WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burberry Limited v. Ruo Chang
Case No. D2010-1304
1. The Parties
The Complainant is Burberry Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Intellectual Property Counsel - Americas, United States of America.
The Respondent is Ruo Chang, Zhejiang of People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <burberrybeauty.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 4, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 6, 2010 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 17, 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.
On September 23, 2010 Complainant sent the Center copy of an exchange of emails between Complainant and Respondent regarding other domain names involving the BURBERRY trademark, which communication the Center received as a Supplemental Filing.
4. Factual Background
The trademark upon which the Complaint is based is BURBERRY.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the BURBERRY trademark around the world, and particularly in the United States of America, as per the chart below:
Registered International Registration Registration
Trademark Classes Number Date
BURBERRY (word mark) 24 259,571 August 6, 1929
BURBERRY (word mark) 10, 25, 26 260,843 August 27, 1929
BURBERRY (word mark) 10, 25, 26 510,077 May 24, 1949
BURBERRY (word mark) 18 1,133,122 April 15, 1980
BURBERRY (word mark) 09 1,607,316 July 24, 1990
BURBERRY (word mark) 14 1,747,765 January 19, 1993
BURBERRY (word mark) 18 1,828,277 March 29, 1994
BURBERRY (word mark) 35 2,624,684 September 24, 2002
BURBERRY (word mark) 03 2,629,931 October 8, 2002
BURBERRY (word mark) 09, 14 2,875,336 August 17, 2004
According to the documentary evidence and contentions submitted, the BURBERRY trademark has been used for over 90 years, and as of December 31, 2009 Complainant operated 525 retail locations consisting of 127 BURBERRY stores, 255 concessions, 47 outlet stores and 96 franchise stores in Europe, North America, Asia and the Middle East. Complainant also operates a website under the domain name <burberry.com>, which directs users to specific pages based upon the Internet user’s geographic location, i.e., United Kingdom, Europe, United States, Asia and rest of World.
Respondent registered the domain name <burberrybeauty.com> on March 29, 2010. On July 15, 2010, Complainant sent a cease and desist letter to Respondent. Complainant states that on July 20, 2010 it was notified that Respondent would transfer the disputed domain name to Complainant for a price of 169 Euros to cover the domain registration and a transfer fee of 180 Euros, and that Complainant was provided with an authorization code for payment purposes. While Complainant attempted to use the authorization code and secure the transfer of the disputed domain name, the transfer was denied. Subsequently, on July 21, 2010, Complainant was notified that the disputed domain name could no longer be transferred because it had been recently renewed by the registrant. On July 22, 2010, Complainant sent again a cease and desist letter to Respondent. Complainant states that on July 22, 2010 it received an email from Respondent stating that “we are Burberry’s partner and we want to develop our business using this domain.” Complainant responded that Respondent was not Burberry’s partner nor authorized to use its trademark in the disputed domain name, and instructed the Respondent that Complainant would not pay any more than the price quoted on HaoDomains website for the transfer. Complainant states that it did not receive a response.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name <burberrybeauty.com> is identical and/or confusingly similar to Complainant’s trademark because it incorporates the BURBERRY trademark and the addition of the generic dictionary word “beauty” does not negate the confusingly similar aspects of the disputed domain name; (ii) the addition of a generic top-level domain such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark; and (iii) consumers who search the Internet for “Burberry” may be directed to Respondent’s <burberrybeauty.com> domain, creating a likelihood of confusion.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the BURBERRY trademark in a domain name or in any other matter; (ii) Respondent has never been known by the <burberrybeauty.com> name; (iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because the webpage to which the disputed domain name resolves merely acts as a parking page with links to third-party websites that sell a wide range of goods and services; (iv) the offer for sale of the disputed domain name clearly negates the possibility of an intention on the part of Respondent to use the disputed domain name in connection with any bona fide offering of goods and services: (v) the Respondent is intentionally using the BURBERRY trademark as “bait” to attract consumers, who might be seeking BURBERRY products.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) the disputed domain name is held by Respondent primarily for the purposes 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 your documented out-of-pocket costs directly related to the domain name”; (ii) Respondent has a practice of registering domain names, including other companies’ well-known trademarks, such as <hermescouture.com> and <givenchy-fragrances.com>; and (iii) Respondent’s complete incorporation of the famous BURBERRY word mark could only be construed as bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
The Panel notes that the Center, while receiving the Complainant’s communication of September 23, 2010 as a Supplemental Filing, advised the Complainant that it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision.
The Panel further notes that the majority view of WIPO Panelists has been that panels must be mindful of the need for procedural efficiency and that they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. In fact, panelists who accept a supplemental filing from one side often allow the other party the opportunity to file a reply to the supplemental filing. See WIPO Overview of WIPO Panel Views on Selected UDRP, Question 4.2.
The Panel follows the reasoning of the panels in Viz Communications, Inc. v. Redsun dba <www.animerica.com> and David Penava, WIPO Case No. D2000-0905, and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, and accordingly finds that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions.
In this case, the Complainant brings to the Panel the information that in a similar situation involving other domain names incorporating the BURBERRY trademark Respondent offered to sell said domains to Complainant for $1,000. This pattern of conduct was already the subject of Complainant’s contentions and evidence which were produced in the case.
Since the Complainant’s Supplemental Filing did not bring any substantial new element to the case, the Panel has decided not to accept the Complainant’s supplemental submission. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to reply to all of the Complainant’s contentions by submitting a Response. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In fact, Complainant has provided sufficient evidence that the trademark BURBERRY is well known. The disputed domain name <burberrybeauty.com> incorporates the whole of the BURBERRY trademark, and therefore may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
In addition, it has been decided that the addition of generic terms to an otherwise distinctive trademark is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049.
The word “beauty” is generic, and in similar situations WIPO UDRP panels have held the disputed domain names confusingly similar to BURBERRY trademark. Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546; Burberry Limited v. Forum LLC, WIPO Case No. D2006-1076.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
A parking page is an advertising practice by which a domain name will usually resolve to a page containing advertising listings and links. The issue as to whether use of a domain name for purposes of offering “parking page” creates a legitimate right to a domain name has been addressed in previous UDRP decisions. In mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141, the panel acknowledged that links on a given landing page which are truly based on the generic value of the domain name may constitute a bona fide use. However, the panel noted that: “If though, the links are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting (see e.g. Champagne Lanson v. Development Services/MailPlanet.com Inc., WIPO Case No. D2006-0006 (pay per click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc v. In Knot We Trust, LTD., WIPO Case No. D2006-0340 (same); Brink’s Network Inc v. Asproductions, WIPO Case No. D2007-0353 (same).” (See also to similar effect Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082). See also Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
The Panel finds that in this case Respondent is not making use of a generic value of the domain name. Instead, all circumstances point strongly to the Respondent having chosen the disputed domain name because of its value as a close approximation of the Complainant’s trademark. In fact, the Panel sees no plausible good faith explanation for Respondent’s adoption and use of the term “burberry” in the disputed domain name.
Complainant also argues that Respondent is intentionally using the BURBERRY trademark as “bait” to attract consumers, who might be seeking BURBERRY products. As the Panel accepts as reasonable Complainant’s contentions that Respondent has no connection or affiliation with Complainant, has not received any license or consent, express or implied, to use the BURBERRY trademark in a domain name or in any other matter, and has never been known by the <burberrybeauty.com> name, the Panel concludes that the disputed domain name was selected and used by Respondent to take advantage of the notoriety associated with the BURBERRY trademark with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
Complainant contends that when an Internet user visits the website to which the disputed domain name resolves, he or she is presented with a link that states that “[t]he domain <burberrybeauty.com> may be for sale by its owner!” and that, upon clicking on the link, the user is redirected to the website for Sedo GmbH (“Sedo.com”), a domain auction website where users can buy and sell domains. The Panel conducted an independent survey on September 26, 2010 by visiting the website at <burberrybeauty.com> and confirmed that Complainant’s contention is still warranted. The Panel also verified that Sedo.com advises on its site that <burberrybeauty.com> is available for sale, that the seller’s listing price is 3,000 Euros and the Internet user is invited to submit a monetary offer for the domain name.
Under paragraph 4(b)(i) of the Policy one of the circumstances, which if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith is the fact that respondent has registered or has 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, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name. In this case, evidence shows that (i) the disputed domain name is for sale at the price of 3,000 Euros, and (ii) Respondent apparently proposed to sell the disputed domain name for an amount in excess of the actual costs directly related to the disputed domain name. Therefore, there is evidence that the first circumstance described in paragraph 4(b)(i) of the Policy is present in this case.
Complainant also contends that the Respondent has shown a pattern of bad faith conduct by having registered other companies’ well-known trademarks as domain names, such as <hermescouture.com> and <givenchy-fragrances.com>. The Panel conducted an independent survey on September 26, 2010 and verified that the domain names <hermescouture.com> and <givenchy-fragrances.com> are also registered at Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, are owned by Respondent, and are also for sale at “Sedo.com”. While there is no UDRP decision in which bad faith has been found in each such instance, the search revealed that Respondent has registered at least two domain names which likely infringe third party trademark rights. Therefore, the Panel finds that the Respondent has shown a pattern of bad faith conduct.
Complainant’s last contention of bad faith is based on the argument that registration of a domain name containing a well-known trademark constitutes bad faith evidence. The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <burberrybeauty.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Dated: September 27, 2010