1.1 The Complainant is Pandora A/S of Copehnagen, Denmark, represented by React, Netherlands.
1.2 The Respondent is “Linda White” of Florida, United States of America (“United States”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 25, 2019.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.
3.4 The Center appointed Matthew S. Harris, Kar Liang Soh and Georges Nahitchevansky as panelists in this matter on March 19, 2019. The Panel finds that it was properly constituted. Each member of 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
4.1 The Complainant is a company incorporated in Denmark. It designs manufactures and markets hand-finished and contemporary jewellery. Its products have been marketed and sold under the “Pandora” name in more than 100 countries and through more than 7,700 points of sale.
4.2 It is the registered owner of various trade marks around the world that either comprise or incorporate the term “Pandora”. These marks include international trade mark registration No. 1004640 for the word mark “PANDORA”, filed on May 14, 2009 in classes 3, 9, 14 and 35. That mark designated and has proceeded to registration in approximately 40 territories, including the European Union, the United States and the Russia Federation.
4.3 The Complainant also is the owner of the domain name , from which it operates a website to promote its products.
4.4 The Domain Name was first registered on December 16, 2014. The registration details for the Domain Name would suggest that it is currently registered in the name of an individual located in the United States, although the way that the Domain Name has been subsequently used raises a question as to whether those registration details accurately record who controls the Domain Name.
4.5 As at the date of this decision a Russian language website operates from the Domain Name that purports to offer for sale the Complainant’s products. The Complainant’s trade mark (in a figurative form) is prominently displayed at the top of each page of this website. However, as far as the Panel can tell the website does not otherwise disclose the person or entity that is operating that website. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to its PANDORA business and marks. It also claims that the Domain Name has been for a website that sells counterfeit PANDORA products. In support of this claim Complainant states that it has undertaken a test purchase of these produces and provides an affidavit that describes how aspects of those products and their packaging differs from that of the Complainant’s genuine goods.
5.2 The Complainant contends that the most prominent element of the Domain Name is its name and mark, to which the non-distinctive geographical term “Russia” has been added. Given this it maintains that the Domain Name “must be considered as identical or very confusingly similar to the Complainant's ‘PANDORA’ mark”.
5.3 The Complainant asserts that the examples of rights and interests set out in paragraph 4(c)(i) and (ii) of the Policy do not apply. It also claims that the way and which the Domain Name has been used demonstrates a lack of such rights or legitimate interests.
5.4 The Complainant further appears to contend that the Domain Name has been used in a way that falls within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy. In this respect in claims that the Domain Name by its very nature misleads Internet users into believing that the associated website operates with the Complainant’s authority when it does not, and that the content of the website operating from the Domain Name is similarly misleading. It also observes that the website fails to disclose the operator’s relationship with the Complainant. This is all said to involve use in bad faith. However, the Complainant does not specifically allege registration in bad faith. B. Respondent 5.5 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant has demonstrated registered trade mark rights in the term “Pandora”. The Panel also accepts that the only sensible reading of the Domain Name is as the term “Pandora” in combination with the geographical term “Russia” and the “.net” generic Top-Level-Domain (“gTLD”). Given this, the trade mark is clearly recognisable in the Domain Name. It follows that the Domain Name is “confusingly similar” (as that term is understood under the Policy) to a trade mark in which the Complainant has rights.
6.5 The Complainant has thereby, made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.6 It is usual for UDRP panels to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.7 The Panel accepts that the Domain Name has been used without the Complainant’s consent for a website that is designed to give the impression to Internet users that it is operated by or associated with the Complainant when it is not. There is nothing on the website that suggests to the Internet user that the website is operated by any other entity and the Complainant’s trade mark is prominently displayed at the top of each web page. Therefore, this is a case where there has been false impersonation of the Complainant.
6.8 Further, the Panel also accepts that the website is being used in order to promote the sale of counterfeit products. The affidavit evidence that has been provided by the Complainant in this respect is detailed and compelling. There is also no evidence before the Panel to the contrary.
6.9 There is no right or legitimate interest in holding a domain name for such a purpose and the use of a domain name in this manner is use in bad faith (see for example, Vestey Group Limited v. George Collins,WIPO Case No. D2008-1308). So far as bad faith use is concerned, the use made of the Domain Name falls within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy.
6.10 The Complainant is also required to show bad faith registration. Unfortunately, this is not directly addressed or alleged in the Complaint. That is a curious and risky omission. Demonstrating bad faith registration is a basic requirement of the Policy, and a failure to address this point not only can result in a failure of a complaint, but in some circumstances can even lead to a finding of reverse domain name hijacking.
6.11 Luckily for the Complainant, the Panel is prepared to adopt a common sense approach to its assessment of this requirement given the particular facts of the case. The Complainant’s marks pre-date the initial registration of the Domain Name and the Complainant points out in the Complainant that its own domain name was registered as long ago as July 1997.
6.12 In the circumstances, the Panel is prepared to infer from the use made of the Domain Name, and in the absence of any argument or evidence to the contrary, that the Domain Name was either registered or acquired by the Respondent for the purpose of impersonating the Complainant with a view to the sale of counterfeit products. That is sufficient for a finding of bad faith registration.
6.13 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
7.1 For 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.
Matthew S. Harris
Presiding Panelist
Kar Liang Soh
Panelist
Georges Nahitchevansky
Panelist
Date: April 2, 2019
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