WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burberry Limited v. Wei Ye
Case No. D2011-1927
1. The Parties
The Complainant is Burberry Limited of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Wei Ye of Lishui, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <burberrychildren.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2011, the Registrar 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 November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on December 14, 2011. 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.
The Registration Agreement has been confirmed by the Registrar to be English. A preliminary issue was raised in respect of the language of the proceedings. The Complaint was filed in English and in support of its request for English to be the language of the proceedings; the Complainant submitted that to the best of its knowledge, the language of the relevant Registration Agreements is in English. It further submitted that: (i) the parties have communicated via electronic mail only in English; (ii) the disputed domain name is in English; and (iii) the balance of hardship lies in the Complainant’s favour as there is no unfairness to the Respondent given the latter’s competence in English, whereas the Complainant would be disadvantaged if forced to translate the Complaint. Reference was made to the case of Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 wherein it was held that “Numerous decisions have found that where the Respondent can clearly understand the language of the Complaint, and the Complainant would be disadvantaged by being forced to translate, the language of the proceedings can remain the language of the Complaint, even though it is different to the language of the Registration Agreement”. The Panel finds that the language of proceedings will be the language of the Registration Agreement.
4. Factual Background
The Complainant asserts as follows:
1. It is a global luxury brand company involved in the design, manufacture, advertising, distribution and sale of high-quality apparel, handbags, wallets, scarves, cosmetics, perfumes, eyewear, watches and other accessories. For more than 90 years, it has continuously used the BURBERRY trade mark, as well as other similar and related trade marks (“the BURBERRY trade mark”), in connection with its products. In addition, registration rights in the trade mark in respect of goods and services have been obtained in the United States of America, as well as in more than 90 countries around the world.
2. As of September 30, 2011, it has 493 retail locations in operation, consisting of 187 retail stores, 210 concessions, 44 outlet stores and 52 franchise stores in Europe, North America, Asia, the Middle East and elsewhere in the world. With the direct control that it exercises over the character and quality of the products and services associated with the BURBERRY trade mark, the BURBERRY trade mark have become distinctive and well-known, with an enormous amount of goodwill attached to them.
3. Its goods are advertised and sold on its website located at “www.burberry.com”, which directs users to specific pages based upon the Internet user’s geographic location, i.e., Europe, the Americas, Asia Pacific, the Middle East and the rest of the world.
4. On or about August 3, 2010, the Complainant filed a complaint under the Policy against an individual, Ruo Chang, in respect of the domain name <burberrybeauty.com> (Burberry Limited v. Ruo Chang, WIPO Case No. D2010-1304). During the pendency of that action, on or around September 21, 2011, the Complainant became aware that the respondent, Ruo Chang, had registered additional domain names incorporating the BURBERRY trade mark, including the disputed domain name. The disputed domain name was reflected in the WhoIs records as having been registered on March 10, 2010. On September 22, 2010, the Complainant sent a notice of infringement to Ruo Chang and demanded that Ruo Chang surrender the disputed domain name. On the same day, Hao Domains responded to the Complainant, allegedly on behalf of Ruo Chang, as follows: “1000 $.” The Complainant rejected the offer and received subsequent emails from Hao Domains on behalf of Ruo Chang, threatening the registration of additional domain names infringing the BURBERRY trade mark. The Complainant subsequently became aware that the disputed domain name was transferred to the Respondent herein. On July 20, 2011, the Complainant received an electronic mail from Hao Domains Domain Broker, which was sent in response to Burberry’s earlier correspondence to Ruo Chang. It read as follows:
In fact we’re not the registrant so we also hope this domain [BurberryChildren.com] can be transferred to you asap. And I think UDRP is not the best way to secure such domains which have many traffic each day. Anyway it is your choice, we know that they also received hundreds of UDRP cases each year, it it[sic] very common for them, we also believe that you will 100% win the UDRP.
Besides, you will spend the same money, the only difference is that you need to wait for 60 or more days, during that there are thousands of people access this domain and may be directed to your competitors. It is also a negative image to your company and lose many potential customers.
So usually we suggest a more effective way to secure this domain asap, and we can negotiate this domain in your budget and ensure the domain can be transferred to you in just one or two days.
Corporate Domains Center
Weihai Road 755
200041 Shanghai China”
On October 20, 2011, Burberry sent a notice of infringement to the Respondent and demanded that the Respondent surrender the disputed domain name. The Complainant did not receive a response.
5. Parties’ Contentions
1. The Complainant submits, firstly, that the disputed domain name is identical and/or confusingly similar to its famous BURBERRY trade mark. The trade mark is incorporated in its entirety in the disputed domain name. It contends that the addition of the generic word “children” to the BURBERRY trade mark does not negate the confusingly similar aspects of the disputed domain name.
The Complainant further contends that consumers who search the Internet for “Burberry” may be directed to the Respondent’s website to which the disputed domain name resolves, creating a likelihood of confusion. This confusion is heightened by the fact that the Complainant manufactures and sells a line of children’s apparel and accessories under the name “Burberry Children”. A consumer encountering the Respondent’s website is likely to believe that it is authorized by, or in some way connected with, the Complainant.
2. The Complainant submits, secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The reasons follow:
(i) the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the BURBERRY trade mark in a domain name or in any other matter;
(ii) the Respondent has never been known by the names “Burberry” or “BurberryChildren.com”;
(iii) the disputed domain name resolves to a parking page with links to third-party websites that sell a wide range of goods and services. Such use of the disputed domain name cannot be considered to be in connection with a bona fide offering of goods or services;
(iv) the Respondent’s website states that the disputed domain name is for sale. The offer for sale negates the possibility of an intention on the part of the 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 disputed domain name as bait to attract consumers who might be seeking Burberry products. This use of the disputed domain name is not a legitimate, non-commercial use.
3. The Complainant submits, thirdly, that the Respondent has registered and is using the disputed domain name in bad faith, and this can be seen, inter alia, from the following facts:
(a) The Respondent registered and is using the disputed domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
(b) When an Internet user visits the Respondent’s website, he or she is presented with a link that states, “burberrychildren.com is for sale”. The link redirects users to “www.domainsponsor.com”, a domain registration and auction website where users can buy, sell, and auction domains. Sedo.com, another domain name auction website, reflects that the disputed domain name is available for sale, the listed price of which is 6,200 Euros. This requested price for the disputed domain name is in excess of any out-of-pocket expenses that the Respondent reasonably would have incurred in registering the disputed domain name. This is indicative of the Respondent’s bad faith.
(c) The Respondent has a practice of registering domain names incorporating the well-known trade marks of companies. The Complainant’s reverse WhoIs search on the Respondent’s e-mail addresses revealed that in addition to the disputed domain name, the Respondent has registered and/or is associated with additional domain names that also incorporate a well-known or famous trade mark. e.g. <chanelskincare.com>, <diesel-perfumes.com>, <diorfragrances.com>, <esteelauderperfumes.com>, <toysrus.sg> and <yslperfumes.com>.
(d) Given the widespread use and fame of the BURBERRY trade marks, it is inconceivable that the Respondent's use of the disputed domain name can be construed as anything but bad faith. The registration of a domain name incorporating a well-known trade mark is a clear indication of bad faith in itself, even without considering other elements (Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
On the substantive issues, the Rules prescribe that the Complainant has to prove each of the elements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has trade mark rights to BURBERRY which the Panel further notes and accepts to be well-known.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states the consensus view that in order to satisfy the threshold test for confusing similarity under the UDRP, “the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion”.
The Panel finds that the BURBERRY trade mark is without question recognizable within the disputed domain name, and the word “children” in the disputed domain name does not alter the character and substance of the disputed domain name such as to distinguish it from the Complainant’s BURBERRY trade mark or to render it any less identical or confusingly similar. The Panel accetps the Complainant’s argument that the confusion is heightened by the fact that the Complainant manufactures and sells a line of children’s apparel and accessories under the name “Burberry Children”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a few non-exhaustive examples whereby a respondent can demonstrate its rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence on record of a bona fide offering of goods or services by the Respondent on his website, nor evidence that he is making a legitimate noncommercial or fair use of the disputed domain name. The evidence submitted does support a finding in the Complainant’s favour on this particular issue, especially since the disputed domain name incorporates a well-known trade mark. The Respondent’s aim of taking advantage of and capitalizing on the BURBERRY trade mark and reputation of the Complainant seems rather blatant, and this is reflected in the content of the Respondent’s website and the email communications sent to the Complainant’s legal counsel.
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly concludes that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Fait
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have 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 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel is persuaded that the Respondent had knowledge of the Complainant’s BURBERRY trade mark when registering the disputed domain name. Further, having considered the evidence on record, the Panel is of the view that the circumstances described in paragraph 4(b)(i), (ii) and (iv) of the Policy have been established in this case, which leads to the Panel’s finding that the Respondent has registered and used the disputed domain name in bad faith. The evidence on record leaves no room for doubt that the basic and ultimate motivation for the Respondent’s registration and choice of the disputed domain name has been devoid of good faith.
The Complainant has accordingly satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <burberrychildren.com> be transferred to the Complainant.
Dated: December 28, 2011