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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pandora Jewelry, LLC v. Gao Fei

Case No. D2010-1249

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 Gao Fei of Chendu, Sichuan, the People’s Republic of China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 30, 2010, GoDaddy.com, Inc. transmitted by e-mail 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 August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 3, 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 a United States company distributor of jewelry designs created by artisans of the Complainant’s affiliated companies in Denmark, under the trademark PANDORA. Pandora’s jewelry system was first developed in Denmark in 1999, and first marketed outside the United States by an affiliated company of the 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 currently there are thousands of retailers in the United States and worldwide that carry the Complainant’s unique jewelry products under the trademark PANDORA.

The Complainant and its affiliated companies are the owners of various trademarks incorporating PANDORA (collectively, “PANDORA Mark”), including but not limited to the following:

i. United States Trademark Registration No. 3,065,374 covering 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.

ii. United States Trademark Registration No. 3,640,357 covering trademark PANDORA UNFORGETTABLE MOMENTS (stylized with Design) for “jewelry” in Class 14 and “pamphlets, brochures, catalogs in the field of jewelry; paperboards; non-textile paper labels; paper and plastic packaging bags; advertisement poster boards of paper and cardboard” in Class 16, having a first use in commerce date of June 2008 and a registration date of June 16, 2009.

iii. United States Trademark Registration No. 3,613,181 covering trademark PANDORA (stylized with Design) for “jewelry” in Class 14 and “pamphlets, brochures, catalogs in the field of jewelry; paperboards; non-textile paper labels; paper and plastic packaging bags; advertisement poster boards of paper and cardboard” in Class 16, having a first use in commerce date of June 2008 and a registration date of April 28, 2009.

iv. Canadian Trademark Registration No. 707,735 covering trademark PANDORA JEWELRY (stylized) for “jewelry” in Class 14, having a filing date of September 24, 2004 and a registration date of February 19, 2008.

v. Mexican Trademark Registration No. 888,612 covering trademark PANDORA JEWELRY (stylized) in Class 14, having a filing date of March 4, 2005 and a registration date of June 27, 2005.

vi. Japanese Trademark Registration No. 5037381 covering trademark PANDORA JEWELRY (stylized) in Class 14, having a filing date of October 15, 2004 and a registration date of March 30, 2007.

vii. Japanese Trademark Registration No. 5256920 covering trademark PANDORA (stylized with Design) in Class 14, having a filing date of November 28, 2007 and a registration date of August 14, 2009.

viii. Japanese Trademark Registration No. 5256919 covering trademark PANDORA UNFORGETTABLE MOMENTS (stylized with Design) in Class 14, having a filing date of November 28, 2007 and a registration date of August 14, 2009.

The Respondent has registered the disputed domain name on January 26, 2010. The Respondent is located in China.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

- Together with its affiliated companies, the Complainant has extensively advertised and marketed its jewelry products under the PANDORA Mark, 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;

- Together with its affiliated companies, the Complainant has sales of the PANDORA jewelry products in excess of two-hundred million dollars in the United States and nearly twice as much worldwide;

- Pandora jewelry products are sold through more than 10,000 points of sale worldwide;

- The PANDORA Mark has become well-known throughout the world;

- The disputed domain name contains the entire PANDORA JEWELRY name and mark of the Complainant;

- The Respondent’s website at “www.designerpandorajewelry.com” imitates the look and feel of the website at “www.pandora.net”, owned by the Complainant’s affiliate company, as it displays the Complainant’s stylized PANDORA mark prominently at the top of the page and offers products such as “Pandora animal silver bracelet”;

- Not only does the Respondent use the Complainant’s PANDORA Mark in the disputed domain name and throughout its website, its counterfeit jewelry products also display the PANDORA Mark and the Complainant’s copyrighted images;

- The Respondent has not been commonly known by the disputed domain name;

- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain;

- The Respondent registered and is using the disputed domain name in bad faith;

- The Respondent offers for sale and sells counterfeit products falsely using the PANDORA Mark and provides counterfeit copies of Complainant’s packaging materials;

- After learning of the unauthorized registration of a domain name incorporating the PANDORA JEWELRY name and mark in its entirety, on May 3, 2010, the Complainant, through its counsel, Lathrop & Gage LLP, sent a letter via FedEx and e-mail using the registrant information indicated in the WhoIs record for the disputed domain name as well as the e-mail address listed at the website at the disputed domain. By the said letter, the Complainant requested that the Respondent transfer the disputed domain name to the Complainant. The FedEx copy was returned as undeliverable, despite the fact 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 at the e-mail addresses in the WhoIs information and listed at the website at the disputed domain.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

A1. The Complainant holds rights in the PANDORA and PANDORA JEWELRY trademarks.

Based to the evidences presented by the Complainant, the Panel is persuaded that the Complainant holds rights in the PANDORA and PANDORA JEWELRY trademarks for class 14 which covers jewellery.

A2. The disputed domain name is confusingly similar with the Complainant’s PANDORA and PANDORA JEWELRY trademarks.

As the Complainant contends, the disputed domain name contains the entire PANDORA JEWELRY name and mark of the Complainant. The addition of the word “designer”, which is a generic word, to the Complainant’s trademark cannot, in this case, transform the disputed domain name in a distinctive combination in comparison to the Complainant’s trademark. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, Lacoste Alligator S.A. v. Wang Liming, WIPO Case No. D2009-0559.

Moreover, as it has long been held by UDRP panels (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004) the gTLD suffixes do not generally preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.

The Panel finds therefore that the Complainant has proved the first of the three elements that it must establish.

B. Rights or Legitimate Interests

The Panel agrees with the Complainant that the Respondent seems not to hold any rights or legitimate interests in connection to the disputed domain name.

The way the Respondent is using the disputed domain name cannot be considered in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). The Respondent’s website to which the disputed domain name resolves displays the Complainant’s stylized PANDORA mark prominently at the top of the page and offers products such as “Pandora animal silver bracelet”. In addition, the Respondent’s website not only uses the Complainant’s PANDORA Mark in the disputed domain name and throughout its website but also displays the Complainant’s copyrighted images.

The Panel also notes the assertions of the Complainant referring the goods sold at the Respondent’s website are counterfeit as the Complainant and its affiliates have no business connection with the Respondent. Even if the assertion of the Complainant cannot be verified, none of the assertions made by the Complainant were denied by the Respondent, who has failed to file a Response in these proceedings, even though it was properly notified according to the Policy and the Rules.

In the said circumstances, the Panel can only consider, in the absence of any contrary evidence and based also on the silence of the Respondent, that the Respondent’s commercial activities undertaken through the use of the Complainant’s trademarks for goods pretending to be produced by the Complainant does not represent activities which confer rights or legitimate interests upon the Respondent.

As prior UDRP panels (see Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641; Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937) have accepted, the silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain names.

The Complainant further asserts that the Respondent is not, and has never been, commonly known by the disputed domain name. Policy, paragraph 4(c)(ii). The Panel agrees that there is no evidence of the Respondent doing business under the name “designerpandorajewelry.com” at any time prior to registration of the domain on January 26, 2010.

There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Policy, paragraph 4(c)(iii). The Respondent is actually trading on the Complainant’s goodwill and is using the disputed domain name to offer and promote goods pretending to be produced by the Complainant on a site that imitates the look of the Complainant’s affiliate website at “www.pandora.net”.

The Panel finds therefore that the Complainant has proved also the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the Respondent’s bad faith in registering and using the disputed domain name is demonstrated by numerous facts in this case.

The choice of a domain name incorporating the Complainant’s trademark and name PANDORA JEWELRY, the entire appearance of the website under which the disputed domain name resolves, the commercial activity of the Respondent on this website, the use of the Complainant’s PANDORA Mark on this website together with the display of the Complainant’s copyrighted images are in the opinion of the Panel sufficient elements to indicate that the Respondent has knowingly attempted to attract Internet users to the Respondent’s website for financial gain by intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the goods offered or promoted through the Respondent’s website.

Finally, as the Complainant asserts and the Respondent did not deny such assertion, it seems that the Respondent offers for sale and sells counterfeit products falsely using the PANDORA Mark and provides counterfeit copies of the Complainant’s packaging materials. Such conduct is a further element supporting the conclusion that the Respondent registered and is using the domain in bad faith. (See Lacoste Alligator S.A. v. Wang Liming, WIPO Case No. D2009-0559)

The Panel finds therefore that the Complainant has proved also the third element 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 disputed domain name <designerpandorajewelry.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Dated: September 17, 2010

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