WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pandora Jewelry, LLC v. WhoisGuard / Ke Ying
Case No. D2010-1827
1. The Parties
The Complainant is Pandora Jewelry, LLC of Columbia, Maryland, the United States of America, represented by Lathrop & Gage LLP, the United States of America.
The Respondent is WhoisGuard of Westchester, California, the United States of America / Ke Ying of the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <shoppanjewellery.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2010. On October 29, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On November 1, 2010, eNom, Inc. 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 the Complainant on November 3, 2010 providing the registrant and contact information disclosed by eNom, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2010.
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”).
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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on December 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 the distributor in the United States of America of jewelry designs created by artisans of the Complainant’s affiliated companies in Denmark. The Complainant claims that it has, together with its affiliated companies, created a distinctive, unique series of, inter alia, beads, spacers, clips, bracelets and necklaces which are original works of art that capture the “expressive spirit of Scandinavian design”. The jewellery system was first developed in Denmark in 1999 and first marketed outside of the United States of America by an affiliated company in the year 2000. Jewelry bearing the PANDORA trade mark are sold in the primary geographical segments of Europe, the United States of America and Asia Pacific. The Complainant was first formed on January 1, 2003 and there are currently thousands of retailers in the United States of America and worldwide that carry this line of jewelry products.
The Complainant and/or its affiliated companies are the owners of various trade marks incorporating the word PANDORA (“the PANDORA marks”). Details of several registrations of the PANDORA marks (which include the mark PANDORA JEWELRY) were provided in the Complaint, namely registrations in the United States of America, Mexico, Japan and Canada. The Complainant also claims that extensive advertising and marketing of jewelry products under the PANDORA marks have been undertaken, including through its websites at “www.pandora-jewelry.com” and “www.pandora.net”. Sales of Pandora jewelry products have exceeded USD 200 million in the United States of America, and nearly twice as much worldwide.
The Complainant and its affiliated companies carefully control the distribution of Pandora jewelry products through selection of authorized retailers and franchisees. It is asserted in the Complaint that the Respondent is not an authorized retailer, yet its home page at the disputed domain name bears a statement that “Pandora Jewelry is proud to carry the full line of Pandora Bracelets, Pandora Beads, Pandora Charms and other Pandora Jewelry” and allows customers to link to pages within the website for “Pandora By collections”. According to the Complainant, the Respondent sells counterfeit merchandise. The Complainant has submitted evidence that indicates that at the time the Complaint was filed, on the FAQ page on the Respondent’s website, the following extract can be found:
“#Q12: How close are your jewelry to the authentic ones?
A12: The quality of our jewelry is our highest priority. We insist on only manufacturing a design after we have studied the original product for its exact make-up: from its distinct markings to the materials it’s made up of. We manufacture our own replicas exclusively, so that we can oversee the production of each and every item. All our jewelry are thoroughly inspected before shipping to ensure superior quality standards. Each and every one of our jewelry are made with the exact materials as the originals. Every jewelry come complete with all the correct accessories included in the original item, including brand tags, logo, gift boxes, etc. The photographs available on our site are of random sampling from our own stock. This means that the jewelry you receive will be the same as the one you saw in the picture.”
The PANDORA marks appear through the Respondent’s website and the counterfeit jewelry display the PANDORA marks. The Respondent’s website also appears to display the Complainant’s copyrighted images.
The disputed domain name was registered on April 26, 2010.
A cease and desist letter was sent to WhoisGuard on July 26, 2010 by the Complainant’s representative in these proceedings.
5. Parties’ Contentions
The Complainant asserts, firstly, that the disputed domain name is confusingly similar to the Complainant’s PANDORA JEWELRY trade mark in which it has rights.
Reference was made to an earlier UDRP decision, Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642, wherein the panel found that the domain name <panjewellery.com> was a shortened version of the Complainant’s trade mark PANDORA JEWELRY, and held that a slight change in the domain name was not able to dispel the risk of confusing similarity. Further, the Complainant submitted that:
(i) the alternate spelling of “jewelry” does not sufficiently distinguish the disputed domain name from the Complainant’s mark PANDORA JEWELRY;
(ii) the addition of the term “shop” and the generic top level domain name “.com” to a confusingly similar variation of the Complainant’s PANDORA JEWELRY trade mark does not prevent the confusing similarity. The addition of the term “shop” in the disputed domain name, where both the Complainant’s and the Respondent’s businesses involve the sale of jewelry products, actually enhances the confusing similarity.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name:
(i) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is relying on consumers’ recognition of the Complainant’s PANDORA marks to attract consumers to its own website which uses the Complainant’s PANDORA marks without licence or authorization in order to sell counterfeit goods. The Respondent’s misappropriation of another’s trade mark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondent.
(ii) The use of the Complainant’s trade mark in this case is infringing and cannot therefore be considered bona fide use. It is also unfair competitive as it misleads and confuses customers as to the source or origin of the information and products found on the Respondent’s website. These actions of the Respondent will lead consumers to mistakenly believe that the Complainant is the source of the Respondent’s counterfeit jewelry products or that the Respondent’s website is affiliated with, operated by and/or sponsored by the Complainant.
(iii) The Respondent is not, and has never been commonly known by the disputed domain name. There is no evidence of the Respondent doing business under the name <shoppanjewellery.com> at any time prior to April 26, 2010.
(iv) The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is, instead, trading on the Complainant’s goodwill and is using the disputed domain name to offer and promote counterfeit goods. The Respondent is in no way connected with the Complainant and is trading on the Complainant’s PANDORA marks for commercial gain, all to the detriment of consumers and the Complainant.
(v) The Respondent is wrongly seeking to capitalize on the positive reputation associated with the Complainant’s PANDORA marks in the marketplace.
Thirdly, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. This is demonstrated by the following facts:
(a) The Respondent’s purpose in registering the disputed domain name which incorporates a confusingly similar variation of the Complainant’s PANDORA JEWELRY mark is to capitalize on the reputation of the Complainant’s PANDORA marks by diverting Internet users seeking jewelry products under the Complainant’s PANDORA marks to the Respondent’s website whereby consumers may purchase counterfeit goods offered and sold under the PANDORA mark. The offer for sale and selling of counterfeit PANDORA jewelry products is strong evidence of bad faith.
(b) The Complainant started promoting its PANDORA marks through extensive advertising and marketing well before the registration of the disputed domain name.
(c) There is no relationship between the Complainant and the Respondent.
(d) The Complainant has not given the Respondent permission to use its PANDORA marks in a domain name, or to use it in any manner on the Respondent’s website. Such unauthorized use suggests opportunistic bad faith.
(e) Apart from the use of the PANDORA marks on its website without authorization, the Respondent also used the Complainant’s copyrighted material, which further demonstrates that the Respondent was well aware of the Complainant and of the latter’s marketing and advertisements. Such use also contributes to consumer confusion.
(f) The Respondent’s failure to respond to the Complainant’s cease and desist letter constitutes another basis to infer bad faith in the registration and use of the disputed domain name.
(g) 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.
(h) The bad faith registration and use by the Respondent Ke Ying is also demonstrated by the registration of multiple domain names containing the PANDORA marks; Ke Ying has been a respondent in the Complainant’s successful UDRP complaints involving numerous domains containing the PANDORA trade mark including Pandora Jewelry, LLC v. fcg, Xiong Mao, Ke Ying, jh, Lucy Ana, WIPO Case No. D2009-1546; Pandora Jewelry, LLC v. ke ying, WIPO Case No. D2010-1202; Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the trade marks PANDORA and PANDORA JEWELRY, through registrations of the trade marks and use, in respect of jewelry products.
The next question to be looked into is whether the disputed domain name <shoppanjewellery.com> is confusingly similar to the Complainant’s PANDORA marks. The disputed domain name is a combination of three elements: “shop”, “panjewellery” and “.com”. It is well-established in previous UDRP decisions that the generic top level domain “.com” is to be disregarded when considering the issue of identity or confusing similarity. The Panel also accepts as correct the general principle established by numerous earlier UDRP decisions that the addition of a generic or descriptive word to an identical or confusingly similar variation of a complainant’s trade mark does not prevent the confusing similarity. In this instance, bearing in mind the nature of the Respondent’s activity of selling jewelry products, the word “shop” in fact would add to the confusing similarity.
Paragraph 10(a) of the Rules states that “the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”, and paragraph 10(d) of the Rules states that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. In this case, the Panel finds it appropriate to refer to the case cited by the Complainant, Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642, wherein Ke Ying also appears as a respondent. The panel in that case found, without equivocation, that the element “panjewellery” in the domain name was a shortened version of the trade mark PANDORA JEWELRY. The Panel takes cognizance of, and is inclined to agree with the finding made therein. It further agrees with the Complainant’s submission that the alternate spelling of “jewellery” does not serve to remove the existence of confusing similarity. In the premises, the Panel finds the disputed domain name to be confusingly similar to the PANDORA JEWELRY trade mark that the Complainant has rights in.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent did not file any Response and in failing to take advantage of the opportunity presented to show that he has rights or legitimate interests in the disputed domain name, the Panel makes an appropriate inference. The Panel finds that there is prima facie evidence that has been presented by the Complainant that there are no rights or legitimate interests on the part of the Respondent in the disputed domain name. The conclusion cannot be otherwise when one considers the fact that the evidence shows that the Respondent’s website appears to be used to sell counterfeit Pandora jewelry products, apart from the other basic facts that the Respondent has not been licensed or authorized by the Complainant to use the PANDORA marks, nor has it been authorized to register and use the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the disputed domain name. The Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy cites examples of four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on respondent’s web site or location.
The Panel is of the opinion that the Complainant has proven that the registration and use of the disputed domain name have been in bad faith. Amongst other things, the Panel notes that there appears to be a pattern of conduct vis-à-vis the use or incorporation of the Complainant’s PANDORA marks in domain names the Respondent registered, whether alone or jointly with other individuals (e.g. <sale-pandora.com>, <pandorajewellerystore.com>, <salebeadspandoras.com>, <shoppandorabeads.com>, <pandora-mart.com>, etc). From the case record, it is obvious in this case that the Respondent knew of the Complainant’s PANDORA trade marks and the Panel finds that the repeated registration and use of various domain names incorporating the same entity’s trade mark without demonstrating a legitimate interest is a strong indication that the registration was in bad faith. Moreover, it is clear that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and to attract, for commercial gain, Internet users to its website or other on-line location or websites, with the deliberate intention of creating confusion with the Complainant’s PANDORA marks. The registration and use of the disputed domain name for the blatant purpose of selling apparent counterfeit Pandora jewelry products cannot by any means constitute good faith use or registration.
Hence, the Panel is convinced that the disputed domain name has been registered and used in bad faith. Accordingly, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <shoppanjewellery.com> be transferred to the Complainant.
Dated: December 8, 2010