WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arcadia Group Brands Limited, Arcadia Group Limited v. Whois Privacy Services Pty Ltd, Privacy Ltd., Disclosed Agent for YOLAPT

Case No. D2013-0951

1. The Parties

The Complainants are Arcadia Group Brands Limited (the “First Complainant”) and Arcadia Group Limited (the “Second Complainant”), both of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), as represented by Adlex Solicitors, United Kingdom.

The Respondents are Whois Privacy Services Pty Ltd of Fortitude Valley, Australia, and Privacy Ltd., Disclosed Agent for YOLAPT of the Isle of Man, United Kingdom of Great Britain and Northern Ireland. For reasons which are discussed below, the Respondents are referred to collectively as “Respondent” in this Decision.

2. The Domain Name and Registrar

The Disputed Domain Name <burtonmenswear.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2013. On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 6, 2013.

The Center verified that the Complaint together with the amended 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 June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2013.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on July 9, 2013. 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 First Complainant was incorporated in 1971 and owns a portfolio of registered trademarks for BURTON MENSWEAR; the Second Complainant was incorporated in 1929 and carries on the business of men’s clothing retailer. The First and Second Complainants shall hereafter be referred to collectively as the “Complainants” except where it is appropriate to refer to them separately.

The Second Complainant submits that it has traded under the names “Burton” and “Burton’s Menswear” since the early 1900s and became part of the Arcadia Group in 1998. It is not clear to the Panel that the Second Complainant began trading under the names “Burton” and “Burton’s Menswear” in the early 1900s, as the information presented in the Complaint does not particularly evidence use of these names prior to 1929, when it is apparent the Second Complainant was incorporated. However, as the Panel acknowledges that “Burton” is a well-known trading name, and it is clear that the Second Complainant has a long trading history, the Panel’s decision in this case is not affected by this lack of clarity.

The Burton business was retained within the Arcadia Group and this decision is only in reference to the Second Complainant’s trade as Burton or Burton Menswear. The Second Complainant is currently one of the United Kingdom’s largest men’s fashion retailers, and has over 400 stores in the United Kingdom and Ireland, and several registered trademarks for the word marks BURTON and BURTON MENSWEAR (details as set out below).

The Second Complainant has operated its main website at “www.burton.co.uk” since about 1996, and it is submitted by the Complainants that the number of visitors to the website has averaged over 1 million per quarter between January 1, 2008 and October 1, 2012.

The Disputed Domain Name was registered on December 27, 2002.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the Disputed Domain Name is identical to the trade mark BURTON MENSWEAR in which the First Complainant has rights; the First Complainant relies on its registered trademarks:

- CTM no. 546432 for BURTON MENSWEAR dated May 27, 1997 in classes 9, 18 and 25;

- CTM no. 1696160 for BURTON MENSWEAR dated June 6, 2000 in classes 35, 38 and 42; and

- UK word mark 2245155 for BURTON MENSWEAR dated August 24, 2001 in class 35.

The Second Complainant also relies on common law rights in respect of the goodwill and reputation it has acquired by virtue of its extensive trading and marketing activities, and submits that the BURTON and BURTON MENSWEAR marks are recognized by the public as distinctive of the Second Complainant’s business and as famous marks.

The Complainants submit that as the Disputed Domain Name is confusingly similar to the BURTON trade mark owned by the First Complainant and used by the Second Complainant, and wholly incorporates the trade mark with the only addition being a generic word “menswear” which is highly relevant to the Second Complainant’s business.

The Complainants contend that the Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- The Complainants have no association with the Respondent and the First Complainant has never authorized or licensed the Respondent to use its trademarks;

- The Respondent has used the Disputed Domain Name and the First Complainant’s trademarks to disrupt the business of a competitor and/or to attract, confuse and profit from Internet users seeking the Second Complainant, and therefore such use is not bona fide;

- The Respondent intends commercial gain from its actions.

The Complainants contend that the Respondent registered and is using the Disputed Domain Name in bad faith. Particularly, the Complainants submit that no distinction should be drawn between the Respondent and the previous registrant of the Disputed Domain Name, who was named as: “Privacy Ltd (Disclosed Agent for Yolapt).” The Complainants submit that it is clear that the Respondent, Whois Privacy Services Pty Ltd, and Privacy Ltd (Disclosed Agent for Yolapt) are connected entities, and that the registrant has been changed to Whois Privacy Services Pty Ltd, a proxy service, to obstruct the Complainants (in their investigations about the Disputed Domain Name). The Complainants believe this to be the case because the Registrar remained unchanged, as did the name servers, until recently; in addition, the nature of the website to which the Disputed Domain Name points also remains largely unchanged. The Complainants submit that such activities are themselves evidence of registration and use in bad faith.

Further, the Complainants submit that the Respondent intended to prevent the First Complainant from reflecting its trade mark BURTON MENSWEAR in the Disputed Domain Name and was aware of the Second Complainant and its business at the time of the registration of the Disputed Domain Name; the Complainants contend that the Respondent would have known that the First or Second Complainant would want to register the Disputed Domain Name. In addition, the Respondent has engaged in a pattern of such conduct and has been found to have acted in bad faith in registering and using certain domain names in 41 other UDRP proceedings, many concerning famous marks.

The Complainants submit that the Respondent has registered the Disputed Domain Name in order to unfairly disrupt the business of the Second Complainant by diverting business intended for the Second Complainant, and is acting as a competitor because: the website at the Disputed Domain Name features sponsored links to other sites offering services similar to those of the Second Complainant; it is acting in opposition to the Second Complainant and is therefore a competitor in this sense; and it is operating in the same field of commerce as the Second Complainant.

The Complainants submit that it is inconceivable that the Respondent intended to operate a genuine business with, or had any other genuine reason to use, a domain name that comprises a competitor’s trade mark.

The Complainants contend that the website to which the Disputed Domain Name points is a scheme adopted by the Respondent to confuse, attract and profit from Internet users who are searching for the Second Complainant’s business on search engines, web browsers and otherwise on the Internet, which will lead to a likelihood of confusion on the part of the public. As further evidence of the Respondent’s intention to create a likelihood of confusion, the Complainants submit the following: that it is inconceivable that the Respondent has registered the Disputed Domain Name independently of the First Complainant’s distinctive and famous trade mark; the Respondent is located in the Isle of Man, a Crown dependency which is closely associated with the UK; the Respondent has registered other domain names targeted at other UK businesses; the registration of the Disputed Domain Name could only have been with the intention to target the Second Complainant’s business; and the website to which the Disputed Domain Name points includes links to the Second Complainant’s own website (“www.burton.co.uk”).

The Complainants also contend that the Disputed Domain Name appears prominently on the top of the home page of the website to which the Disputed Domain Name points, and in the metatitle and metadescription visible through search engines, thereby adding to the likelihood of confusion on the part of Internet users.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

For the Complainants to prevail they must establish each of the following elements of paragraph 4(a) of the Policy:

(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;

(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

As stated above, the First Complainant is the owner of a number of Community and UK registered trademarks in the word mark BURTON MENSWEAR. The Disputed Domain Name is comprised of words identical to these trademarks; the top-level suffix “.com” may be disregarded for the purposes of applying the “identical or confusingly similar” criteria as it is a technical requirement of a domain name registration.

Through limited investigations which it is entitled to undertake (Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038), the Panel observes that the First Complainant also has a number of registered trademarks for the word mark BURTON, which is also incorporated in the Disputed Domain Name in its entirety. In respect of the word mark BURTON, the Disputed Domain Name contains an additional word: “menswear”. However, the Panel refers to Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512, which states the principle that if a domain name incorporates a distinctive mark in its entirety, “it is confusingly similar to that mark despite the addition of other words.”

In addition, the Panel recognizes that the Second Complainant has substantial reputation and goodwill in the Burton brand, due to the length of time the Second Complainant has been trading under this name, and the popularity of the brand. It is therefore agreed that the Second Complainant has unregistered rights in relation to BURTON and BURTON MENSWEAR.

The Panel finds that due to this level of goodwill and reputation in the brand, and given that the Disputed Domain Name is identical to the BURTON MENSWEAR and BURTON marks used, it is identical or confusingly similar to the marks in which the First and Second Complainants have rights.

In light of the reasoning above, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel is satisfied by the First Complainant’s submissions that it has never authorized or licensed the Respondent to use its trademarks. In addition, the Respondent’s use of the Disputed Domain Name is and has historically been (whilst being identical or confusingly similar to the First Complainant’s trademarks) clearly for commercial purposes. The Panel has viewed the website to which the Disputed Domain Name points, and observes that it shows similar content to that captured in screenshots by the Complainants, and which the Complainants have submitted as exhibits to their Complaint. This content includes a number of links to goods and services including: “Burtons”, “Mens Wear”, “Cheap Mens Suit” and “Mens Ties”, among others. The clear reference to the Second Complainant’s trading name ‘Burton’, as well as to the type of products sold by the Second Complainant, indicates that the purpose of use of the Disputed Domain Name is to attract Internet users who are searching for the Second Complainant, and to mislead them into visiting the website for the purposes of commercial gain. This cannot be considered fair or legitimate use. The Panel is therefore in agreement with the Complainants’ submission that the Disputed Domain Name is being used in order to attract, confuse and profit from Internet users seeking the Second Complainant’s goods.

Furthermore, it is an established principle in UDRP proceedings that a complainant need only build a prima facie case that a respondent lacks rights or legitimate interests in a domain name, as although the burden of production of evidence to establish this lack of rights or legitimate interests technically rests with the complainant, in practice, “proving the negative” in this regard can be extremely difficult. After such prima facie case is made, the burden of proof shifts to the respondent, and if the respondent fails to present any evidence, the complainant is generally accepted to have satisfied paragraph 4(a)(ii) of the Policy. The Panel believes that the Complainants have made a sufficiently strong prima facie case that paragraph 4(a)(ii) of the Policy applies, and notes that the Respondent has not responded to the Complainants’ submissions.

For the reasons above, the Panel finds that the Complainants have satisfied element (ii) under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel can see from exhibit 14 to the Complaint, on May 23, 2013, that the registrant was Whois Privacy Services Pty Ltd; it is now Privacy Ltd. Disclosed Agent for Yolapt.

In the Panel’s view, the Complainants’ submission that Privacy Ltd. Disclosed Agent for Yolapt and Whois Privacy Services Pty Ltd are connected could be the case, especially as the content of the website to which the Disputed Domain Name points has not changed significantly nor has the Registrar changed nor the name servers (until recently). In any event, the registrant Privacy Ltd. Disclosed Agent for Yolapt is the Respondent and liable for the outcome of any UDRP decisions. Therefore the Panel accepts that Whois Privacy Services Pty Ltd also be included as the Respondent (although technically only Privacy Ltd, Disclosed Agent for Yolapt appears as registrant). For this reason, “Whois Privacy Services Pty Ltd”, and “Privacy Ltd., Disclosed Agent for Yolapt are referred to singularly in this decision as “the Respondent”.

The Panel is satisfied with the Complainants’ contention that the Respondent would have known about the Second Complainant and its business at the time of registration of the Disputed Domain Name in 2002 and believes that the Respondent deliberately registered the Disputed Domain Name in order to disrupt the business of the Second Complainant, and attract consumers to the website at the Disputed Domain Name for commercial gain by creating a likelihood of confusion as to the source of products on the Respondent’s website. The website to which the Disputed Domain Name points features links to products similar to those sold by the Second Complainant, indicating that the Respondent knew precisely the nature of the Second Complainant’s business, and is seeking to profit from the confusion of visitors, who were searching for the Second Complainant, and who end up at the website. The Panel finds that the Respondent did not have any good faith or genuine reasons to use the Disputed Domain Name to operate its business.

Furthermore, the Panel notes the Respondent’s history of registering similarly well-known and reputable marks in which it has no rights or legitimate interests, in order to confuse Internet users in order to attract them to websites to which those domain names point, and thereby profit commercially, and the 41 resulting UDRP transfer decisions that have been made in respect of those domain names. Given the assessment above, there is no reason to believe that the Respondent’s registration and use of the Disputed Domain Name anything other than registration and use in bad faith.

Accordingly, the Panel finds that the Complainants have satisfied element (iii) under paragraph 4(a) of the Policy.

7. Decision

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, <burtonmenswear.com> be transferred to either the First or Second Complainant as they may agree between them and notify to the Registrar accordingly.

Charters Macdonald-Brown
Sole Panelist
Date: July 23, 2013

¹ In its original Complaint, the Complainant indicated that in 2008 the Registrant for the disputed domain name was Privacy Ltd., Disclosed Agent for Yolapt, after which the Registrant appears to have changed into Whois Privacy Services Pty Ltd. As a result of the Center email communication of June 3, 2013, the Complainant added Privacy Ltd., Disclosed Agent for Yolapt as a Respondent in this proceeding. However, the Complainant did not amend its contentions accordingly.