A response has been taken into account inter alia if:
- the respondent wrongly submitted the response to the complainant and ICANN but not to the dispute resolution provider (See Oberoi Hotels Pvt. Ltd. v. Arun Jose,WIPO Case No. D2000-0263 )
- the response was on time but was submitted in handwriting (see Cable News Network LP, LLLP v. Manchester Trading, NAF Claim No. FA 93634 - )
- the response exceeded the limit on the number of words imposed by the Supplemental Rules (See Süd-Chemie AG v. ,WIPO Case No. D2000-0376 – )
- the response was submitted by fax (See Veritas DGC Inc. v. The Collectors Source and Edward T. Arrich, Jr, NAF Claim No. FA 94425 - )
This Panel agrees with the decision in William Hill Organisation Limited v Seven Oaks Motoring Centre,WIPO Case No. D2000-0824 - ); hence it shall not consider the Response filed in the present proceedings.
In any event, the decision in this case would have been the same had the panel considered the Response when making its decision. A. Identical or Confusingly Similar
Under the first element of the UDRP, the Complainant needs to demonstrate that the Complainant has a trade mark or service mark and that the disputed domain name is identical or confusingly similar to that trade mark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark PANDORA by providing evidence of registration of the United States trademark registration no. 3,613,181 covering its trademark PANDORA (stylized with design) registered on April 28, 2009, of the Japanese trademark registration no. 5256920 covering its trademark PANDORA registered on August 14, 2009, and other trademarks including the term PANDORA.
The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name has two differences from the trademark of the Complainant Pandora: the addition of the “.com” suffix and the addition of “any” word to the trademark PANDORA.
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Many panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will normally not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant’s trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant’s trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Société Air France v. RBlue,WIPO Case No. D2005-0290.
In this case, apart from the generic top level domain, the disputed domain name consists of the Complainant’s trademark PANDORA and the prefix “any”. The prefix “any” is of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term “pandora”. In these circumstances, Internet users finding are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain name. (See F. Hoffmann-La Roche AG v. George Stiegman,WIPO Case No. D2008-1572 and decisions cited therein).
It should also be stressed that when a disputed domain name incorporates, as here, the entirety of Complainant’s trademark it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain name. The additional term in our case, “any”, is a common term of no significant value in distinguishing the mark PANDORA from the disputed domain name.
Having regard to the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PANDORA trademark and that the Complainant has met the first requirement of the Policy. B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.).
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210, Pandora Jewelry, LLC v. WhoisGuard / Xiong Mao, fcg, WIPO Case No. D2009-1096).
This Panel agrees with the opinions expressed by other panels in other similar cases that there is no legitimate noncommercial or fair use of the disputed domain name because “[T]he Respondent is using the domain name 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”. See Pandora Jewelry, LLC v. David Lee, WIPO Case No. D2010-0582.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, 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 to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.
Here, the registration of the disputed domain name occurred in 2009, when the Complainant's trademark PANDORA was known in the specific field of jewelry, mainly with reference to collectible bracelets (see Pandora Jewelry, LLC v. David Lee, supra). This Panel agrees with the opinion expressed by other panels in other cases when stating that the Respondent's silence in this respect, 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, (see Pandora Jewelry, LLC v. WhoisGuard / Xiong Mao, fcg, supra).
The Respondent is clearly using the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site, since the Respondent appears to be offering counterfeit Pandora jewelry products for sale on its web site at the disputed domain name. In this Panel’s view this 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 the Respondent's web site appear not to be genuine Pandora jewelry but counterfeit products, shows that Respondent, similarly to the respondent in Pandora Jewelry, LLC v. WhoisGuard/ dsgdsfg, dfgdsfg,WIPO Case No. D2009-1093, is acting with egregious bad faith.
This Panel finds that the disputed domain name has 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 name, be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Dated: November 9, 2010
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