WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pandora Jewelry, LLC v. Whois Privacy Protection Service, Inc. / Lisa Xu

Case No. D2010-1945

1. The Parties

The Complainant is Pandora Jewelry, LLC of Columbia, Maryland, United States of America, represented by Lathrop & Gage LLP, United States of America.

The Respondents are Whois Privacy Protection Service, Inc. and Lisa Xu of Bellevue, Washington, United States of America and Nanking, Jangsu, China, respectively.

2. The Domain Names and Registrars

The disputed domain names <pandoraretailer.com> and <uspandora.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2010. On November 15, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 15, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2010 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 December 2, 2010.

The Center verified that the Complaint together with the amendment to 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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2010.

The Center appointed Christian Pirker as the sole panelist in this matter on January 12, 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.

4. Factual Background

The Complainant, Pandora Jewelry LLC, is a United State distributor of jewelry designs created by artisans of the Complaint’s affiliated companies in Denmark. In particular, the Complainant and its affiliated companies have created a distinctive series of beads, spacers, clips, bracelets and necklaces (the “Pandora Jewelry”).

The Complainant’s products are sold in the primary geographical segments of Europe, the United States and Asia Pacific through its corporate parent.

The 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.

The Complainant or 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 (stylized), in Class 14, registered in March, 7, 2006;

- United States Trademark Registration No 3’613’181, PANDORA, (stylized with design) in Classes 14 and 16, registered in April, 28, 2009;

- United States Trademark Registration No 3’640’357, PANDORA UNFORGETTABLE MOMENTS, (stylized with design) in Classes 14 and 16, registered in June, 16, 2009.

(The PANDORA Trademarks).

The Complainant or its affiliated companies has also registered the trademark PANDORA JEWELRY (stylized) in Canada, Canadian Trade Mark Registration No. 707,735, registered on February 19, 2008; in Mexico, Mexican Trade Mark Registration No. 888,612 registered on June 27, 2005; and in Japan, Japanese Trademark Registration No. 5256920 on March 30, 2007.

Affiliated companies of the Complainant have also registered domain names containing the term “Pandora” to represent the company and offer its goods and services on the Internet, including: <pandora-jewelry.com> registered on October 31, 2002; and <pandora.net> registered on July 20, 1997.

At the time the Complaint was filed, the publicly available WhoIs information listed, as the Registrant of the disputed domain names WhoIs Privacy Protection Service Inc. Subsequently, following the Registrar’s revealing the underlying Registrant, the information was changed to reflect the Registrant, Lisa Zu. The disputed domain names were registered respectively on July 26, 2010 for <pandoraretailer.com> and on November 4, 2010 for <uspandora.com>.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the PANDORA Trademarks are well known all over the world and that in 2009, sales of Pandora Jewelry exceeded two hundred million dollars in the United States and nearly twice as much worldwide.

The Complainant alleges that the Respondents uses the PANDORA Trademark in the disputed domain names and throughout the website at “www.uspandora.com”, to which <pandoraretailer.com> directs, where counterfeit jewelry products display the PANDORA Trademarks; and that the Respondents sell unauthorized imitations of the Complainant’s packaging through the website at the disputed domain name <uspandora.com>. Further, the Complainant avers that the Respondents are neither authorized retailers nor affiliated in any manner with the Complainant.

The Complainant alleges that the Respondent use the PANDORA Trademarks in disputed domain name and stylized forms throughout its websites, which imitate the overall look and feel of the websites of the Complainant and it’s affiliated companies by copying the layout and Complainant’s copyrighted images. This creates a false impression to Internet users that the Respondent is connected or affiliated with the Complainant and thereby causes confusion to such users.

The domain names <uspandora.com> and <pandoraretailer.com> are identical or confusingly similar to the PANDORA JEWELRY trademarks in which the Complainant has rights.

The Complainant argues there is no bona fide offering of goods and services by the Respondent.

The Complainant further alleges that the Respondent has no prior rights and/or legitimate interests to justify the use of the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks. The Respondent has not been commonly known by the disputed domain names.

The Complainant contends that the absence of any permission granted to the Respondent, the connection between the choice of the disputed domain names and the content of Respondent’s website prove that the Respondent has neither rights nor legitimate interest in respect of the disputed domain names. Accordingly, it is argued that the Respondent registered the disputed domain names in order to take advantage of the Complainant’s notoriety. The Complainant contends that the Respondent did not use the disputed domain names for any legitimate, noncommercial or equitable purpose and here should be no doubt that the disputed domain name was registered and is being used in bad faith.

In summary, the Complainant contends, that the Respondent has registered a domain names that are confusingly similar to the trade marks registered and used by it, that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered and uses this domain name in bad faith.

Accordingly, the Complainant requests the Panel to issue a decision that the disputed domain names <uspandora.com > and <pandoraretailer.com> be transferred to the Complainant.

B. Respondent

As noted above, the Respondent is in default pursuant to paragraph 5(e) and 14 of the Rules, and paragraph 7 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 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 the Respondent

As mentioned in prior UDRP decisions, from a purely procedural perspective, it is not particularly significant who is named as a respondent in the heading of a complaint. A complainant will 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, WIPO Case No. D2010-0894.

That said, the individual or entity named as the formal respondent in proceedings in practice often does not really matter. The reason for this is that it is the motives and interests of the person, who de facto controls the domain name, and has been responsible for its registration, which is 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, supra.

In conclusion, as stated in RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev, suprawhich addresses the use of privacy or proxy services and the UDRP, the Panel considers by parity that the relevant domain names 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. D2008-1675).”

B. Identical or Confusingly Similar Domain Name

The Complainant owns numerous trademarks for PANDORA and incorporating the term “Pandora”.

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.

The distinctive part of the disputed domain names <uspandora.com> and <www.pandoraretailer.com> contain the Complainant’s PANDORA trademark in its entirety. The addition of the expression “us” as abbreviation for United States or of a generic term as “retailer” does not alter the fact that the domain names are confusingly similar to the Complainant’s trademarks. As 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; and Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042.

It is also well accepted that top-level domain denomination, in this case “.com”, may be ignored when assessing identity or confusing similarity of a trademark and domain name. Use of a trademark in a domain name, by a person other than the owner of the trademark or trade name is likely to raise confusion in the public between a complainant’s enterprise and activities and this other person’s business. See e.g. LouisVuitton v. Net-Promotion WIPO Case No. D2000-0430.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled. Accordingly, the Panel finds that the domain names <uspandora.com> and <pandoraretailer.com> are confusingly similar to Complainant’s trademark PANDORA 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 of the Policy a respondent can establish its rights or legitimate interests in a disputed domain name if it shows the presence of any of the following circumstances, without limitation:

(i) before any notice to you [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 [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 [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 a complainant has made out a prima facie case, that a 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 here alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant further alleges that it has never granted any rights to the Respondent.

Taking into consideration the fact that this element of the policy requires 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 by establishing a prima facie case, which the Respondent has failed to rebut. 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 to the Panel that the Respondent has any rights or legitimate interests in the disputed domain names.

Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain names.

D. Domain Name Registered and Used in Bad Faith

The third element to be established by the Complainant is that the domain names have been registered and are 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 [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 [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 [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 [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, 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 factual allegations from a complainant as true, particularly as these may pertain to paragraphs 4(a)(ii) and 4 (a)(iii) of the Policy, regarding facts relevant to a panel’s assessment of claimed illegitimacy of a respondent’s use or otherwise demonstrate the presence or absence of bad faith, (See e.g., Luis Cobos v. West North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; and Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039).

The Complainant’s allegations in this case that the disputed domain names have been registered and are 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 domain names 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. The website at <uspandora.com> and <pandoraretailer.com> offer products advertised as “Pandora Bracelet” that the Complainant alleges are counterfeits. The Respondent has not challenged the Complainant’s contentions. Moreover, the Respondent did not actively participate in the proceedings. Accordingly, the Panel finds the Complainant’s contentions credible.

The conduct of the Respondent is neither legitimate, nor in good faith. Using domain names 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) (See 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 domain name in bad faith.

7. Decision

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 names <uspandora.com> and <pandoraretailer.com> be transferred to the Complainant.

Christian Pirker
Sole Panelist
Dated: January, 26, 2011