World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mulberry Company (Design) Ltd. v. ronld chen AKA chen, ronld

Case No. D2010-1718

1. The Parties

The Complainant is Mulberry Company (Design) Ltd. of London, the United Kingdom of Great Britain and Northern Ireland, represented by The GigaLaw Firm of the United States of America.

The Respondent is ronld chen AKA chen, ronld of Wuhan, Hubei, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <mulberry-bags-store.com>, <mulberry-bags-store.info>, <mulberry-bags-store.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2010. On October 11, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, GoDaddy.com, Inc. 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 sent an email communication to the Complainant on October 14, 2010 requesting confirmation of email communications to the Respondent. The Complainant confirmed accordingly on the same day.

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 October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2010.

The Center appointed Hariram Jayaram as the sole panelist in this matter on November 12, 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, Mulberry Company (Design) Ltd, is a part of Mulberry Group pIc1, an Alternative Investment Market (AIM) company registered in England and Wales under the registration number 1180514. Mulberry Group pIc is listed on the London Stock Exchange.

The Complainant has registered the following trade marks:

- MULBERRY and Device registered in the United States of America (registration no. 1,123,282) for goods and services falling in class 18 on July 31, 1979;

- MULBERRY ENGLAND and Device registered in the United States of America (registration no. 2,031,468) for goods and services falling in class 24 on January 21, 1997;

- MULBERRY and Device registered in the United States of America (registration no. 2,748,219) for goods and services falling in classes 16, 18, 25 and 35 on August 5, 2003;

- MULBERRY HOME and Device registered in the United States of America (registration no. 2,884,208) for goods and services falling in classes 24, 26 and 27 on September 14, 2004;

- MULBERRY and Device registered in the United States of America (registration no. 3485165) for goods and services falling in classes 3 and 9 on August 12, 2008;

- MULBERRY registered in the United States of America (registration no. 3,705,618) for goods and services falling in classes 18 and 35 on November 3, 2009;

- MULBERRY registered in the United Kingdom (registration no. 2484516) for goods and services falling in classes 18 and 35 on January 2, 2009;

- MULBERRY and Device registered in the United Kingdom (registration no. 2457016) for goods and services falling in classes 3 and 9 on December 28, 2007;

- MULBERRY and Device registered in the United Kingdom (registration no. 1389879) for goods and services falling in class 16 on April 19, 1991;

- MULBERRY and Device registered in the United Kingdom (registration no. 1389878) for goods and services falling in class 3 on October 9, 1992;

- MULBERRY and Device registered in the United Kingdom (registration no. 2490952) for goods and services falling in class 14 on January 16, 2009;

- MULBERRY registered in the United Kingdom (registration no. 2490951) for goods and services falling in class 14 on December 5, 2008;

- MULBERRY and Device registered in the United Kingdom (registration no. 2382982) for goods and services falling in class 35 on July 29, 2005;

- MULBERRY and Device registered in the United Kingdom (registration no. 2323775) for goods and services falling in classes 20, 21, 24 and 27 on August 22, 2003;

- MULBERRY and Device registered in the United Kingdom (registration no. 2303771) for goods and services falling in classes 18 and 25 on November 29, 2002.

The above listed registrations are collectively referred to hereafter as the “MULBERRY trade mark”.

The disputed domain names were registered on September 4, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant, founded in 1971, is a British design company renowned worldwide for its craftsmanship and quality. The brand’s backbone is an extensive line of luxury fashion bags for men and women that combine stylish, standout design with the finest leathers and detailing. In addition to leather goods, the Complainant’s product range includes womenswear and interior design. The Complainant’s principal activities are the design and manufacture or sourcing of products and their subsequent sale through wholesale channels or the Complainant’s own shops in home and export markets. The Complainant trades internationally directly through its own retail stores, direct wholesale customers and partners, but its operations are largely based in the United Kingdom. The Complainant or its partners operates in Europe, Asia, the Middle East and North America.

In approximately the past year, the Complainant’s partners opened stores in Helsinki Airport, a second shop in Athens, a seventh shop-in-shop in the Republic of Korea and a shop-in-shop in Takashimaya in Singapore. In October 2009, the Complainant completed a transaction to purchase the two New York shops previously held by an associate and reclaimed the full distribution rights for the North American market. The Complainant is partnering with Target (an upscale discounter that operates 1,743 stores in 49 states in the United States), to launch a limited-edition handbag collection, “Mulberry for Target”, which will be available in U.S. Target stores and at “www.target.com” website beginning in October 2010. The Complainant had revenue in the year ending March 31, 2010, of 72.1 million British pounds, an increase of 23 percent over the previous year.

The Respondent is using the disputed domain name <mulberry-bags-store.com> in connection with a website that falsely appears to be owned, operated or associated with the Complainant but is actually selling counterfeit merchandise under the MULBERRY trade mark. The Respondent falsely represents that the goods sold at this website are actually the Complainant’s goods. The Complainant placed an order via the Respondent’s website for products advertised by the Respondent under the MULBERRY trade mark and received counterfeit merchandise. The Respondent is using the disputed domain names <mulberry-bags-store.net> and <mulberry-bags-store.info> in connection with monetized parking pages that contain links to websites advertising products in competition with the Complainant’s goods, including the links labeled as “Designer Handbags on Sale”, “Messenger Bags”, “Coach Purses under $10” and “Designer Leather Handbags”. Each of the disputed domain names is confusingly similar to the MULBERRY trade mark. The relevant comparison to be made is with the second-level portion of each of the disputed domain names only i.e., “mulberry-bags-store”, as it is well-established that the top-level domain names i.e., “.com”, “.net” and “.info” should be disregarded for this purpose since “neither the beginning of the URL ‘http://www.’ nor the TLD have any source-indicating significance”.

Where, as here, a disputed domain name wholly incorporates a complainant's registered trade mark, that is sufficient to establish confusing similarity for purposes of the Policy and where, as here, the second-level domain contains a complainant’s trade mark plus the descriptive words i.e. “bags” and “store”, “a wide variety of panelists have considered that the addition of generic words to trade marks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant”. In particular, where, as here, the words in a domain name that are added to a complainant’s trade mark i.e., “bags” and “store”, “have some relevance to goods or services provided within [the complainant's] industry”. Additionally, “the overall impression of the designation” of each of the disputed domain names is one of “being connected to the trade mark of the Complainant.” Accordingly, each of the disputed domain names is confusingly similar to one of the Complainant’s trade marks.

The Respondent has no rights or legitimate interests in any of the disputed domain names. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the MULBERRY trade mark in any manner.

The Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy, because, upon information and belief, the Respondent has never used, or made preparations to use, the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The Respondent is specifically using the disputed domain names in connection with websites that falsely appear to be affiliated, connected or associated with the Complainant. Such uses do not create any rights or legitimate interests.

The Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(ii) of the Policy, because, to the Complainant's knowledge, the Respondent has never been commonly known by any of the disputed domain names and has never acquired any trade mark or service mark rights in any of the disputed domain names. According to the whoIs records, the registrant of the disputed domain names is “ronld chen” not “Mulberry” or “Mulberry Bags Store”. In addition, given the established rights in the MULBERRY trade mark since at least 1972, it is unlikely that the Respondent is commonly known by this trade mark.

The Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(iii) of the Policy, because the Respondent is not making a legitimate noncommercial or fair use of any of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant's MULBERRY trade mark. Rather, the Respondent is making an illegitimate, commercial, unfair use of the disputed domain names, with intent for commercial gain misleadingly to divert consumers. The Respondent is specifically using the disputed domain name <mulberry-bags-store.com> in connection with a commercial website that actually sells counterfeit goods under the MULBERRY trade mark and the Respondent is using the disputed domain names <mulberry-bags-store.net> and <mulberry-bags-store.info> in connection with websites that contain various links to websites that falsely appear to be associated with the Complainant. Such links are part of a typical “pay-per-click” or “monetized parking” scheme that generates revenue for the Respondent and is not legitimate. Accordingly, the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

Each of the disputed domain names should be considered as having been registered and used in bad faith by the Respondent. The Respondent falsely represents that the goods sold at the website using the disputed domain name <mulberry-bags-store.com> are the Complainant’s goods, although they actually are counterfeit items. In addition, the Respondent is using the MULBERRY trade mark in “meta tags” for the HTML source code for the website using the domain name <mulberry-bags-store.com>. Such use is further evidence of bad faith under the Policy. The Respondent is using the disputed domain names <mulberry-bags-store.net> and <mulberry-bags-store.info> in connection with monetized parking pages that includes links to websites offering goods in competition with those offered by the Complainant under the MULBERRY trade mark. This constitutes bad faith as set forth in paragraph 4(b)(iv) of the Policy.

In addition, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the MULBERRY trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy.

The Respondent has acted in bad faith under paragraph 4(b)(ii) of the Policy because he has registered the disputed domain names in order to prevent the Complainant from reflecting its MULBERRY trade mark in a corresponding domain name and has engaged in a pattern of such conduct. Clearly, the Complainant is prevented from registering any of the disputed domain names, and the fact that this Complaint includes three disputed domain names indicates a “pattern” of conduct by the Respondent. Moreover, given the Complainant’s established rights in the MULBERRY trade mark since 1972, the Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. Accordingly, each of the disputed domain names was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:

- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant has registrations for the MULBERRY trade mark in the United States of America and in the United Kingdom for goods and services falling in various international classes i.e. 3, 9, 14, 16, 18, 24, 25, 26, 27 and 35. The Complainant manufactures and sells luxury fashion bags extensively using its MULBERRY trade mark worldwide. Apart from the gTLD, all three disputed domain names incorporate the Complainant’s MULBERRY trade mark in its entirety with the addition of the words “bags” and “store” with a hyphen between the words “mulberry” and “bags” and “bags” and “store”. The addition of the hyphens and the descriptive words in the disputed domain names is insufficient to distinguish the disputed domain names from the Complainant’s MULBERRY trade mark. Several WIPO UDRP decisions on domain name disputes have confirmed that the mere addition of generic or descriptive words to a trade mark owned by another to form a domain name will not diminish the confusing similarity between the domain name and said trade mark. Some of these cases are as follows:

- In Wikimedia Foundation Inc. v. commens, NanJiang, WIPO Case No. D2009-1699, the disputed domain name <softwarewikipedia.com> was found to be confusingly similar to the WIKIPEDIA trade mark;

- In SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272, the disputed domain names <getambienfree.info> , <getambienhere.info>, <getambien.info> and <purchaseambien.info> were found to be confusingly similar to the AMBIEN trade mark;

- In Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199, the disputed domain name <flyersalumni.com> was found to be confusingly similar to the FLYERS trade mark;

- In Gateway Inc. v. Domains by Proxy Inc. / NetWeb, Inc., WIPO Case No. D2008-0063, the disputed domain names <e-gatewaycomputer.com> and <e-gatewaycomputers.com> were found to be confusingly similar to the GATEWAY trade mark.

In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661, the panel held:

“The Complainant's primary business is providing hotel accommodation, and the disputed domain names within this category incorporate words which have some relevance to goods or services provided within this industry. For example, it would not be unreasonable for a user to believe that the disputed domain name <holiday-inn-express-university.com> provides information on Holiday Inn Express hotels near universities. For the majority of these disputed domain names, the generic words appear to relate to the common or trading name of the hotel operated by the Complainant (for example, [‘]Candlewood Houston By The Galleria[’] or [‘]Crowne Plaza Pensacola Grand Hotel[’]). As mentioned above, a number of the Complainant's trade marks are extremely well-known and highly distinctive. The combination of these distinctive trade marks with generic words relevant to potential hotel guests creates an immediate potential for false association with the Complainant's trade marks”

Similarly, in this proceeding, the disputed domain names incorporate descriptive words which are connected and descriptive of the Complainant’s business. Such reference serves to increase and not diminish the likelihood of confusion between the disputed domain names and the Complainant’s MULBERRY trade mark.

The Panel agrees with the findings in the above decisions and concludes that the disputed domain names are confusingly similar to the Complainant’s MULBERRY trade mark.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made allegations against the Respondent as to the Respondent’s lack of rights and legitimate interests. The Complainant has not assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the MULBERRY trade mark in any manner. To the Complainant’s knowledge, the Respondent is not commonly known by any of the disputed domain names. To the Complainant’s knowledge, the Respondent has not acquired any trade mark rights in any of the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. The disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services. All these allegations have gone unchallenged by the Respondent who has chosen not to submit a response.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name <mulberry-bags-store.com> resolves to a website which appears to offer for sale counterfeit goods affixed with the Complainant’s MULBERRY trade mark. The Respondent has also made use of the Complainant’s MULBERRY trade mark in the meta tags for the HTML source code for the said website. In Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, the panel held:

“… the word [‘]POKÉMON[’] is obviously a well-known mark used by the Complainant in its day-to-day business. The Respondent has used this mark and the related [‘]Pikachu[’] mark on its websites and in meta-tags designed to attract visitors to its sites. Use of these trade marks by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith.”

The disputed domain names <mulberry-bags-store.info> and <mulberry-bags-store.net> resolve to monetized parking pages which provide links to the websites of the Complainant’s competitors.

The choice of the disputed domain names and the use of the disputed domain names for purposes identified above not only show that the Respondent is well aware of the Complainant and its business but also goes to show that the disputed domain names have been created with the intention to reap commercial benefit generated through the confusion and customer diversion. The Panel finds that such use and registration of the disputed domain names constitutes bad faith registration and use within the meaning of the Policy. The Respondent has not provided evidence of good faith use of the disputed domain names or submitted a response to the Complaint to persuade the Panel in finding otherwise.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names, <mulberry-bags-store.com>, <mulberry-bags-store.net>, <mulberry-bags-store.info> be transferred to the Complainant.

Hariram Jayaram
Sole Panelist
Dated: November 26, 2010


1 Mulberry Company (Design) Ltd and Mulberry Group pic are interchangeably referred to herein as "Complainant."

 

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