WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pandora Jewelry LLC v. Liu Qing, TT, cai mao yi, denggang AKA gang deng

Case No. D2010-2185

1. The Parties

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

The Respondents are respectively Liu Qing of Feidong, Anhui; TT of Anqin, Shandong; cai mao yi of Pingxiang, Jiangxi; and denggang AKA gang deng of Shanghai, the People’s Republic of China.

2. The Domain Names and Registrars

The Disputed Domain Name <epanbeads.com> is registered with eNom.

The Disputed Domain Name <ukpandora.net> is registered with Jiangsu Bangning Science & technology Co. Ltd.

The Disputed Domain Names <pandora-au.org>, <pandorabeads-au.com>, <pandorasale.org>, <pandora-us.com>, and <ukpandora.org> are registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 15, 2010, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On December 15, 2010, eNom transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details. On December 16, 2010, Jiangsu Bangning Science & technology Co. Ltd. and Bizcn.com, Inc. transmitted by email to the Center their verification response confirming that the other two Respondents are listed as the registrants and providing the contact details. On December 21, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. The Center also sent an email communication to the Complainant on the same day requesting the Complainant to submit an amendment to the Complaint. On December 23, 2010, the Complainant filed an amendment to the Complaint and confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of proceeding by the specified due date.

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 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.

The Center appointed Kar Liang Soh as the sole panelist in this matter on January 25, 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 is part of the Pandora Group which manufactures, distributes and sells jewellery designs created by its affiliated Danish companies. The jewellery business was first developed in Denmark in 1999 and first marketed outside the United States in 2000. Products under the trade mark PANDORA have been marketed extensively. The Complainant’s products under the trade mark PANDORA are available through over 10,000 points of sale worldwide and sales in 2009 have exceeded USD 2 million in the United States and nearly twice as much worldwide.

The Complainant and its affiliated companies own various trade mark registrations incorporating the word “pandora” including:

In particular, it is noted that the Complainant has registered the following trade mark representation (e.g., United States registration 3,613,181) which this Panel shall refer to as the “PANDORA Logo”:

The Complainant’s affiliated company also holds the domain names <pandora-jewelry.com> (registered in 2002) and <pandora.net> (registered in 1997). The domain name <pandora.net> resolves to a website which prominently displays the PANDORA Logo, among other content.

The Disputed Domain Names are registered as follows:

The Complainant, through counsel, wrote to TT and Qing Liu on July 19, 2010 and September 1, 2010 respectively demanding that use of the trade mark PANDORA be stopped and the Disputed Domain Names <epanbeads.com> and <ukpandora.org> respectively be transferred to the Complainant. Neither TT nor Qing Liu replied to the letters.

At the time of the Complaint filing on December 15, 2010, the Disputed Domain Names <ukpandora.org> and <ukpandora.net> redirected to another domain name <ukonlinejewelry.com>. The domain name <ukonlinejewelry.com> resolved to a website which displayed the PANDORA Logo prominently and offered PANDORA jewellery for sale via what purports to be online purchasing facilities. The Disputed Domain Names <epanbeads.com> and <pandora-au.org> redirected to the Disputed Domain Name <pandorabeads-au.com>. The Disputed Domain Names <pandorabeads-au.com> and <pandorasale.org> resolved to websites while <pandora-us.com> did not appear to do so. The websites resolved from <pandorabeads-au.com> and <pandorasale.org> also offered PANDORA jewellery for sale via what purports to be online purchasing facilities. These websites displayed a logo comprising the word “pandora” with a crown device above the letter “O” in the manner of the PANDORA Logo.

As of December 21, 2010, the websites resolved and/or redirected from Disputed Domain Names <epandbeads.com> and <pandora-au.org> had changed to one associated with the domain name <jewellerycharmsonsale.com> while the Disputed Domain Name <pandorabeads-au.com> (to which <epandbeads.com> and <pandora-au.org> previously redirected) no longer resolved to a website.

As of December 23, 2010, the Disputed Domain Name <pandorabeads-au.com> was also redirected to the website associated with the domain name <jewellerycharmsonsale.com>. Nevertheless, the website continues to display the same logo previously displayed on the website resolved from <pandorabeads-au.com> and offered the sale of PANDORA jewellery. The Disputed Domain Name <pandorasale.org> also started redirecting to a website associated with the domain name <jewellerybeadsonsale.com>. The website resolved from <jewellerybeadsonsale.com> also displayed a logo comprising the word “pandora” with a crown device above the letter “O” in the manner of the PANDORA Logo.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

(1) The Disputed Domain Names are confusingly similar to the trade mark PANDORA. The Disputed Domain Names <ukpandora.org>, <pandora-au.org>, <pandora-us.com>, <pandorasale.org>, <ukpandora.net> and <pandorabeads-au.com> contain the entire word “pandora”. The additional suffixes and prefixes to the word in these Disputed Domain Names are descriptive terms and do not prevent the likelihood of confusion with the trade mark PANDORA from arising. The Disputed Domain Name <epanbeads.com> is a shortened version of the trade mark PANDORA and the prefix “e” and suffix “beads” serve to enhance confusion;

(2) The Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not used the Disputed Domain Names for a bona fide offering of goods or services. The Respondents have not been commonly known by the Disputed Domain Names. The Disputed Domain Names are being used to offer and promote counterfeit goods, all without authorization from the Complainant. There is no relationship between the Respondents and the Complainant. Use of the Disputed Domain Names is without licence or permission from the Complainant; and

(3) The Respondents registered and are using the Disputed Domain Names in bad faith. The Respondents are diverting Internet users seeking Pandora jewellery to the Respondents’ websites to purchase counterfeit goods. The Respondents were aware of the Complainant’s trade mark PANDORA. The Respondents are knowingly attracting Internet users to the Respondents’ websites for financial gain by internationally creating a likelihood of confusion with the trade mark PANDORA as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites or the goods offered or promoted through the Respondents’ websites. The Respondent Liu Qing’s passive holding of <pandora-us.com> is in bad faith. The Respondents are attempting to conceal the Respondents’ true identity by using various identities to register the Disputed Domain Names.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of proceedings

The language of the registration agreement for all the Disputed Domain Names except <epanbeads.com>¹ is Chinese. As such, the default language of the proceeding is Chinese.

The Complainant has requested that English be adopted as the language of the proceeding. Having considered the circumstances, the Panel determines that English shall be the language of the proceeding. In making this determination, the Panel has taken the following factors into account:

(1) The websites resolved from the Disputed Domain Names (including <pandora-us.com> after December 23, 2010) are exclusively in English;

(2) The Complainant is a United States company conducting business largely in English and would be severely burdened if the proceeding were in Chinese;

(3) The Respondents did not object to English being the language of the proceeding and has chosen not to participate in the proceeding by not filing any Response; and

(4) Forcing the Complainant to undertake the proceeding in Chinese would serve no discernible purpose in the circumstances.

6.2. Consolidation of proceeding

The Disputed Domain Names <ukpandora.org>, <pandora-au.org>, <pandora-us.com> and <pandorasale.org> were all registered in the name of “Liu Qing” and may properly be consolidated for consideration in this proceeding under paragraph 3(c) of the Rules.

The Disputed Domain Name <epanbeads.com> and <pandora-au.org> redirected to the Disputed Domain Name <pandorabeads-au.com> at the time of the Complaint. All the three Disputed Domain Names subsequently redirected to <jewellerycharmsonsale.com>. The redirections and changes thereto indicate that there is common or connected control of these Disputed Domain Names. The Respondents have also not denied the Complainant’s allegation that there is common ownership of the Disputed Domain Names <epanbeads.com>, <pandorabeads-au.com> and <pandora-au.org>.

The Disputed Domain Name <ukpandora.net> and <ukpandora.org> both redirect to the domain name <ukonlinejewelry.com>. The redirection indicates that there is common or connected control of these Disputed Domain Names. The Respondents have also not denied the Complainant’s allegation that the Disputed Domain Names <ukpandora.net> and <ukpandora.org> are under common ownership.

In view of the above circumstances, the Panel is of the view that all the Disputed Domain Names may be regarded as being registered by the same domain name holder and will address all the seven Disputed Domain Names herein.

6.3. Decision

A. Identical or Confusingly Similar

The evidence shows that the Complainant owns trade mark rights in the trade mark PANDORA. These rights pre-date the registration of the Disputed Domain Names by some years.

The Panel notes that the Disputed Domain Names <ukpandora.org>, <pandora-au.org>, <pandora-us.com>, <pandorasale.org>, <ukpandora.net> and <pandorabeads-au.com> incorporate the trade mark PANDORA in its entirety. The only differences are as follows:

The Panel agrees with the Complainant that the differences between these Disputed Domain Names and the trade mark PANDORA are descriptive prefixes and suffixes which do not assist to distinguish the Disputed Domain Names from the trade mark PANDORA. Therefore, the Panel takes the view that they are confusingly similar to the trade mark PANDORA.

In relation to <epanbeads.com>, the Panel appreciates the argument of the Complainant that “pan” is a short-form of the trade mark PANDORA and the elements “e” and “beads”, being descriptive terms, are not able to differentiate the Disputed Domain Name from the trade mark PANDORA. With respect to the Complainant’s valiant effort, the Panel does not agree. Whether the word “pan” was or was not a short-form of PANDORA, the reality is that an Internet user will be faced with the Disputed Domain Name <epanbeads.com>. The Panel is unable to see how any reasonable Internet user will be confused between <epanbeads.com> and PANDORA. Even though the elements “e” and “beads” may be arguably descriptive, the combination in <epanbeads.com>, in the Panel’s view, is such that the visual and/or aural identity of the word “pandora” is no longer identifiable.

Granted, the website to which <epanbeads.com> redirected before December 23, 2010 incorporated the use of the trade mark PANDORA. However, for purposes of the first limb of paragraph 4(a) of the Policy requires the Panel to consider whether the Disputed Domain Name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. In making its decision, the Panel may take into account extraneous factors (e.g., the website resolved from the disputed domain name) but ultimately, the decision relates to whether the disputed domain name is confusingly similar. In this case, on the facts, the Panel would think not.

As such, the Panel holds that the first limb of paragraph 4(a) of the Policy is established for all the Disputed Domain Names except <epanbeads.com>. In view of this finding, it is no longer necessary to consider the second and third limbs of paragraph 4(a) of the Policy in relation to <epanbeads.com> and the Panel will not do so. For the avoidance of doubt, all further references to the Disputed Domain Names below, unless otherwise expressly stated, will not include <epanbeads.com>.

B. Rights or Legitimate Interests

The Complainant has confirmed that it has no relationship with the Respondents and has not licensed or permitted the Respondents to use the trade mark PANDORA. There is nothing in the evidence to show that the Respondents are commonly known by the Disputed Domain Names or have any claim to any rights or legitimate interests thereto. Further, the websites resolved from the Disputed Domain Names (other than <pandora-us.com> which does not resolve to any website) had before the Complaint was filed depicted the PANDORA Logo or a variation thereof. The adoption of the PANDORA Logo on the websites makes it inconceivable that the Respondents were not previously aware of the trade mark PANDORA and/or the PANDORA Logo in which the Complainant holds trade mark rights.

In the circumstances, the evidence sufficiently establishes a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names. In the absence of a response, there is no basis to rebut this prima facie finding and the Panel concludes that the second limb of paragraph 4(a) is also established in respect of all the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides an epitome illustration of bad faith registration and use:

“by using the domain name, [the respondents] have intentionally attempted to attract, for commercial gain, Internet users to [the respondents’] web site 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 [the respondents’] web site or location or of a product or service on [the respondents’] web site or location”

The Panel has already made a finding above that the Respondents must have known about the trade mark PANDORA at the time the Disputed Domain Names were registered. By incorporating the trade mark PANDORA in its entirety in the Disputed Domain Names in relation to goods for which the trade mark PANDORA is registered, the Respondents must have intended to associate themselves with the Complainant and/or the trade mark PANDORA. The manner of use of the PANDORA Logo on the websites associated with <ukpandora.org>, <pandora-au.org>, <pandorasale.org>, <ukpandora.net> and <pandorabeads-au.com> prior to December 23, 2010 was such that a reasonable Internet user visiting any of these websites would likely be misled as to the source, sponsorship, affiliation, or endorsement of such website and/or the products referred to as “pandora jewellery”. The online purchasing facilities presented by the websites are undoubtedly for commercial gain.

In view of the above, the Panel is of the view that bad faith registration and used under paragraph 4(b)(iv) is made out in relation to <ukpandora.org>, <pandora-au.org>, <pandorasale.org>, <ukpandora.net> and <pandorabeads-au.com>.

In relation to <pandora-us.com> which did not resolve to any website, the Complainant argues that such “passive holding” may amount to bad faith. The panel decision in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 enunciated the principle that “passive holding” of a domain name which is confusingly similar to a well-known mark may constitute bad faith. The line of cases following the decision has established a common factual scenario in which an individual registers a domain name incorporating a well-known mark without any apparent or actual use of it and it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the domain name by that individual (e.g., 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; Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582 and UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882).

The registrant of <pandora-us.com>, “Liu Qing”, appears to be an individual. The evidence submitted by the Complainant is not voluminous but does go towards supporting the contention that the trade mark PANDORA is well-known. The Respondents have registered multiple domain names incorporating the trade mark PANDORA and it is very clear from the facts that the Respondents knew of the trade mark PANDORA well. In particular <pandora-us.com> was registered at the same time as <ukpandora.org>, <pandora-au.org> and <pandorasale.org>. All the four Disputed Domain Names are of similar nature in that they incorporate the entirety of the mark PANDORA. Taking these circumstances together, the Panel finds it impossible to conceive of any plausible, legitimate, actual or contemplated use of the domain name <pandora-us.com> by the Respondents. The consideration of whether <pandora-us.com> was registered and passively held in bad faith cannot be divorced from its siblings, namely, <ukpandora.org>, <pandora-au.org> and <pandorasale.org>.

Having regard to the special circumstances surrounding <pandora-us.com>, the Panel holds that it was registered and used in bad faith in the sense of passive holding.

7. Decision

For all the foregoing reasons,

(1) in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <ukpandora.org>, <pandora-au.org>, <pandora-us.com>, <pandorasale.org>, <ukpandora.net> and <pandorabeads-au.com> be transferred to the Complainant; and

(2) the Complaint is denied in relation to the domain name <epanbeads.com>.

Soh Kar Liang
Sole Panelist
Dated: February 17, 2011

¹ The language of the registration agreement for this domain name is English.