WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pandora A/S v. Whoisguard Protected, Whoisguard, Inc. / Sarah Mcmahon
Case No. D2015-1461
1. The Parties
The Complainant is Pandora A/S of Glostrup, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Sarah Mcmahon of Brunswick, Maine, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pandorapolska.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 August 21, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 24, 2015.
The Center verified that the Complaint together with the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on September 30, 2015. 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 A/S, is a Danish company, founded in 1982, which has shifted its initial focus along time, having started with the importation of jewelry from Thailand for resale on the Danish market, then moving to wholesale to Danish clients and finally, in 1987, shifted towards designing and manufacturing its own jewelry on a manufacturing site located in Thailand. In 2005, 2008 and 2010, four other manufacturing facilities were opened in the same area.
On the following years, the Complainant expanded its business to other markets outside Denmark and became an international company. Today, the Complainant’s products are sold in more than 90 countries through approximately 9,600 points of sale. Its largest market is the North American market, where its line is currently sold in more than 2,200 fine jewelry and gift stores.
The Complainant is a publicly listed company in the NASDAQ Copenhagen stock exchange in Denmark and, in 2014, its total revenue was DKK 11.9 billion (approximately EUR 1.6 billion).
The Complainant is the owner of the PANDORA trademark registrations across various jurisdictions (the “PANDORA Marks”), having registered it with the Office for Harmonization in the Internal Market (“OHIM”), the United States Patent and Trademark Office (“USPTO”) and the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China, on April 17, 2000, April 28, 2009 and September 6, 2012 respectively (see Annex 1 of the Complaint).
The Respondent registered the disputed domain name on February 3, 2015, after the Complainant filed for registration of the PANDORA trademark with the OHIM, and also after the Complainant’s first use in commerce of its trademark in May 2008 (see Annex 2 of the Complaint).
The Complainant sent cease-and-desist letters to the Respondent on June 8, 19 and 30, 2015 (see Annex 9 of the Complaint) and the Respondent never replied.
In addition, the Complainant, through REACT (also known as The Anti-Counterfeiting Network), informed the Respondent and the Respondent’s Internet Service Provider (“ISP”) about the undue registration and use of the disputed domain name in letters dated June 1, 2015 and again, in two emails, dated June 18, 2015 (see Annex 10 of the Complaint).
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the PANDORA trademark which is owned by the Complainant. The disputed domain name <pandorapolska.com> is confusingly similar to this trademark, as it incorporates the Complainant’s trademark in its entirety while merely adding the geographically descriptive term “polska” (meaning Poland in the Polish language) to such trademark, aiming at creating the impression that the disputed domain name is somehow connected to the Complainant and its trademark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of or otherwise affiliated with the Complainant and the Complainant has never authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain name. In addition, the Respondent is not commonly known by the disputed domain name, nor has put the disputed domain name to any legitimate use, only trading on the goodwill and reputation of the Complainant.
3. The Respondent has registered and is using the disputed domain name in bad faith, as the Respondent has intentionally attempted to attract, through the likelihood of confusion with the Complainant’s trademark, for commercial gain, Internet users to a website which offers for sale counterfeit versions of the Complainant’s products. The Respondent is trading upon the popularity and reputation of the Complainant to profit from such confusion by offering for sale counterfeit versions of the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. There are therefore two conditions in paragraph 4(a)(i) that the Complainant must meet: First, that it has “rights in a trade or service mark”, and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
The Complainant provided evidence that it has prior and well-established registered rights in the PANDORA trademark. From the evidence on the record, the Panel finds that the PANDORA mark is a widely known mark and that the Respondent simply added the geographical term “polska” (meaning Poland in the Polish language) to the Complainant’s trademark. Therefore, the Panel finds that the first condition of paragraph 4(a)(i) of the Policy is met, in line with other previous UDRP decisions (see Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S. A. v. Eijiobara Obara, WIPO Case No. D2012-0047, Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700, and Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377).
In respect to the second condition of paragraph 4(a)(i) of the Policy, the disputed domain name contains the full PANDORA trademark with the addition of the geographical term “polska”. Furthermore, it increases the confusing similarity as it also refers to a country or market where the Complainant operates. The addition of the term “polska” does not prevent or mitigate the confusion between the disputed domain name and the Complainant’s trademark, because, as ruled in Arthur Guiness Son & Co. (Dublin) Limited v Dejan Macesic, WIPO Case No. D2000-1698, by the time Internet users arrive at the website, they have already been confused by the similarity between the disputed domain name and the Complainant’s trademark into thinking they are accessing the Complainant’s website.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.
Three non-exhaustive circumstances are identified to assess the existence of rights or legitimate interests: (i) bona fide use of (or preparation to use) the disputed domain name; (ii) common association with the disputed domain name; and (iii) legitimate noncommercial or fair use of the disputed domain name.
It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been commonly known by the disputed domain name. The Panel notes in this regard that the Respondent registered the disputed domain name through a privacy protection service, and sought to hide its identity. Moreover, the Panel notes that the website at the disputed domain name does not apparently disclose the Respondent’s relationship with the Complainant.
It is apparent that the only reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to trade on the Complainant’s goodwill and reputation and not for any legitimate noncommercial or fair use purpose. Previous UDRP panels have held that the imitation of the Complainant, by displaying the Complainant’s logo and trademark, with the intention of misleading the Complainant’s customers is not a bona fide offering of goods or services, thus, it is not a legitimate use of a disputed domain name (see Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211).
Moreover, the Respondent is using the disputed domain name in connection with a commercial website offering what appear to be counterfeited versions of the Complainant’s products. In this respect, previous UDRP panels have concluded that a respondent’s efforts to sell counterfeit products under the guise of a complainant’s brand, trademarks, and/or logos do not amount to a bona fide offering of goods or services (see Canon U.S.A., Inc. v. Miniature Town, WIPO Case No. D2014-0948).
The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, 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 trademark 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 website or other online location, 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 its website or location.
In light of the Complainant’s well-established identity and the widely known PANDORA trademark, the Panel finds it very likely that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name. The Respondent has demonstrated a knowledge of and familiarity with the Complainant’s business and brand, seeking, through the website at the disputed domain name, to pass itself off as the Complainant, while offering for sale counterfeit versions of the Complainant’s products. It has been established by previous UDRP panels that there may be bad faith when a complainant’s trademark is shown to be well-known or in wide use at the time of registration of a disputed domain name (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Additionally, the Panel finds that the intention of the Respondent was to take advantage of the reputation of the Complainant and its trademark, attracting Internet users to the website at the disputed domain name, by causing an erroneous association with the Complainant, its activities and products. PANDORA is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, implies in the Panel’s view bad faith (where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).
Therefore, the Panel finds that the Respondent is attempting to trade upon the goodwill present in the PANDORA Mark for commercial gain, by confusing users as to the Complainant’s involvement in the website at the disputed domain name and offering for sale of allegedly counterfeit versions of the Complainant’s products (see, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118). As the Respondent is not affiliated with the Complainant, this is further evidence of efforts to mislead Internet users, and of bad faith registration and use of the disputed domain name.
In addition, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous UDRP panels have held might be a further evidence of bad faith (see Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni, WIPO Case No. D2003-0230).
Furthermore, the Panel notes that, as decided in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, the registration of a well-known trademark by a party with no connection to the owner of the trademark, no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied.
For 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 <pandorapolska.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: October 14, 2015