The Complainant is Pandora A/S of Copehnagen, Denmark, represented by C.V. React U.A., the Netherlands.
The Respondent is Domain Admin, Privacy Protect LLC (PrivacyP) of Burlington, Massachusetts, United States of America ("USA") / Robin Puckett of Statesville, North Carolina, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2018, the Registrar 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 March 21, 2018 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 amended Complaint on March 23, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2018.
The Center appointed Richard Tan as the sole panelist in this matter on April 23, 2018. 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 a company manufacturing and selling jewelry, and is the owner of the trademark PANDORA registered in the European Union in classes 3, 9, 14, 18, 22, 24, 25 and 35. The earliest of these registrations was dated April 17, 2000 (registration no. 000653519).
The disputed domain name was registered on August 31, 2017 and resolves to a website selling products under the Complainant's trademark. 5. Parties' Contentions A. Complainant
The Complainant asserts that its trademark is well-known for high quality jewelry. The disputed domain name is confusingly similar to the Complainant's registered trademark as it incorporates the mark PANDORA with the mere addition of the word "shine".
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been commonly known by the disputed domain name and has not acquired any rights in the disputed domain name.
The Respondent has not been authorized to offer and sell the Complainant's goods.
The Respondent offers on its website to which the disputed domain name resolves counterfeit goods bearing the Complainant's trademark. The goods offered are at a "low price". The Complainant has made purchases of the goods and found them to be a different product from those ordered.
The Respondent has not acted bona fide and has the intention to misleadingly divert consumers to its website for commercial gain and to tarnish the Complainant's trademark. Visitors to the website may be misled into thinking that they are buying original Pandora goods from the Respondent's website.
The disputed domain name was registered and is being used in bad faith. The Respondent has taken unfair advantage of the Complainant's trademark. By offering and selling counterfeit goods bearing the trademark PANDORA on its website the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving each of the following elements:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name is registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, the Panel finds that the Complainant has rights in its trademark PANDORA which has been registered as early as April 17, 2000.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
In this case, the disputed domain name incorporates the Complainant's registered mark PANDORA with the addition of the generic, descriptive term "shine".
It is well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See Section 1.8, WIPO Overview 3.0.
As the dominant feature of the disputed domain name consists of the Complainant's mark, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark and the mere addition of the general descriptive term "shine", is insufficient to prevent a finding of confusing similarity.
With regard to the generic Top-Level Domain ("gTLD") ".com" of the disputed domain name, the gTLD is viewed as a standard registration requirement and as such should be disregarded. See section 1.11.1, WIPO Overview 3.0.
The Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof is on the complainant to establish a lack of rights or legitimate interests on the part of the respondent, where a complainant is able to make out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element of the Policy. See Section 2.1, WIPO Overview 3.0.
The Respondent has not submitted a response to the Complainant's contentions mentioned above.
These contentions include the assertions that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; that the Respondent has not been commonly known by the disputed domain name and has not been authorized to use the Complainant's marks; that the Respondent is using the disputed domain name for the sale of counterfeit goods bearing the Complainant's trademark and is intending for commercial gain to misleadingly divert consumers to its website; and to tarnish the Complainant's trademark. The Complainant has made out a prima facie case. The Respondent has not provided any evidence to the contrary or that would otherwise demonstrate rights or legitimate interests in the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant's trademarks. As also found above, the Respondent has no legitimate interests in the disputed domain name.
The Complainant's assertion that the Respondent's website has been used to sell counterfeit goods has not been refuted by the Respondent. The use of the disputed domain name for a website used for illegitimate or other fraudulent activities constitutes a real ongoing threat to the Complainant and as such, constitutes evidence of bad faith use.
Indeed, on the evidence, the Respondent must have deliberately chosen and used the confusingly similar disputed domain name primarily to ride upon and take unfair advantage of the Complainant's reputation and goodwill by intentionally attempting to attract for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark. As such, this would constitute bad faith registration and use.
In all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard Tan
Sole Panelist
Date: May 7, 2018
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