Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America (“United States” of “US”).
Respondent is David Lee of Nanning Guangxi, People's Republic of China.
The disputed domain name <pandora4sale.com> (The “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 14, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On January 14, 2010, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2010. The Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 17, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 22, 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.
Complainant has distributed jewelry in the US since May 2004 and has registered trade marks, inter alia, in the US for the mark PANDORA or including that mark. The Respondent is selling jewelry on a site connected to the Domain Name which purports to be that of Complainant but Complainant says is counterfeit. The Domain Name was registered in 2009.
The Complainant's contentions can be summarized as follows:
(a) Complainant is the United States distributor of unique and distinctive jewelry designs created by artisans of Complainant's affiliated companies in Denmark.
(b) Pandora's unique 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.
(c) 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 U.S. and worldwide that carry Complainant's unique jewelry products under the PANDORA Mark.
(d) Pandora or its affiliated companies is/are the owner(s) of various trademarks incorporating “pandora”, including, inter alia, marks in the US, Canada, Mexico and Japan, for example: United States Trademark Registration No. 3,065,374 covering Pandora's 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.
(e) In addition, Pandora and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA Mark, including through the website at “www.pandora-jewelry.com”; television and radio commercials; advertisements in newspapers and magazines; and store circulars, point-of-sale materials and displays. Pandora and its affiliated companies' sales of the PANDORA jewelry products have exceeded two-hundred million dollars in the United States and nearly twice as much worldwide. Further, PANDORA jewelry products are sold through more than 8,000 outlets worldwide.
(f) As a result of such successful sales and widespread advertising by Complainant and its affiliated companies, and the companies' quality jewelry products, the PANDORA Mark has become well-known throughout the world.
(g) Complainant's sister company, Pandora Production Co. Ltd. is the sole manufacturer of all PANDORA jewelry products worldwide, and operates its own production facility. Complainant and its affiliated companies carefully control the distribution of these products through selection of authorized retailers.
(h) Although Respondent is not an authorized retailer, its home page at “www.pandora4sale.com” allows customers to link to pages within the website for “Pandora necklaces,” “Pandora bracelets”, “Pandora bangles,” and “Pandora packages”. Further, Respondent's “About Us” page states that “Pandora Jewelry is one of our products.”. Nonetheless, it is not until a customer views Respondent's “FAQ” page that Respondent reveals that its products in fact are not authentic Pandora Jewelry. Respondent not only sells counterfeit merchandise, it falsely claims that its products are made in Complainant's manufacturing facilities.
(i) A sample of the counterfeit product ordered from Respondent's website prominently displays Complainant's PANDORA Mark. Further, the product was delivered with unauthorized imitations of Complainant's packaging. Moreover, Respondent's counterfeit products were delivered with package inserts advertising competitive jewelry products and unrelated products.
(j) In addition to using Complainant's PANDORA Mark in the Domain Name and displaying Complainant's PANDORA Mark on the website “www.pandora4sale.com”, Respondent's website “www.pandora4sale.com” also displays Complainant's copyrighted images. In addition to displaying Complainant's own images in a confusing manner on Respondent's website, Respondent actually claims Complainant's images as Respondent's own on Respondent's “TERMS & CONDITIONS” page, further increasing the likelihood of confusion.
(k) The Respondent's website at “www.pandora4sale.com” imitates the look and feel of the website at “www.pandora-jewelry.com”, owned by Complainant's affiliate company. This imitation is accomplished by, among other things, prominent display of Complainant's stylized PANDORA mark in the upper left corner of the home page, use of Complainant's images throughout the site, similar colour scheme, similar font, and, of course, Respondent's offers to sell counterfeit jewelry products imitating Complainant's jewelry products.
(l) After learning of Respondent's unauthorized registration of a domain name incorporating the PANDORA Mark in its entirety and Respondent's confusing use of Complainant's own images, on December 21, 2009, Pandora, through its counsel, Lathrop & Gage LLP, sent a letter via facsimile and e-mail to Respondent's address indicated in the WhoIs record for the Domain Name. In the December 21 communication, Pandora's counsel advised Respondent that the registration and use of the Domain Name infringes Pandora's trademark rights in the PANDORA Mark and requested that Respondent transfer the Domain Name to PANDORA. Pandora's counsel also advised Respondent that the images displayed on Respondent's website violate Pandora's rights in its registered copyrights, and that Respondent's products infringe Pandora's patent. Complainant's counsel received a delivery failure notification as to the facsimile copy, but 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 address listed in the WhoIs information.
The Domain Name, <pandora4sale.com> contains the entire PANDORA Mark of Complainant. In light of Complainant's registration and use of the PANDORA Mark and the domain name <pandora-jewelry.com>, Respondent's registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association, or endorsement of Respondent's website associated with its domain name <pandora4sale.com>. The addition of the term “4sale” and the generic top level domain “.com” to the PANDORA Mark copied in its entirety does not prevent the likelihood of confusion in this case. Indeed, the addition of the term “4sale,” where both Complainant's and Respondent's businesses involve the sales of jewelry products, actually enhances the likelihood of confusion. Thus, Respondent's domain name is confusingly similar to Complainant's PANDORA Mark within the meaning of the Policy, paragraph 4(a)(i).
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Policy paragraph 4(c)(i). Respondent is relying on consumers' recognition of Complainant's name and mark PANDORA to attract consumers to its own website which uses the Complainant's PANDORA Mark without license or authorization of any kind in order to sell counterfeit goods. The unauthorized appropriation of another's trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. Respondent's use of Complainant's trademark is infringing. Under these circumstances, Respondent's use of the Domain Name cannot be considered bona fide. Respondent has no authorization from Complainant.
The Respondent is not, and has never been, commonly known by the Domain Name. Policy paragraph 4(c)(ii). Respondent cannot provide proof of being commonly known by <pandora4sale.com>.
There is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Policy, paragraph 4(c)(iii). Clearly, Respondent is trading on Complainant's goodwill and is using the Domain Name <pandora4sale.com> to offer and promote counterfeit goods on a site that imitates the look and feel of <pandora-jewelry.com>, all without authorization from the Complainant. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). Respondent has no legitimate interests in the Domain Name containing Complainant's PANDORA Mark, is in no way connected with Complainant, and is trading on Complainant's PANDORA Mark in the domain name <pandora4sale.com> for commercial gain, all to the detriment of Internet users and the rightful trademark owner, the Complainant.
Respondent's purpose in registering the Domain Name which incorporates Complainant's PANDORA Mark in its entirety is to capitalize on the reputation of Complainant's PANDORA Mark by diverting Internet users seeking jewelry products under Complainant's PANDORA Mark to Respondent's own website where consumers may purchase counterfeit goods offered and sold under the PANDORA Mark. The irrefutable bad faith of Respondent's acts is clearly evident from the fact that in addition to using Complainant's PANDORA Mark in both stylized and unstylized forms, Respondent also uses Pandora's copyrighted images, further illustrating that Respondent was indeed aware of Complainant and Complainant's marketing of its products. Under these circumstances, the only reasonable conclusion is that Respondent was aware of the PANDORA Mark, but refuses to relinquish ownership of the Domain Name incorporating Complainant's PANDORA Mark in its entirety or cease diverting Internet users to a website which sells counterfeit jewelry products, all to the confusion of the public and the detriment of Complainant. By operating the website located at “www.pandora4sale.com”, Respondent has knowingly attempted to attract Internet users to 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 Respondent's website or the goods offered or promoted through Respondent's website.
Respondent's bad faith in registering and using the Domain Name is further illustrated by Respondent's use of Complainant's copyrighted images, fonts, and positioning of Complainant's PANDORA Mark on the home page of the website “www.pandora4sale.com” in a manner that imitates the look and feel of the website “www.pandora-jewelry.com”, and, therefore, further contributes to consumer confusion. Moreover, Respondent claims Complainant's own images as belonging to Respondent, furthering the confusion promoted by Respondent's use of Complainant's PANDORA Mark. Even if a consumer later reads the “FAQ” page at “www.pandora4sale.com” and realizes that Respondent's products are so-called “replicas,” that does not mitigate the confusion caused by Respondent's use of Complainant's PANDORA Mark and images. Respondent's unclear description of the nature of its products cannot be said to rise even to the level of a disclaimer, and, indeed, Respondent appears to claim that its products are manufactured in the same facilities as Complainant's. Importantly, any indication that Respondent is not selling Complainant's genuine PANDORA jewelry products is not on the home page or any shopping page, and is instead buried deep in Respondent's website, leaving very little possibility that a consumer will realize that Respondent is selling counterfeit products before purchasing Respondent's products, if at all.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Domain Name is confusingly similar to the Complainant's trademark consisting of the Complainant's PANDORA trademark and the generic text “-4sale”. The distinctive part of the Domain Name is the PANDORA name. The addition of the non-distinctive text “4 sale” does nothing to prevent the confusing similarity of the Domain Name with the Complainant's PANDORA trademark.
The Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the Domain Name. In the circumstances of this case, and in view of the Panel's discussion here below, the Panel finds that the second element of the Policy has been established.
Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant's trade marks and sell jewelry which is not that of Complainant as and for the same. In the absence of a Response from Respondent, and considering the material attached to the Domain Name the Panel is satisfied that Complainant has shown that Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site for commercial gain by creating a likelihood of confusion that its website is connected to Complainant by using a domain name identical to the Complainant's mark and selling jewelry not connected with Complainant as and for the same.
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 <pandora4sale.com> be transferred to the Complainant.
Dated: March 1, 2010