World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pandora Jewelry, LLC v. Whois Privacy Protection

Service, Inc. / - Cook Song

Case No. D2010-1176

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 Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America and - Cook Song of Shanghai, the People’s Republic of China (the “Respondent”).

2. The Domain Names and Registrar

The disputed domain names <cheapandora.com> and <cheapandorajewelry.com> are registered with eNom.

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 eNom a request for registrar verification in connection with the disputed domain names. On July 16, 2010 eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2020 providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 27, 2010.

The Center verified that the Complaint and 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 the Respondent of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.

The Center appointed Daniel Peña as the sole panelist in this matter on September 7, 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 distributor of jewelry designs created by artisans of Complainant’s affiliated companies in Denmark.

The Complainant or its affiliated companies have created a series of beads, spacers, clips, bracelets, and necklaces which are each original works of art that capture the expressive spirit of Scandinavian design, as well as other jewelry products.

The Complainant’s ultimate corporate parent sells Pandora jewelry products in the primary geographical segments of Europe, the United States, and Asia Pacific.

The Complainant’s 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.

The 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 United States and worldwide that carry Complainant’s unique jewelry products under the trademark PANDORA.

The Complainant is the owner of United States Patent Number 7,007,507 (“507 Patent”), entitled Necklaces and Bracelets with Keepers, which was duly, validly, and legally issued to Complainant on March 7, 2006. The 507 Patent is directed to a strand jewelry device and a process of reversibly restricting the movement of ornaments on strands.

The Complainant or its affiliated companies own, among others, the following trademark registrations:

TRADEMARK

REG. No.

Class

(Int’l)

DATE OF REGISTRATION

COUNTRY

PANDORA JEWELRY

3065374

14

March 7, 2006

United States

PANDORA UNFORGETTABLE MOMENTS

3640357

14 and 16

June 16, 2009

United States

PANDORA

3613181

14 and 16

April 28, 2009

United States

PANDORA JEWELRY

TMA707735

14

February 19, 2008

Canada

PANDORA JEWELRY

888612

14

June 27, 2005

Mexico

PANDORA JEWELRY

5037381

14

March 30, 2007

Japan

PANDORA

5256920

14

August 14, 2009

Japan

PANDORA UNFORGETTABLE MOMENTS

5256919

14

August 14, 2009

Japan

=dft3

The Complainant and its affiliated companies have advertised and marketed its jewelry products under the PANDORA trademark, including through the websites at “www.pandora-jewelry.com” and “www.pandora.net”; television and radio commercials; advertisements in newspapers and magazines; and store circulars, point-of-sale materials and displays

The disputed domain names were both registered on May 3, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are identical or confusingly similar to the PANDORA trademark, owned by the Complainant, seeing that they incorporate the trademark as a whole.

The Complainant further argues that it has exclusive rights in the PANDORA trademark and that this trademark is widely associated with the Complainant and the Complainant's affiliated companies, and with their operation. Furthermore, the Complainant argues that it did not have a relationship with the Respondent nor has it licensed or permitted the Respondent to use the PANDORA mark

In the Complainant’s view the Respondent is not making a legitimate noncommercial use of the disputed domain names. The Complainant further argues that the Respondent has not used the disputed domain names for a bona fide offering of goods.

The Complainant further argues that the Respondent is using the websites associated with the disputed domain names for the sale of counterfeit goods, which carry the PANDORA logo. Its counterfeit jewelry products also display the PANDORA trademark. The Complainant argues that this is evidence of the Respondent's bad faith.

Respondent’s websites “www.cheapandora.com” and “www.cheapandorajewelry.com” also display Complainant’s copyrighted images.

The Complainant submits that the Respondent’s websites at “www.cheapandora.com” and “www.cheapandorajewelry.com” imitate the look and feel of the website at “www.pandora.net”, owned by Complainant’s affiliate company. This imitation is accomplished by, among other things, prominent display of Complainant’s stylized PANDORA trademark

In the Complainant’s view the disputed domain names are likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.

The Complainant submits that Respondent is the same entity that the former registrants of the domain names <pandora4sale.com> and <pandoraonsale.com>, which were both ordered to be transferred to Complainant following prior UDRP proceedings.

For the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain names transferred, the Complainant must show the following per the Policy, paragraph 4(a):

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and is being used in bad faith.

The Complainant bears the burden of proof for each of these elements.

A. Identical or Confusingly Similar

The Complainant has evidenced registrations for the trademarks PANDORA and PANDORA JEWELRY, among others, in several countries including United States of America, Mexico, Canada and Japan.

The disputed domain name <cheapandora.com> contains the Complainant’s distinctive trademark PANDORA in its entirety, and the disputed domain name <cheapandorajewelry.com> contains the Complainant’s distinctive trademark PANDORA JEWELRY in its entirety. Thus, the addition of the expression “chea” as prefix in both cases, to suggest at the end the overall impression of the wording “cheap”, does not alter the fact that the domain names are confusingly similar to the Complainant’s trademarks.

It is also well accepted that top-level domain denomination, in this case “.com” may be ignored when assessing identity or confusing similarity of a trademark and domain name.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant is required to make out an initial 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 Policy.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names.

With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate

noncommercial or fair use of the disputed domain names and has not used the disputed domain names in connection with a bona fide offering of goods or services.

Furthermore, in this Panel’s view, the Complainant has provided evidence that the disputed domain names have been used by the Respondent to offer for sale what appears to be unauthorized counterfeit goods and, in the case of <cheapandorajewelry.com>, unauthorized counterfeit packaging, falsely under the PANDORA trademark.

In the absence of a response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).

The Panel finds that the Respondent registered the disputed domain names which correspond to widely used trademarks in the jewelry’s design and manufacture sector with prior knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s marks would have registered a domain name including therein the distinctive expressions “Pandora” and “Pandora Jewelry” as such.

In addition, the fact that the Respondent’s websites are affiliated with the selling of products marked with trademark PANDORA probably infringing Complainant’s industrial property rights, shows the Respondent’s intent, for commercial gain, to re-direct Internet users, especially potential customers of the Complainant to active web pages without any relationship with the owner of the trademarks PANDORA and PANDORA JEWELRY.

In this Panel’s view, these facts lead to the risk of deception and confusion since it could give the impression that the websites hosted at “www.cheapandora.com” and “www.cheapandorajewelry.com” are somehow endorsed by the Complainant.

The Respondent’s bad faith in registering and using the disputed domain names is further evidenced by the Respondent’s use of the Complainant’s copyrighted images, fonts, and positioning of the Complainant’s PANDORA trademark or an imitation thereof on the home pages of the websites “www.cheapandora.com” and ”www.cheapandorajewelry.com” in a manner that imitates the look and feel of the website ”www.pandora.net”, and, therefore, further contributes to consumer confusion.

Given the particular circumstances of this case, the Panel finds that the use of a privacy service to conceal the Respondent’s identity is further evidence of the Respondent’s bad faith.

Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the disputed domain names were registered and used in bad faith.

The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.

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 names <cheapandora.com> and <cheapandorajewelry.com>, be transferred to the Complainant.

Daniel Peña
Sole Panelist
Dated: September 18, 2010

 

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