The Complainant is Pandora Jewelry, LLC of United States of America represented by Suzanna M. M. Morales of United States of America.
The Respondent is David Lee of People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <pandoraonsale.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 16, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 16, 2010, eNom 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 April 19, 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 April 22, 2010. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2010. The Respondent submitted an informal Response on May 14, 2010.
The Center appointed Rodrigo Azevedo 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.
4. Factual Background
The Complainant is the United States distributor of jewelry designs under the trademark PANDORA, including series of beads, spacers, clips, bracelets and necklaces. The designs are created by artisans of the Complainant's affiliated companies in Denmark.
The Complainant owns various trademarks incorporating the word “pandora” in several countries, since at least 2004.
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”. The sales of the PANDORA jewelry products have exceeded two-hundred million dollars in the United States and nearly twice as much worldwide, through more than 8,000 outlets.
The disputed domain name was created on November 5, 2009.
The Panel accessed the webpage placed at the disputed domain name on June 9, 2010. It consisted of a e-commerce site entitled “PANDORA JEWELRY”, reproducing the Complainant's trademark and offering for sale “Pandora Necklaces”, “Pandora Beads”, “Pandora Bracelets”, “Pandora Bangles”, Pandora Packages”, etc., at cheap prices.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
(i) The trademark PANDORA has become well-known throughout the world.
(ii) The Respondent is not an authorized retailer; uses the trademark PANDORA on its website without any authorization; sells PANDORA counterfeit merchandise and falsely claims that its products are made in the Complainant's manufacturing facilities. The website at the disputed domain name imitates the look and feel of the Complaint's official website and infringes its intellectual property rights.
(iii) The disputed domain name is confusingly similar to the trademark. The disputed domain name contains the entire PANDORA trademark. The addition of the term “onsale” and the generic top level domain “.com” does not prevent the likelihood of confusion as to the source, sponsorship, association, or endorsement of the Respondent`s website. Indeed, the addition of the term “onsale”, where both Complainant`s and Respondent`s business involve the sales of jewelry products, actually enhances the likelihood of confusion.
(iv) The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. The Respondent is relying on consumers ‘recognition of the Complainant's name and mark PANDORA to attract consumers to its own website which uses the Complainant's PANDORA trademark without authorization to sell counterfeit goods. The unauthorized appropriation of another`s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondent. The Respondent has not been commonly known by the domain name. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent is trading on the Complainant's goodwill and uses the disputed domain name for purely disreputable purposes. The Respondent`s acts amount to acts of trademark infringement and unfair competition by misleading and confusing customers as to the source or origin of the information and products found on its website.
(v) The domain name was registered and is being use in bad faith. The Respondent's nefarious purpose in registering the disputed domain name is to capitalize on the reputation of the Complainant's PANDORA mark by diverting Internet users seeking PANDORA jewelry products to the Respondent's own website, where consumers may purchase counterfeit goods. The Respondent has knowingly attempted to attract Internet users to its website for financial gain by intentionally creating a likelihood of confusion with the Complainant's mark. Finally, rather than selling genuine products authorized by the Complainant and manufactured by the Complainant's sister company, the Respondent offers for sale and sells counterfeit products falsely using the PANDORA mark, further supporting the conclusion that the Respondent has registered and is using the domain in bad faith.
B. Respondent
The Respondent answered the Complaint basically alleging that he wants to keep the disputed domain name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Regardless of the fact the Respondent failed to submit a formal and complete reply, the Panel shall consider whether the requirements of the Policy have been met.
A. Identical or Confusingly Similar
Exhibits 04 - 16 of the Complaint demonstrate registrations of the “PANDORA” trademark since 2004.
The trademark PANDORA is wholly encompassed within the disputed domain name, which also includes the expression “onsale”. It is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is identical or confusingly similar to the trademark in question (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd.,WIPO Case No. D2008-0954).
Moreover, previous cases have shown that the addition as a prefix or suffix of the specific word “onsale” is not sufficient to establish that the disputed domain name is not identical or confusingly similar to a registered trademark, considering that “[m]any Internet users would suppose that the Domain Name locates a website of or connected to the Complainants offering their merchandise for sale” (Tiffany (NJ) LLC, Tiffany and Company v. Whois Privacy Protection Service, Inc. and Ning Zhou,
WIPO Case No. D2009-0189, concerning the domain name <tiffanyonsale.org>).
The Complainant has therefore met the burden of proving that the domain name at issue is confusingly similar to the Complainant's trademark, pursuant to the Policy, Paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
As it is often very difficult to a complainant to prove that a respondent has no rights or legitimate interests in a domain name (as this can involve the complainant being required to prove a negative), it is considered enough that the complainant establishes a prima facie case which evidences that. In a previous WIPO UDRP case, the panel stressed that “[o]nce Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Based on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the word “pandoraonsale”. The Complainant has not licensed the trademark to the Respondent.
The Respondent is using the domain name to host an e-commerce operation that reproduces the Complainant's trademark and the look and feel of the Complainant's official website, selling jewelry under the Complainant's marks, without any authorization from the Complainant or from its affiliated companies. In these circumstances, there are no legitimate noncommercial or fair use of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel acknowledges that PANDORA is a trademark directly connected with the Complainant's activities as the distributor of distinctive series of Scandinavian jewelry designs.
The registration of the disputed domain name occurred in 2009, when the Complainant's trademark PANDORA was already well known in the specific field of jewelry, mainly with reference to collectible bracelets. Therefore, it is not feasible that the Respondent could ignore the Complainant's reputation and business when it registered the disputed domain name.
Moreover, the use of the domain name to publish a page that reproduces the look and feel of the Complainant's official website and where there are reproductions of the Complainant's logos and trademarks proves that the choice of the word “pandora” to compose the disputed domain name was not a coincidence.
The Panel is also convinced that the addition of the expression “onsale” to the trademark PANDORA was intentionally done in order to convince consumers that the website was related to the Complainant's own business.
The Respondent is clearly using the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
Furthermore, the disputed domain name is being used as an instrument to infringe the Complainant's various intellectual property rights concerning the PANDORA jewelry, what definitely characterizes bad faith.
Finally, the use of Panel privacy services to register the disputed domain name-although not envisioned when the UDRP was drafted – also highlights the Respondent's intent to mask his identity and hide his contact details, constituting another evidence of his lack of good faith (see Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc.,
WIPO Case No. D2008-0321).
Consequently, the Panel concludes that the third condition has also been fulfilled.
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 name <pandoraonsale.com> be transferred to the Complainant.
Rodrigo Azevedo Sole Panelist
Dated: June 10, 2010.
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