Complainant is Burberry Limited, London, United Kingdom of Great Britain and Northern Ireland.
Respondent is Jonathan Schefren, Banco General de Panama, Panama.
The disputed domain name <burberryscarfonline.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2008, naming Whois Privacy Protections Service, Inc. as Respondent. On October 10, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 10, 2008, eNom transmitted by email to the Center its verification response confirming that Respondent Jonathon Schefren is listed as the registrant and providing registrant and contact information for the domain name at issue which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a First Amended Complaint (“FAC”) on October 16, 2008. The Center noted a discrepancy in the FAC and notified Complainant by email on October 17, 2008. Thereafter Complainant filed a Second Amended Complaint (“SAC”) on October 17, 2008. The Center verified that the SAC satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on October 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2008. Not having received a response, the Center filed a notification of default on November 12, 2008. The Center thereafter received an email from Respondent Schefren dated November 13, 2008, indicating that the response had been mailed and should arrive at the Center shortly. Having heard nothing further from Respondent and not having received a response, on November 18, 2008, the Center contacted Respondent and indicated it was proceeding with the appointment of the Panel.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 24, 2008. 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.
Complainant is a well known purveyor of apparel and accessories. Complainant has registered numerous marks with the United States Patent and Trademark Office (the “USPTO”), the earliest of which is for the word mark BURBERRY which dates from August 6, 1929. Complaint, Annex O. Complainant uses its marks extensively to advertise its luxury goods items around the globe. As of March 31, 2008, Complainant operated 368 retail locations in Europe, North America, Asia, and the Middle East. Complainant also sells its goods through third party department stores, specialty retailers, and franchisees. For the fiscal year ending March 31, 2008, Complainant's estimated revenues were close to ₤ one billion.
Complainant also advertises and offers its goods for sale on its web site at “www.burberry.com”. Complaint, Annex P.
The domain name at issue is used to resolve to a web site at which scarves purported to be those manufactured by Complainant are offered for sale and on which Complainant's trademark is used repeatedly. When Complainant became aware of the web site, Complainant studied the goods offered thereon and became convinced that the goods were counterfeit. On November 8, 2006, Complainant sent a Notice of Infringement to the web site's hosting company. As the goods continued to be offered for sale on the web site to which the domain name at issue resolved, on March 5, 2007, Complainant sent a second notice to the web hosting company. Complaint, Annexes E and F.
On November 20, 2007, an investigator hired by Complainant purchased a scarf from the web site to which the domain name at issue resolved, which scarf displayed one or more BURBERRY trademarks. Upon investigation, it was determined that the scarf was counterfeit. Complaint, Annex G.
On January 29, 2008, Burberry wrote to the registrant of the domain name at issue, whose true identity was protected by Bluehost Domain Privacy Services, demanding that the registrant cease and desist the sale of counterfeit merchandise. Complaint, Annex H. On that same date, Complainant sent Notices of Infringement to PayPal, Inc., Bluehost, Inc. and Cyber Cast International, requesting that those entities cease and desist from providing services to the domain name registrant. Complaint, Annex I. Complainant received no response.
On February 25, 2008, Complainant wrote Bluehost, Inc., who at that time was the registrar for the domain name at issue, requesting that it provide contact information for the registrant of the domain name at issue. Complaint, Annex J. On May 9, 2008, Complainant wrote Bluehost, Inc. a second time to request the contact information. On May 13, 2008, Bluehost, Inc. responded and refused to provide the information absent a court order. Complaint, Annex K.
On June 2, 2008, Burberry became aware that Bluehost Domain Privacy Services was no longer blocking access to the registrant's identity, and that the registrant was identified in the Whois database as Tan Boon Kiat, a resident of China. Complaint, Annex I. On June 5, 2008, Complainant sent Tan Boon Kiat a letter by email that notified the registrant of the infringement. Complaint, Annex M.
On or about June 11, 2008, Complainant became aware that the registrar for the domain name at issue had changed to eNom. Complainant wrote to the new registrar and requested a transfer of the domain name to Complainant, since the domain name was being used to sell counterfeit goods. The registrar declined, and suggested that Complainant file a UDRP proceeding. Thereafter, on September 11, 2008, Complainant wrote the registrar's privacy service and requested the identity and contact information for the registrant of the domain name at issue. The registrar replied by identifying Respondent as the registrant of the domain name at issue and by providing an email address and a telephone number for Respondent. Complaint, Annex N.
Complainant asserts that the domain name at issue is confusingly similar to its famous BURBERRY marks, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name at issue in bad faith.
Respondent did not file a response.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) that the respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Where a domain name incorporates a complainant's mark in its entirety, the domain name is confusingly similar to complainant's mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called “objective test” adopted by the majority of WIPO panelists. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Therefore the panel finds that the domain name at issue is confusingly similar to Complainant's marks.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered Burberry marks. Respondent has failed to reply to those assertions. Accordingly, Respondent is deemed to have no rights or legitimate interests in respect of the domain name at issue.
Respondent is using the domain name at issue to resolve to a web site at which counterfeit goods are offered for sale under the guise of Complainant's registered trademarks. This in and of itself is evidence of bad faith registration and use. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552.
Respondent is also using the mark to attract Internet users to his web site by confusing them as to Complainant's connection or involvement with the site and the goods offered, and this violates paragraph 4(b)(iv) of the Policy. Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.
Moreover, Complainant's mark is so famous as to indicate to Respondent that it could make no legitimate use of the domain name at issue and that the mere registration of such a famous name is indication of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, Respondent's use of privacy services for the purpose of shielding himself from contact and from identification, the switching of registrars, and his misstatements regarding the filing of a response in this matter, all are evidence of cyberflight and delaying tactics, which are compelling evidence of bad faith. HSBC Finance Corporation v. Clear Blue Sky, Inc. and Domain Manager, WIPO Case No. D2007-0062.
For all of the foregoing reasons, the Panel finds that the domain name at issue was registered and is being used in bad faith.
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, <burberryscarfonline.com> be transferred to Complainant.
M. Scott Donahey
Dated: December 9, 2008