A. Identical or confusingly similar with Complainant’s trademark
The Complainant is the owner of numerous “PANDORA” trademark registrations.
As confirmed by WIPO Overview 3.0, paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name fully incorporates the “PANDORA” mark of the Complainant coupled with the word “braslet” (“bracelet” in Russian). This word can be considered descriptive of Complainant’s goods.
It is well accepted that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element (see par. 1.8 of WIPO Overview 3.0).
The Panel notes that the addition of the word “braslet” does not change overall impression and does not eliminate the confusing similarity between the disputed domain name and the Complainant’s “PANDORA” trademarks.
The trademark is clearly recognizable in the disputed domain name.
The gTLD suffix “.com” is to be disregarded under the confusing similarity test.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied, see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 and CAC Case No. 101284.
The Complainant states that the Respondent had not been authorised, licensed, or permitted to register or use the disputed domain name or to use the PANDORA trademark.
The Complainant also claims and provides proof that the disputed domain name is used to sell fake goods under the Complainant’s “PANDORA” mark.
The disputed domain name was registered on December 8, 2015. According to the registrar’s communication the second Respondent has been the registrant of the disputed domain name since 2018‐04‐05.
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows all reasonable inferences of fact in the allegations of the complaint to be deemed true (see paragraph 14(b) of the Rules and Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095, National Arbitration Forum).
To reach the right decision, a panel is allowed to undertake limited factual research into matters of public record if it deems this necessary.
Under paragraph 10(a) of the Rules the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules and the Panel shall be able to independently visit the Internet in order to obtain additional light in a default proceeding (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076).
The Panel notes that the website by the disputed domain name on the date of the decision appears to be an on-line shop selling “PANDORA” jewellery in Ukraine. Moreover, the website claims to be “Official Pandora Braslet” site and indeed contains a copyright notice as follows: 2020 © PBraslet.com.
The website has some contact information such as address in Kyiv, phone numbers in Ukraine and email address.
Complainant’s logo (part of one of its “PANDORA” marks) is used on the website and this increases possible confusion between the website and the Complainant.
UDRP panels allowed under certain circumstances nominative fair use of a trademark in a domain name by resellers or distributors (even extending it to unauthorized resellers/distributors) – “the Oki data test” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO case No. D2001-0903), however the Panel finds that this is not the case here.
Use of Complainant’s logo, claims that the website is “official” in the absence of Complainant’s authorization, an attempt of false impersonation of the Complainant by the Respondent and evidence provided by the Complainant that the goods sold via the website are not genuine, negate any potential justification (especially in the absence of any response and explanations of the Respondent).
The Panel also notes that the use of a domain name for illegal activity (e.g. the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent (see par. 2.13.1 of the WIPO Overview 3.0 and see also Pandora A/S v. Linda White, WIPO Case No. D2019-0130 – “there is no right or legitimate interest in holding a domain name for such a purpose”).
The Complainant has made out a prima facie case.
The Panel, therefore, finds that the Complainant satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
A range of considerations apply in assessing Respondent’s bad faith, i.e. the nature of the domain name, the content of any website to which the domain name directs, a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or other indicia generally suggesting that the respondent had somehow targeted the Complainant (see par. 3.2.1 of the WIPO Overview 3.0).
The Panel finds that at least one element described in paragraph 4(b) of the Policy is present here, namely 4(b) (iv) and by using the domain name the Respondent is attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of the Respondent’s website.
Factors finding in favor of this conclusion are inter alia similarity between the Complainant’s official website and the website by the disputed domain name (in particular, use of Complainant’s logo by the Respondent) as well as the content of the website and activities conducted by the Respondent via the website, namely sale of goods similar with the goods for which the Complainant’s “PANDORA” mark is protected, provided proof of sale of fake goods under the “PANDORA” marks and a clear attempt to imitate and copy Complaint’s business.
The use of the word “Official” on the Respondent’s website is also misleading and confuses consumers. The disputed domain name is used to sell goods that are supposedly goods of the Complainant but appear to be fake as proved by the Complainant and not rebutted by the Respondent.
As confirmed by WIPO Overview 3.0 “given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”.
The Panel also notes that there are previous UDRP decisions regarding Complainant’s “PANDORA” marks with similar facts and circumstances, namely use of the mark in domain names for sale of fake/non-original goods, i.e. Pandora A/S v. Yan Li, WIPO Case No. D2019-1273; Pandora A/S v. Linda White, WIPO Case No. D2019-0130 –“the Panel is prepared to infer from the use made of the domain name, and in the absence of any argument or evidence to the contrary, that the domain name was either registered or acquired by the Respondent for the purpose of impersonating the Complainant with a view to the sale of counterfeit products. That is sufficient for a finding of bad faith registration” and Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett, WIPO Case No. D2018-0586 –“the Respondent must have deliberately chosen and used the confusingly similar disputed domain name primarily to ride upon and take unfair advantage of the Complainant's reputation and goodwill by intentionally attempting to attract for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark. As such, this would constitute bad faith registration and use.”
The Panel holds that the third element of the Policy has been satisfied.
|