WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burberry Limited v. Guosong Chen
Case No. D2012-0817
1. The Parties
The Complainant is Burberry Limited of London, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Guosong Chen of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <burberrybritain.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 18, 2012, GoDaddy.com, LLC 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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 6, 2012. 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 is a widely known 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. It operates over 500 retail locations around the world, and has numerous licensees who sell its trademarked products through specialized distribution channels. The Complainant also advertises and sells its goods on its own website at “www.burberry.com”.
The Complainant owns many trademark registrations for the trademark BURBERRY in more than 90 countries around the world, the earliest of which dates from 1929.
The disputed domain name was registered on August 14, 2011. According to screenshots provided by the Complainant, as at April 10, 2012, the disputed domain name resolved to a website, headed “Sale Cheap and New Style Burberry Bags Online Store!”, which contained pictures of handbags labeled “Burberry” that the Complainant contends are not authentic BURBERRY products.
On April 10, 2012, the Complainant sent a notice of infringement to the host of the website to which the disputed domain name resolved, requesting the website be shut down on the ground it was selling counterfeit goods. On April 12, 2012, the Complainant sent a cease and desist letter to the Respondent, seeking the immediate transfer of the disputed domain name to the Complainant. Following these communications, the website to which the disputed domain name resolved was removed, but the Respondent did not respond to the Complainant’s letter.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical and/or confusingly similar to its BURBERRY trademark because it fully incorporates the BURBERRY trademark in its entirety. The addition of “.com” is irrelevant, and the addition of the descriptive word “Britain” does not negate the confusingly similar aspects of the disputed domain name. Indeed, the confusion is heightened by the fact that the word “Britain” is descriptive of Burberry’s heritage, and consumers are likely to believe that the phrase “Burberry Britain” identifies goods or services from, authorized by, or in some way connected with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it has no connection or affiliation with the Complainant and has not received any license or consent to use the BURBERRY trademark in a domain name or in any other matter; (ii) it has never been known by “Burberry” or the disputed domain name; and (iii) it is not being used in connection with a bona fide offering of goods or services as it is used in connection with the sale of counterfeit merchandise being passed off as genuine Burberry merchandise.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) it would have had knowledge of the Complainant’s rights in the BURBERRY trademark through the Complainant’s extensive advertising featuring its name and trademarks, and/or by undertaking a simple Internet search; (ii) by using the disputed domain name to sell counterfeit “Burberry” branded merchandise the Respondent has demonstrated actual awareness of the Complainant and its famous BURBERRY trademark; (iii) given the Respondent’s complete incorporation of the BURBERRY trademark in the disputed domain name it is evident that the Respondent intentionally registered it to attract Internet traffic to its sites for commercial gain by creating consumer confusion; (iv) the Respondent is knowingly using the disputed domain name to sell counterfeit goods; and (v) the Respondent has a practice of registering domain names, including other companies’ well-known trademarks, indicating a pattern of conduct of bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark
BURBERRY, and adds the descriptive word “Britain”. The Panel finds the addition of this word does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is especially so given that the Complainant’s heritage is related to the United Kingdom. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its BURBERRY trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website selling products that purported to be, but were not, the Complainant’s products. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many decades after the Complainant first used its BURBERRY trademark. The evidence on the record provided by the Complainant with respect to the use of its BURBERRY trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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,<burberrybritain.com>, be transferred to the Complainant.
Andrew F. Christie
Dated: June 20, 2012