The Complainant is Pandora Jewelry, LLC of Maryland, United States of America represented by Suzanna M. M. Morales of United States of America.
The Respondent is Peng Wang of Shanghai, the People's Republic of China.
The disputed domain name <pandorajewelrycom.com> is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2010. On April 19, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On April 20, 2010, Xin Net Technology Corp. transmitted by email 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 April 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on May 27, 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.
The Complaint was submitted in English. Pursuant to Rules, paragraph 11, in the absence of an agreement between 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. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On April 21, 2010, the Center transmitted an email to the parties in both Chinese and English with respect to the language of proceedings. On April 22, 2010, the Complainant submitted a request that English be the language of proceedings, to which the Respondent has not objected. The disputed domain name resolves to a website that does business in English and the Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Given the provided submissions and circumstances of this case the Center decided to accept the Complaint filed in English. Having provided both parties with an opportunity to comment, the Panel chooses at its discretion to render the decision in English.
The Complainant is the United States distributor of jewelry designs created by artisans of Complainant's affiliated companies in Denmark. Complainant was first formed in the United States on January 1, 2003 and sells PANDORA branded jewelry. It has thousands of retailers in the United States and worldwide that carry the Complainant's unique jewelry products under the PANDORA trademark.
The Complainant owns the following trademark registrations:
Trademark | Registration | Registration Date | Country |
|
PANDORA JEWELRY (stylized) |
3,065,374 |
March 7, 2006 |
United States |
|
PANDORA JEWELRY (stylized) |
3,065,374 |
March 7, 2006 |
United States |
|
PANDORA (stylized with design) |
3,613,181 |
April 28, 2009 |
United States |
|
PANDORA UNFORGETTABLE MOMENTS (stylized with design) |
3,640,357 |
June 16, 2009 |
United States |
|
PANDORA JEWELRY (stylized) |
707,735 |
February 19, 2008 |
Canada |
|
PANDORA JEWELRY (stylized) |
5037381 |
March 30, 2007 |
Japan |
|
PANDORA (stylized with design) |
5256920 |
August 14, 2009 |
Japan |
|
PANDORA UNFORGETTABLE MOMENTS (stylized with design) |
5256919 |
August 14, 2009 |
Japan |
The Respondent registered the disputed domain name <pandorajewelrycom.com> on November 5, 2009.
The Disputed Domain Name Is Confusingly Similar to the Complainant's Mark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark to which the Complainant has rights, and creates a strong likelihood of confusion as to source, sponsorship, association, or endorsement of the Respondent's website associated with the disputed domain name <pandorajewelrycom.com.> The Complainant points to the fact that the disputed domain name contains the entire PANDORA JEWELRY trademark with only an addition of the term “com”, which does not remove the likelihood of confusion.
The Respondent Has No Rights Or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, nor is the Respondent connected with the Complainant in any way. The Complainant has not licensed nor has it given permission to the Respondent to use the name and mark PANDORA JEWELRY in its domain name.
The Complainant contends that the Respondent has not used the disputed domain name for a bona fide offering of goods or services, but is rather simply relying on consumers' recognition of Complainant's PANDORA trademark to attract consumers to its own website which uses the Complainant's PANDORA trademark without license or authorization of any kind in order to sell counterfeit goods.
Moreover, the Complainant contends that the Respondent is not commonly known by the disputed domain name and, thus, does not have any rights or legitimate interests in the disputed domain name on that basis.
In addition, the Complainant contends that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, but rather is simply trading on Complainant's goodwill and is using the disputed domain name to offer and promote counterfeit goods through the use of Complainant's trademark, all without authorization from the Complainant.
The Complainant contends that Pandora and its affiliated companies have extensively advertised and marketed its jewelry products under the PANDORA trademark, including through the website at “www.pandora-jewelry.com”, television and radio commercials, advertisements in newspapers and magazines, and store circulars, and point-of-sale materials and displays. The Complainant also contends that as a result of its successful sales and widespread advertising the PANDORA trademark has become well-known throughout the world.
The Complainant also contends that the products sold through the website “www.pandorajewelrycom.com” are counterfeit and the Respondent offers for sale unauthorized counterfeits of complainant's packaging materials. Further, the Complainant asserts that the website “www.pandorajewelrycom.com” also displays the Complainant's copyrighted images, as well as imitates the overall look and feel of the Complainant's website through the use of a color scheme and background similar to the Complainant's website such that it contributes to consumer confusion. Hence, the Respondent uses the disputed domain name to divert Internet users to a website which sells counterfeit jewelry products and other jewelry products, all to the confusion of the public and the detriment of the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant is the owner of the trademark PANDORA JEWELRY in various jurisdictions. Compared to the Complainant's trademark, the disputed domain name <pandorajewelrycom.com> completely reproduces the trademark with the only difference being the mere addition after “pandorajewelry”of a generic term, “com”, a reference to a company or the generic top level domain “.com”. The addition of the term “com” to the mark PANDORA JEWELRY copied in its entirety does not prevent the likelihood of confusion in this case.
The Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
Information in the record indicates that the disputed domain name is linked to webpages used to sell jewelry products for commercial gain. The record also shows that the PANDORA trademark has acquired a level of fame worldwide and the Respondent has no legitimate affiliation with the Complainant. The fact that the website “www.pandorajewelrycom.com” displays the Complainant's copyrighted images, as well as imitates the overall look and feel of the Complainant's website through the use of a color scheme and background similar to the Complainant's website highly suggests that the Respondent was indeed aware of the Complainant and the Complainant's marketing of its products. Given the similarity between the disputed domain name and the trademark name, and the lack of any record suggesting the Respondent's rights or legitimate interests in the disputed domain name, the use of the Complainant's distinctive stylized PANDORA trademark and copyrighted materials on the Respondent's website, it is not unreasonable to believe that the Respondent registered and used the disputed domain name in an attempt to attract Internet users, for commercial gain, to its own website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website. This falls directly under paragraph 4(b)(iv) regarding the Respondent's bad faith in registering and using the disputed domain name.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii)
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 <pandorajewelrycom.com> be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: June 17, 2010