WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pandora Jewelry, LLC v. Bai Lin Ke Ji
Case No. D2010-1909
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 Bai Lin Ke Ji of Yunnan, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <ukpandora.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 9, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2010, 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. On November 12, 2010, the Center notified the parties by email in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date specified by the Center.
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 November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 5, 2011. 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 owner of numerous trade marks embodying or substantially comprising the word “Pandora” (“the PANDORA Mark”). These registrations include, in particular, the following:
(a) United States trade mark registration No. 3065374 for the mark PANDORA JEWELRY with a disclaimer of the word “jewelry” which was filed on September 21, 2004 and registered on March 7, 2006 in respect of certain goods under Class 14;
(b) United States trade mark registration No. 3613181 for the mark which consists of the word “Pandora” with a stylized icon used in the place of the letter “o” within that word “Pandora” filed on August 9, 2007 and registered on April 28, 2009 in respect of certain goods under Classes 14 and 16 respectively.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid PANDORA mark occurred well over 4 years before the registration of the disputed domain name <ukpandora.com> on August 2, 2010.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Exhibit1 to the Complaint), the website to which the disputed domain name resolves or diverts (as provided in Exhibits 20, 22 and 23 to the Complaint) and the WhoIs database search results updated to November 18, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant has rights in its said PANDORA mark. It has registered the said mark in various countries including United States of America (“U.S.”), Canada, Mexico and Japan. The Complainant has also registered domain names consisting of or comprising the word “Pandora” including <pandora.net> and <pandora-jewellery.com>. Its jewelry products are being sold under the PANDORA Mark in the primary segments of Europe, the United States and Asia Pacific with thousands of authorized retailers in the U.S. and worldwide. The Complainant and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA Mark, through the websites at “www.pandora-jewellery.com” and “www.pandora.net”; television and radio commercials, newspaper and magazines. The sales of PANDORA jewelry products through over 10,000 points of sales worldwide exceeded USD600 million in 2009.
The Complainant also alleges that the Respondent’s website is similar to the Complainant’s authentic website using the Complainant’s PANDORA Mark in stylized form and the Complainant’s copyrighted images as well as claiming to carry the Complainant’s LOVEPODS brand jewelry products. These are deceiving potential customers into believing the website offers authentic PANDORA products for sale when they are not.
The Respondent has registered the domain name in dispute to facilitate the sale of counterfeit Pandora products. It is for seeking commercial gain.
The Respondent has intentionally attempted to attract Internet users to its website by creating the impression that the website is authorised or endorsed by the Complainant or is otherwise affiliated with the Complainant.
The Respondent is not an authorised dealer of genuine Pandora products. The disputed domain name directs visitors to the website at “www.ukonlinejewellery.com” which offers “Pandora Silver Chain”, “Pandora Sterling Sliver Safety Chain” and other products which are counterfeits.
The disputed domain name <ukpandora.com> is identical or confusingly similar to the Complainant’s said trade mark PANDORA. The disputed domain name incorporates the whole of the PANDORA trade mark. Inclusion of the non-distinctive word “uk” does not distinguish it from the trade mark PANDORA.
There is no evidence to show that the Respondent is commonly known by the disputed domain name. The way in which the Respondent’s website is used shows that the disputed domain name is not being used in connection with a bona fide offering of goods or services before any notice of dispute. It also does not demonstrate any legitimate noncommercial or fair use.
Consumers are misled to visit the site via the use of the disputed domain name which is confusingly similar with the Complainant’s PANDORA trade mark.
The Complainant claims that the trade mark PANDORA is well-known throughout the world which the Respondent must actually or ought to be aware of.
A cease and desist letter was issued to the Respondent by the Complainant’s legal representative demanding cessation of use of the disputed domain name and its transfer to the Complainant on September 1, 2010. The Respondent did not reply to such letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Exhibit 1 to the Complaint, which was filed on November 9, 2010 and the WhoIs search result updated to November 18, 2010 as provided by the Center (“the Data Base Records”).
Such contact particulars in the Data Base Records also agree with the answers to Request for Registrar Verification provided by the Registrar to the Centre on November 10, 2010.
On November 18, 2010, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint including exhibits to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded Written Notice of the Proceedings in accordance with the relevant contact details to the post and facsimile addresses for the Respondent.
The Panel finds that as long as the Complainant (or the Center as the case may be) has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Database Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of November 12, 2010 to both parties concerning the language of proceeding, the Complainant filed a request confirming their request for English to be the language of this administrative proceeding on November 12, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that:
The website to which the disputed domain name resolves is an English based website. So far as the Respondent is doing business in English and its website conducts business in English, it is reasonable for this proceeding to be conducted in English.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters (being a combination of (i) “UK” the abbreviation for United Kingdom and (ii) the English mark of the Complainant; (b) the Respondent has provided the contact details in English to the Registrar; and (c) the entire contents of the website to which the disputed domain name resolves (as shown in Exhibits 20, 22 and 23 to the Complaint) is in English.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in its trade mark which essentially consists of the word “Pandora” by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark which essentially consists of the word “Pandora”. The addition of the two letters “UK” being an abbreviation for United Kingdom as a prefix is not sufficient to distinguish the disputed domain name from the Complainant’s said PANDORA trade mark. To the contrary, the two letters “UK”, being an abbreviation for United Kingdom, suggests connection with the United Kingdom where the Complainant has business. It is also well-established practice to disregard the top-level part of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence of the Complainant’s asserted registration and use of the registered trade mark which essentially consists of the word “Pandora” well before the Respondent’s registration of the disputed domain name <ukpandora.com> on August 2, 2010. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <ukpandora.com>. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt the word “ukpandora.com” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
There is no evidence that the disputed domain name has been actively used by the Respondent as a website for either a legitimate noncommercial or fair use purpose. The disputed domain name diverts to the site at “www.ukonlinejewelry.com”. The printout of the website as shown in Exhibits 20, 22 and 23 to the Complaint showed the offering of competing products using the Complainant’s mark PANDORA (with the stylized letter “o”) and its copyrighted photographs, which were not authorized by the Complainant. These are deliberate acts. In the absence of any evidence to the contrary, it appears that the Respondent was not using the disputed domain name for a purpose other than commercial gain.
Given the Complainant’s uncontradicted claim of registration of its said PANDORA mark and apparent use of that mark for years before the registration of the disputed domain name in 2010, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence.
In this Panel’s view, it is also not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the present record.
It is also the Complainant’s uncontradicted claims that goods of the same types marketed by the Respondent appearing in the website of “www.ukonlinejewelry.com” to which the disputed domain name diverts are counterfeits which result in the public being misled into believing that such products, are associated or otherwise connected with the Complainant. The Respondent has registered the disputed domain name and allowed the operators of the site, to which the disputed domain name resolves or diverts, to use it primarily for selling goods in a way which necessarily disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith 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 disputed domain name <ukpandora.com> be transferred to the Complainant.
C. K. Kwong
Dated: January 19, 2011