World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pandora Jewelry, LLC v. France, Paris jie dao

Case No. D2010-1174

1. The Parties

The Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America.

The Respondent is France, Paris jie dao of Chengdu, Sichuan, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <pandoraschmuck.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2010. On July 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, 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.

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 Tobias Zuberbühler as the sole panelist in this matter on August 19, 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 is the United States (U.S.) distributor of jewelry designs created by artisans of affiliated companies in Denmark. The jewelry system of the Complainant’s group (Pandora group) was first developed in Denmark in 1999 and first marketed in the spring of the year 2000. The Complainant was first established in the U.S. on January 1, 2003 to sell Pandora jewelry, and there are currently thousands of retailers in the U.S. and 8,000 retailers worldwide. Sales of the Pandora group have exceeded USD 200 million in the U.S. and nearly USD 400 million worldwide.

The Complainant is the owner of various stylized trademark registrations for PANDORA, PANDORA JEWELRY and other trademarks incorporating “Pandora”. The first registration in the U.S. was granted on March 7, 2006, with a first use in commerce of May 2004. The Pandora group and its affiliates have registered various corresponding trademarks in other jurisdictions.

The Pandora group markets its products through the websites “www.pandora-jewelry.com” and “www.pandora.net”, television and radio commercials and other advertising and marketing methods. The Complainant submits that the trademark PANDORA has become well-known throughout the world.

The disputed domain name was registered on January 11, 2010. According to a screenshot taken on June 1, 2010, the corresponding (German language) website offered Pandora products under the Complainant’s trademarks. The Complainant submits that the products shown on the Complainant’s website are counterfeit.

5. Parties’ Contentions

A. Complainant

The disputed domain name contains the entire PANDORA trademark of the Complainant. The addition of the term “schmuck”, which means “jewelry” in German, where both the Complainant’s and the Respondent’s business involve the sales of jewelry products, actually enhances the likelihood of confusion. Furthermore, the disputed domain name is the identical language equivalent to the Complainant’s PANDORA JEWELRY name and trademark. The disputed domain name is thus confusingly similar to the trademarks of the Complainant.

The unauthorized appropriation of the Complainant’s trademark in a domain name and the commercial use of the corresponding website cannot confer any rights or legitimate interests upon the Respondent. Furthermore, the Respondent is not, and has never been, commonly known by the disputed domain name.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to attract, for commercial gain, Internet users to its website. The actions undertaken by the Respondent will likely lead consumers to believe mistakenly that the Complainant is the source of the Respondent’s counterfeit jewelry products offered under the PANDORA trademark or that the Respondent’s use of the PANDORA trademark in the disputed domain name and website is affiliated with or sponsored by the Complainant. The Respondent wrongly seeks to capitalize on the positive reputation associated with the Complainant’s PANDORA trademark in the marketplace and has not merely appropriated the PANDORA trademark in plain text form, but has also copied the distinct stylization of the Complainant’s trademark PANDORA UNFORGETTABLE MOMENTS and displayed it prominently on the website identified by the disputed domain name. Rather than selling genuine products authorized by the Complainant, the Respondent offers for sale counterfeit products falsely using the PANDORA trademark, further supporting the conclusion that the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

As a WIPO case search with the term “pandora” shows, 18 UDRP proceedings have been initiated by the Complainant in connection with its PANDORA trademark. The 13 cases decided to date concerned 24 domain names, 23 of which contained the trademark PANDORA with a generic prefix or suffix. All of the respective domain names were transferred.

The Panel finds that this case is no different than the others in that the addition of a generic word (“schmuck”) to the trade mark PANDORA does not alter the fact that the disputed domain name is confusingly similar to the trademark. Furthermore, the disputed domain name is an exact German translation of the Complainant’s PANDORA JEWELRY trademark.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.

The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name is connected to a website selling products seemingly identical to those of the Complainant. The Complainant submits that the offered products are counterfeit.

In the Panel’s view, it is evident that the Respondent’s only purpose in registering the disputed domain name was to divert traffic away from the Complainant’s websites to its own website for commercial gain, by selling either (i) counterfeit products or (ii) the Complainant’s products to German speaking Internet users without any authorization. Such activity clearly falls within the terms of paragraph 4(b)(iv) of the Policy.

It may also be concluded that the Respondent knew of the existence of the Complainant’s trademarks and their significance when the disputed domain name was registered.

Under the circumstances, the Panel finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy.

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 <pandoraschmuck.net> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Dated: August 31, 2010

 

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