WIPO Arbitration and Mediation Zentrum
ADMINISTRATIVE PANEL DECISION
Burberry Limited v. Xiao Dan Jia
Case No. D2013-2215
1. The Parties
The Complainant is Burberry Limited of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Xiao Dan Jia of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <myburberry.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 27, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant owns United States Trademark Registration Numbers 510,077; 259,571; 280,843; 2,624,684; 2,629,931; 1,747,765; 1828,277; 2,875,336; and 1,133,122 for the mark BURBERRY in connection with apparel, footwear, fabric, watches, perfumes, sunglasses, and handbags, and related goods, and retail services in connection with such goods.
The Respondent registered the Domain Name on October 4, 2012.
5. Parties’ Contentions
The Complainant is a global luxury brand company involved in the design, manufacture, advertising, distribution and sale of high-quality apparel, bags, scarves, cosmetics, perfumes, glasses, watches and other accessories. The Complainant has continuously used its BURBERRY mark for 85 years. The Complainant has made extensive use of the BURBERRY mark in connection with its goods and services, and the mark has become uniquely associated with the Complainant. As of September 30, 2013, the Complainant operated 545 retail locations consisting of 212 BURBERRY stores, 215 concessions, 52 outlet stores and 66 franchise stores throughout Europe, North America, Asia and the Middle East. The Complainant owns registrations for the BURBERRY mark in more than 90 countries.
The Complainant owns the domain name <burberry.com>, which directs Internet users to specific pages based upon the users’ geographic locations. The web site allows Internet users to access information regarding the Complainant’s goods, to purchase goods, to learn more about the Complainant, and to obtain the locations of the Complainant’s retail stores.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s BURBERRY mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant offers evidence showing that the Domain Name is being used in connection with a web site that generates pop up advertisements and that states that the Domain Name is for sale. The Complainant argues that these uses do not constitute a bona fide offering of goods or services. The Complainant contends that the Respondent is intentionally using the well-known BURBERRY mark to attract consumers who might be seeking the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the trademark BURBERRY.1 There is much support in precedent interpreting the Policy for the proposition that the pairing of a distinctive trademark with less distinctive terms does not prevent a finding of confusing similarity with the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the BURBERRY trademark with the less distinctive term “my” is confusingly similar to the Complainant’s BURBERRY trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that is offering to sell the Domain Name and that generates pop-up advertisements, and the Respondent has not denied the allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name long after the Complainant began using the BURBERRY mark. The Respondent is using the Domain Name to generate advertising revenue by diverting Internet users who are trying to find the Complainant or its products. There is little question that the Respondent’s use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent’s site by creating a likelihood of confusion with the Complainant’s trademark. Moreover, the fact that the Domain Name is on a web site that offers it for sale suggests that the Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, which demonstrates bad faith under paragraph 4(b)(i) 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 Domain Name, <myburberry.com>, be transferred to the Complainant.
Date: February 10, 2014
1 The Complainant has demonstrated that it owns rights in the United States, and stated that it owns rights in 90 other countries. The Respondent is located in Canada. The Complainant did not put in any evidence about its rights in Canada, although it would seem likely that the Complainant has a registration in Canada. In finding that the Complainant has rights, the Panel is relying on the United States registrations and the other unrefuted allegations in the Complaint that tend to show that the mark is well-known on a worldwide basis.