Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America (“United States” of “US”).
Respondent is fcg; xiong mao / WhoisGuard of Shanghai, Peoples Republic of China., WhoisGuard Protected of Westchester, California, United States of America
The disputed domain name <epandorasale.com> (“The Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 14, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2010, eNom. 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 Complainant on January 18, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 22, 2010. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 16, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 22, 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.
Complainant has distributed jewelry in the US since May 2004 and has registered trade marks, inter alia in the US for the mark PANDORA or including that mark. Respondent is selling jewelry on a website connected to the Domain Name which purports to be that of Complainant but Complainant says is counterfeit. The Domain Name was registered in 2009.
Complainant's contentions can be summarized as follows:
a) Complainant is the United States distributor of unique and distinctive jewelry designs created by artisans of Complainant's affiliated companies in Denmark.
(b) Pandora'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.
(c) 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 U.S. and worldwide that carry Complainant's unique jewelry products under the PANDORA Mark.
(d) Pandora or its affiliated companies is/are the owner(s) of various trademarks incorporating “PANDORA”, including, inter alia, marks in the US, Canada, Mexico and Japan, for example: United States Trademark Registration No. 3,065,374 covering Pandora's trademark PANDORA JEWELRY (stylized) for “jewelry” in Class 14, having a first use in commerce date of May 2004 and a registration date of March 7, 2006.
(e) In addition, Pandora and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA Mark, including through the website at “www.pandora-jewelry.com”; television and radio commercials; advertisements in newspapers and magazines; and store circulars, point-of-sale materials and displays. Pandora and its affiliated companies' sales of the PANDORA jewelry products have exceeded two-hundred million dollars in the United States and nearly twice as much worldwide. Further, PANDORA jewelry products are sold through more than 8,000 outlets worldwide.
(f) As a result of such successful sales and widespread advertising by Complainant and its affiliated companies, and the companies' quality jewelry products, the PANDORA Mark has become well-known throughout the world.
(g) Complainant's sister company, Pandora Production Co. Ltd. is the sole manufacturer of all PANDORA jewelry products worldwide, and operates its own production facility. Complainant and its affiliated companies carefully control the distribution of these products through selection of authorized retailers.
(h) Although Respondent is not an authorized retailer, it claims to “provide the authentic Pandora jewelry”. However the goods Respondent sells are counterfeit.
(i) After learning of Respondent's unauthorized registration of a domain name incorporating the PANDORA Mark in its entirety on December 16, 2009, Pandora, through its counsel, Lathrop & Gage LLP, sent a letter via e-mail and Fed-Ex to Respondent's address indicated in the WhoIs record for the disputed domain name. In the December 16 communication, Pandora's counsel advised Respondent that the registration and use of the disputed Domain Name infringes Pandora's trademark rights in the PANDORA Mark and requested that Respondent transfer the disputed domain name to PANDORA. The Fed Ex package was returned, but there was no indication, such as a delivery failure notification or notification that the recipient could not be found, to indicate that the message was not properly transmitted or received by its intended recipient by the e-mail address listed in the WhoIs information.
The Domain Name at issue, <epandorasale.com>, contains the entire PANDORA Mark of Complainant. In light of Complainant's registration and use of the PANDORA Mark and the domain name <pandora-jewelry.com>, Respondent's registration and use of the Domain Name at issue creates a strong likelihood of confusion as to source, sponsorship, association, or endorsement of Respondent's website associated with its domain name <epandoraesale.com>. The addition of the generic terms “e” and “sale” and the generic top level domain “.com” to the PANDORA Mark copied in its entirety does not prevent the likelihood of confusion in this case. Indeed, the addition of the terms “e” and “sale” where both Complainant's and Respondent's businesses involve the sales of jewelry products, actually enhances the likelihood of confusion. Thus, Respondent's domain name is confusingly similar to Complainant's PANDORA Mark within the meaning of the Policy, paragraph 4(a)(i).
Respondent is not using the Domain Name in dispute in connection with a bona fide offering of goods or services. Policy paragraph 4(c)(i). Respondent is relying on consumers' recognition of Complainant's name and mark PANDORA to attract consumers to its own website which uses Complainant's PANDORA Mark without license or authorization of any kind in order to sell counterfeit goods. 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 Respondent. Respondent's use of Complainant's trademark is infringing. Under these circumstances, Respondent's use of the domain name cannot be considered bona fide. Respondent has no authorization from Complainant.
Respondent is not, and has never been, commonly known by the disputed Domain Name. Policy paragraph 4(c)(ii). Respondent cannot provide proof of being commonly known by epandorasale.com.
There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Policy paragraph 4(c)(iii). Clearly, Respondent is trading on Complainant's goodwill and is using the disputed Domain Name <epandorasale.com> to offer and promote counterfeit goods on a site that imitates the look and feel of <pandora-jewelry.com>, all without authorization from Complainant. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). Respondent has no legitimate interest in the disputed domain name containing Complainant's PANDORA Mark, is in no way connected with Complainant, and is trading on Complainant's PANDORA Mark in the Domain Name <epandorasale.com> for commercial gain, all to the detriment of consumers and the rightful trademark owner, Complainant.
Respondent's purpose in registering the disputed Domain Name which incorporates Complainant's PANDORA Mark in its entirety is to capitalize on the reputation of Complainant's PANDORA Mark by diverting Internet users seeking jewelry products under Complainant's PANDORA Mark to Respondent's own website where consumers may purchase counterfeit goods offered and sold under the PANDORA Mark. Respondent has also copied the distinctive stylization of Complainant's mark and displays it prominently on the site attached to the Domain Name. Under these circumstances, the only reasonable conclusion is that Respondent was aware of the PANDORA Mark, but refuses to relinquish ownership of the disputed domain name incorporating Complainant's PANDORA Mark in its entirety or cease diverting Internet users to a website which sells counterfeit jewelry products purporting to be “authentic” Pandora jewelry, all to the confusion of the public and the detriment of Complainant. By operating the website located at “www.epandorasale.com”, Respondent has knowingly attempted to attract Internet users to Respondent's website for financial gain by intentionally creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or the goods offered or promoted through Respondent's web site. Respondent was also respondent in three other successful UDRP complaints brought by Complainant involving the domain names <yespandora.com>, <pandora-mart.com> and <sale-pandora.com>. Accordingly Respondent's bad faith is also demonstrated by the pattern of unauthorised registrations containing Complainant's PANDORA mark.
Respondent did not reply to Complainant's contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Domain Name is confusingly similar to Complainant's trademark consisting of Complainant's PANDORA trademark and the generic terms “e” and “sale”. The distinctive part of the domain name is the PANDORA name. The addition of the non distinctive terms “e” and “sale” does little to prevent the confusing similarity of the Domain Name with Complainant's PANDORA trademark.
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name. In the circumstances of this case, and in view of the Panel's discussion here below, the Panel finds that the second element of the Policy has been established.
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to Complainant's trade marks with only generic terms added and sell jewelry which is not that of Complainant as and for the same. In the absence of a Response from the Respondent, and considering the material attached to the Domain Name the panelist is satisfied that Complainant has shown that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site for commercial gain by creating a likelihood of confusion that its website is connected to Complainant by using a domain name confusingly similar to Complainant's mark and selling jewelry not connected with Complainant as and for the same. Further Respondent would seem to have been involved in a pattern of registrations including Complainant's PANDORA mark which is also an indication of bad faith.
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, <epandorasale.com> be transferred to Complainant.
Dated: March 1, 2010