WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pandora Jewelry, LLC v. Zou Da /邹大/ Private Protection Co.LTD
Case No. D2010-1997
1. The Parties
The Complainant is Pandora Jewelry, LLC of Maryland, United States of America, represented by Lathrop & Gage LLP of United States of America.
The Respondent is Zou Da / 邹大 / Private Protection Co.LTD of HaErBin, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <pandorajewellerys.com> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 22, 2010, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 25, 2010, Todaynic.com, 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 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 1, 2010.
The Center verified that both the Complaint and amended 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 December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Christian Pirker as the sole panelist in this matter on January 11, 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, Pandora Jewelry LLC, is a United State distributor of jewelry designs created by artisans of Complaint’s affiliated companies in Denmark. In particular, Complainant and its affiliated companies have created a distinctive series of beads, spacers, clips, bracelets and necklaces.
Complainant’s products are sold in the primary geographical segments of Europe, the United States and Asia Pacific through corporate parent.
Complainant was formed in the United States on January 1, 2003 in order to sell Pandora Jewelry. There are currently thousands of authorized retailers of Pandora Jewelry in the United States and worldwide.
Complainant and its affiliated companies is the owner of various trademarks incorporating the word PANDORA including but not limited to the following:
- United States Trademark Registration No 3’065’374, PANDORA Jewelry, in Class 14, registered in March, 7, 2006;
- United States Trademark Registration No 3’613’181, PANDORA, in Classes 14 and 16, registered in April, 28, 2009;
- United States Trademark Registration No 3’640’357, PANDORA unforgettable moments, in Classes 14 and 16, registered in June, 16, 2009.
In 2008, the Complainant also registered the trademark PANDORA Jewelry in Canada, in 2005 in Mexico and in Japan in 2007.
Affiliated companies of the Complainant have also registered domain names containing the term “pandora” to present the company and offer its Internet services, among others:
- < pandora-jewelry.com> registered on October 31, 2002
- < pandora.net> registered on July 20, 1997.
The disputed domain name <pandorajewellerys.com> does not currently revert to a website or other online presence.
Following the WhoIs public information, the Registrant named is Private Protection Co Ltd. Thus, following Registrar’s information (Todaynic.com), the Registrant is Zou Da.
5. Parties’ Contentions
The Complainant argues that the trademarks including the distinctive “pandora” terms are well known all over the world and that in 2009, Pandora and its affiliated companies sales of the Pandora Jewelry products exceeded two hundred million dollars in the United States and nearly twice as much worldwide.
The Complainant alleges that the Respondent is not an authorized retailer and the “Pandora Silver Bracelet” and “Pandora silver charms” offered on the website at <pandorajewellerys.com> are counterfeits.
The Complainant alleges that the Respondent’s use of the trademark PANDORA in disputed domain name and stylized forms throughout its website and also imitates the overall look and feel of the website of the Complainant’s affiliated company, copying the layout and the Complainant’s copyrighted image, which reinforces the contention that any use of the domain name <pandorajewellerys.com> by the Respondent, whether a website, sets up a false assumption with other internet users that the Respondent is, or is connected or affiliated with the Complainant and thereby causes confusion to such users.
The disputed domain name <pandorajewellerys.com> is identical or confusingly similar to the trademark PANDORA JEWELRY in which the Complainant has rights.
The Complainant further contends that there exists a strong possibility of confusion particularly because the disputed domain name < pandorajewellerys.com> incorporates wholly the PANDORA JEWELRY trademark. The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant further alleges that the Respondent has no prior rights and/or legitimate interests to justify the use of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark. The absence of any permission and the connection between the choice of the disputed domain name and the Respondent’s website prove that the Respondent has neither rights nor legitimate interest in respect of the disputed domain name. Accordingly, the Respondent registered the disputed domain name in order to take advantage of the Complainant’s notoriety. The Complainant contends that the Respondent did not use the domain name for any legitimate, noncommercial or equitable purpose. There should be no doubt that the disputed domain name was registered and is being used in bad faith. Thus, the Complainant contends that the Respondent has registered a domain name that is confusingly similar to the trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant requests the sole Panelist to issue a decision that the disputed domain name <pandorajewellerys.com> be transferred to Pandora Jewelry LLC.
As noted above, the Respondent is in default pursuant to paragraph 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules, as no Response was submitted in due time.
It is further noted that the Respondent did not give any response nor communicate any message at any time during the present proceedings.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b), the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and
(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identifying he Respondent
As mentioned in precedent cases, “From a purely procedural perspective, it is not particularly significant who is named as a respondent in the heading of a complaint. Further, a complainant will also usually satisfy its procedural obligations under the Policy by identifying as the “respondent” the person or persons named in the publically available WhoIs register at the time that the Complaint is filed with the Center. See, e.g., RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev/Protected Domain Services Customer ID:DRS-2239267, WIPO Case No. D2010-0894.
That said, particularly in cases involving privacy or proxy registration services and provided the relevant notification requirements under the Rules have been met, who is named as the formal respondent in proceedings in practice does not always matter. The reason for this is that it is the motives and interests of the person who de facto controls the domain name and is responsible for its registration that will usually be significant when addressing issues under the Policy. Take for example the position of an agent who has registered a domain name in his name on behalf of another. If the person actually controlling the domain name registered that domain name in bad faith, it is no answer to this that the named agent had no knowledge of a complainant’s mark and so far as he alone was concerned had acted in good faith. To hold otherwise would drive a coach and horses through the operation of the Policy. In such circumstances the knowledge of the principal is to be imputed to the agent. There is no reason why a privacy service should be treated in different way to any other agent in this respect. See, e.g., RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev/Protected Domain Services Customer ID:DRS-2239267, supra.
In conclusion, as stated in RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev, supra, which addresses the use of privacy or proxy services and the UDRP, the Panel considers by parity that the relevant domain name is in fact controlled by both persons, the privacy service as public registrant and the underlying registrant and that naming both entity as Respondents respects the UDRP rules (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services PVT. LTD., Laksh Internet Solutions Private Limited., Pluto Domain Services Private LTD., Compsys Domain Solutions Private Limited, WIPO Case No. 2008-1675).
B. Identical or Confusingly Similar Domain Name
The Complainant owns numerous trademarks for PANDORA JEWELRY and incorporating the term “Pandora” (the Trademark).
Previous panels have decided that ”essential” or ”virtual” identity is sufficient: See, e.g. The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
In the present case, the trademark as registered appears to be the terms “pandora jewelry”. Accordingly, these terms in its entirety are included in the disputed domain name. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042. As such, any use by a person other than the Complainant of the trademark, trade name or domain name is likely to raise confusion in the public between the Complainant’s enterprise and activities and this other person’s business. See, e.g., LouisVuitton v. Net-Promotion WIPO Case No. D2000-0430.
The only difference between the trademark of the Complainant PANDORA JEWELRY and the domain name is the letters “e”, ”s” and the double “l” in “pandorajewellerys”. These small differences may not perceptible in English since the way to pronounce both words in this language would be identical or almost identical. As such not English speakers would not notice the difference, and most search engines would lead to <pandora-jewelry.com> as well as <pandorjewellerys.com>. See, e.g., LouisVuitton v. Net-Promotion, supra.
Thus, the Panel finds that, despite the mentioned variations, there is a close similarity both orally and visually between the disputed domain name and the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name <pandorajewellerys.com> is confusingly similar to the Complainant’s trademark PANDORA JEWELRY in accordance with paragraph 4(a)(i) of the Policy.
C. Respondent’s Rights or Legitimate Interests in the Domain Name
According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in a domain name if it shows the presence of any of the following circumstances:
i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Once the Complainant makes out a prima facie case, that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Complainant further alleges that it has never granted any rights to the Respondent.
Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact not in the Complainant’s control, the Panel considers that the Complainant has fulfilled its obligations under this paragraph of the Policy.
As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14(a) of the Rules).
The Respondent has not challenged the Complainant’s contentions. The Panel finds it the Complainant’s contentions credible.
Moreover, there is no evidence in the file to show that the Respondent has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Domain Name Registered and Used in Bad Faith
The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
“(i) circumstances indicating that you [the Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or your location.”
The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).
The Panel notes that some UDRP panels in certain default cases have accepted credible allegations from a complainant as true, particularly under paragraphs 4(a)(ii) and 4 (a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or otherwise demonstrate the presence or absence of bad faith, (e.g., Luis Cobos v. West North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039).
The Complainant’s allegations in this case that the disputed domain name has been registered and is being used in bad faith could be accepted as true. That being said, the Panel further states the following:
The Panel considers that the evidence submitted establishes that the choice of the disputed domain name by the Respondent could not be a coincidence since the website was used to market products branded with the Complainant’s trademark.
Further, the Complainant has brought evidence that Respondent is not nor was an authorized retailer even the website at <pandorajewellerys.com> offers products as “Pandora Silver Bracelet” and “Pandora silver charms” and further alleges that the items sold were counterfeits. The Respondent has not challenged the Complainant’s contentions. Moreover, the Respondent did not actively participate in the proceedings but simultaneously the domain name <pandorajewellerys.com> cease to resolve to the active above mentioned website or other online presence. Accordingly, the Panel finds the Complainant’s contentions credible.
The conduct of the Respondent is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration and use under the Policy, paragraph 4(b)(iv), e.g., Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752.
As a result, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith.
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 <pandorajewellerys.com> be transferred to the Complainant.
Dated: January, 25, 2011