Paragraph 15 of the Rules states that the Panel decides a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable.
In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as appropriate.
In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant.
The Panel proceeds therefore to decide only on the basis of the Complainant’s factual statements and the documentary evidences provided in support of them.
1. CONSOLIDATION REQUEST
The first issue in this case is whether the complaint can be consolidated against 19 domain names, as requested by the Complainant.
The Complainant argues that the complaint should be consolidated on the basis that the disputed domain names are under the control of a single individual or entity or, at least, are under the common management of a group of individuals acting in concert.
Moreover, according to the Complainant, the following elements cumulatively demonstrate, on balance, that consolidation of all the disputed domain names is possible:
- same Registrar, i.e. Name.com, Inc.;
- same identity shield, i.e. Registrant Organization: Doman Protection Services, Inc.;
- same hosting provider, i.e. Inter Connects Inc.;
- related IP addresses between 107.150.162.243 and 107.150.162.254 on which the web sites of all the disputed domain names are hosted;
- registration made within a similar time period and with the same Registrant country, i.e. China;
- substantially similar webpages on which all 19 domain names redirects and which are connected to the same Turkish web host Sayfa.net; and
- use of the same naming patterns.
The Panel accepts the Complainant’s arguments and agrees that the similarities between the domain names in question and the overall circumstances of the case pointed out by the Complainant are sufficient enough to establish, on the balance of probabilities, that all 19 domain names are under the common control.
Taking into consideration all the above-mentioned factors in their conjunction, the Panel consider that the consolidation represents procedurally more efficient solution of this case for both parties.
Based on the above mentioned, the Panel determines that the dispute in respect of the domain names:
pandora-discount.com
sale-pandora.com
italia-pandora.com
outlet-jewelry-pandora.com
pandorajewelrycharm.com
pandora-sale-off.com
pandora-online.net
pandorashopsale.com
tiendapandoraonline.com
lessoldespandora.com
pandora-store-outlet.com
bijouxpandorafrance.com
pandorfrance.com
pandordisney.com
pansoldes.com
pandora-store-outlet.net
pandora-outlet-it.com
pandora-outlet-italian.com
pandora-it-outlet.com
can be consolidated within this proceeding.
2. TRADEMARK IDENTITY OR CONFUSINGLY SIMILARITY
The Complainant is owner of a considerable number of trademarks whose common distinctive element is a particle “PANDORA”, which refers to a human woman in the Greek mythology who was created on the instructions of Zeus and which is therefore an arbitrary name for the goods for which the Complainant’s trademarks are registered and used in the market (namely jewelry).
Besides the EU protection, the trademarks “PANDORA” have been registered by the Complainant in various non-EU countries, including in the country declared as the Respondent’s origin, China.
The Panel finds that 16 of the disputed domain names, namely:
pandora-discount.com
sale-pandora.com
italia-pandora.com
outlet-jewelry-pandora.com
pandorajewelrycharm.com
pandora-sale-off.com
pandora-online.net
pandorashopsale.com
tiendapandoraonline.com
lessoldespandora.com
pandora-store-outlet.com
bijouxpandorafrance.com
pandora-store-outlet.net
pandora-outlet-it.com
pandora-outlet-italian.com
pandora-it-outlet.com
use exactly the same naming patterns, i.e. comprise of the distinctive arbitrary element “PANDORA” accompanied by a non-distinctive element in different language variations (such as: “outlet, sale/soldes, jewelry/bijoux, store/tienda) and followed by the gTLD “.com” or “.net” which is often treated as an alternative to “.com”.
Since the Complainant’s trademarks “PANDORA” is fully comprised within these 16 disputed domain names and that the additional elements have lower degree of distinctiveness, the Panel considers that the 16 disputed domain names are clearly confusingly similar to Complainant’s previously registered trademarks.
With regard to the domain names <pandorfrance.com>, <pandordisney.com> and <pansoldes.com>, as stated by the Complainant and taking into consideration the overall factual background of the present dispute, those apparently refer to the Complainant’s registered trademarks “PANDORA”, though the full name is not included within the domain names.
Indeed, it appears that <pandorfrance.com> and <pansoldes.com> comprise a shorten version of the trademarks “PANDORA” which is followed by a descriptive element, while the domain name <pandordisney.com> makes a direct reference to a Complainant’s famous Disney x Pandora collection (which can be seen on Internet, for example on the link provided by the Complainant https://us.pandora.net/
As a result and bearing in the mind the high reputation and status of a well-known trademark which was previously declared by this court (CAC Case 103231 <PANDORAEU.com>) the Panel accordingly concludes that there are more similarities than differences between the disputed domain names and the registered trademarks “PANDORA” and that is more likely that the Internet users will be confused or mislead when searching for the original PANDORA products.
It follows that the paragraph 4(a)(i) of the Policy is satisfied.
3. LACK OF LEGITIMATE INTERESTS
The Respondent is not in any way related to the Complainant's business and is not the agent of the Complainant. The Respondent is not currently known and have never been known as “PANDORA”, or any combination of this trademark.
The websites the domain names are currently associated with promote and offer for sale exactly the same goods as the Complainant’s goods. However, the Complainant has not granted any license or authorization to the Respondent to make any use, or apply for registration of the trademarks “PANDORA” or to distribute its products. Therefore, such active use of the name “PANDORA” in connection with the Complainant’s goods does not constitute a legitimate interest in the disputed domain names.
Consequently, and in the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, so that the requirements of paragraph 4(a)(ii) of the Policy are met.
4. REGISTRATION AND USE IN BAD FAITH
As to the bad faith at the time of the registration, the Panel finds that, in light of the distinctiveness of the Complainant’s trademarks with which the disputed domain names are confusingly similar, and due to the worldwide presence of the Complainant’s business known under the name “PANDORA”, the Respondent was more likely to be aware of the Complainant’s trademarks at the time of the registration of the disputed domain names, which started from 4 January 2020 and ended on 22 February 2021.
Furthermore, the Complainant notes that the disputed domain names result in the webpages with a very similar layout and produces the same “look and feel” as the Complainant’s original webpages.
Bearing in mind these circumstances, the Respondents can be deemed to have registered and used the disputed domain names for obtaining commercial gain without a just cause and to the detriment of the Complainant’s Intellectual Property Rights.
Under such circumstances, the Panel finds that the disputed domain names were registered and used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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