WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Bluehost.com / Dong Xue Mei

Case No. D2011-0132

1. The Parties

Complainant is Burberry Limited, London, United Kingdom of Great Britain and Northern Ireland, internally represented, United States of America.

Respondent is Bluehost Inc., Utah, United States of America and Dong Xue Mei, Shanghai, People’s Republic of China, represented by Gabriel Hanner, Israel.

2. The Domain Name and Registrar

The disputed domain name <burberrywatchesstore.com> (the “Domain Name”) is registered with FastDomain, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2011. On January 25, 2011, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On January 25, 2011, FastDomain, Inc. 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 Complainant on February 2, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 2, 2011. The Center verified that the amended version of 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 Respondent of the Complaint, and the proceedings commenced on February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. Respondent did not submit any formal Response. However, on February 17, 2011 the Center was copied to an email communication to Complainant in which Respondent representative stated that their clients wish to transfer the Domain Name to Complainant. On March 9, 2011 an email communication was received by the Center from the Respondent representative, stating that Respondent had decided to transfer the Domain Name to Complainant. However, due to the Registrar lock they could not proceed. Respondent was willing to transfer the Domain Name if a solution existed but at the same time Respondents did not wish their identity to be revealed. Respondent representative further stated that they would send this email again from <burberrywatchesstore.com> in order to prove that they represent the owners of this Domain Name. In response to Respondent query regarding a possible solution, on March 10, 2011 the Center informed the Parties that if they agreed between them to settle, and needed some time to finalize any settlement agreement and transfer of the Domain Name, the proceedings may be suspended. The Center was copied on a number of emails between the Parties on this matter; however, Complainant ultimately advised the Center it did not wish to suspend the proceedings for the purpose of settlement, and accordingly the proceedings moved forward.

The Center appointed Reinhard Schanda as the sole panelist in this matter on March 21, 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.

4. Factual Background

The disputed Domain Name was registered on September 28, 2009.

Complainant has obtained numerous federally registered trademarks and service marks around the world in connection with its goods and services (the “BURBERRY Trademarks”). The United States Patent and Trademark Office ( the “USPTO”) has granted Burberry trademark registrations specifically including the word BURBERRY for many goods and services, including the following, without limitation:

Complainant currently owns registrations for the BURBERRY word mark in more than 90 countries.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is a well-known 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. For the past 90 years, Complainant has continuously used the BURBERRY word mark, as well as other similar and related trademarks, in connection with its products.

Complainant contends that it has made extensive use of the BURBERRY Trademarks in connection with its goods and services and the BURBERRY Trademarks have become uniquely associated with Complainant. As of December 31, 2010, Complainant operated 453 retail locations consisting of 173 BURBERRY stores, 175 concessions, 46 outlet stores and 59 franchise stores in Europe, North America, Asia and the Middle East. Complainant also sells its products to international wholesale customers including leading department stores, specialty retailers and franchise partners. Complainant has numerous licensees operating under the control of complainant who sell the trademarked products through specialized distribution channels. Complainant has direct control over the character and quality of the products and services associated with the BURBERRY Trademarks. As a result, the BURBERRY Trademarks have become distinctive and well known, and there is an enormous amount of goodwill in the marks.

Complainant’s goods are advertised and sold on its self-owned website located at “www.burberry.com” which directs users to specific pages based upon the Internet user’s geographic location, i.e., Europe, Americas, Asia Pacific and Rest of the World. For example, the United States homepage of the “www.burberry.com” website enables Internet users to access information regarding Complainant’s goods, to purchase such goods, to learn more about Complainant, and to obtain the locations of its retail stores. Complainant operates e-commerce in over 27 countries.

Complainant asserts that the <burberrywatchesstore.com> Domain Name is identical and/or confusingly similar to the well-known BURBERRY Trademarks. Respondent has fully incorporated the BURBERRY word mark in its entirety into the disputed Domain Name. The addition of the generic dictionary words “watches store” to the BURBERRY word mark does not negate the confusingly similar aspects of Respondent’s Domain Name pursuant to Paragraph 4(a)(i) of the Policy.

Moreover, the addition of a generic top-level domain such as “.com” is irrelevant when determining whether a dispute domain name is confusingly similar to a protected mark.

Complainant further contends that consumers who search the Internet for “BURBERRY” may be directed to Respondent’s <burberrywatchestore.com> Domain Name, creating a likelihood of confusion. This confusion is only heightened by the fact that Complainant and Respondent both sell watches. Accordingly, the Domain Name is identical or confusingly similar to the Complainant’s BURBERRY Trademarks.

Complainant further contends that Respondent has no rights or legitimate interests in the <burberrywatchesstore.com> Domain Name. Respondent has never been known by the <burberrywatchesstore.com> Domain Name, unlike Complainant, which has made a name for itself with its BURBERRY word mark since 1856.

Respondent clearly selected the dispute domain name to trade on the goodwill of the famous BURBERRY Trademarks. This use of the <burberrywatchesstore.com> Domain Name is not a legitimate use.

Indeed, Respondent is intentionally using the BURBERRY Trademark as “bait” to attract consumers, who might be seeking Burberry products. Respondent is profiting from the popularity and fame association with the BURBERRY Trademarks and misleadingly diverting consumers to its website, which consumers falsely believe is associated with or authorized by Complainant.

Moreover, Respondent’s use of the <burberrywatchesstore.com> Domain Name cannot be considered to be in connection with a bona fide offering of goods or services. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the BURBERRY Trademark, in a domain name or in any other matter. Moreover, Respondent is not an authorized dealer of Complainant’s merchandise.

While Complainant never authorized or permitted Respondent to use the BURBERRY word mark, a consumer encountering Respondent’s use of the phrase “Burberry watches store” it likely to believe that the phrase identifies goods or services from, authorized by, or in some way connected with Complainant. Respondent sought to benefit from this consumer confusion and failed to disclose its relationship or lack thereof with Complainant.

Indeed, Respondent has used Burberry’s copyrighted advertising campaign images and photographs of Burberry retail locations. This only heightens the potential for confusion. Moreover, Respondent lists the manufacturer of the watches sold as “Burberry Watches”, falsely conveying that <burberrywatchesstore.com> is the manufacturer of the Burberry watches sold on the website.

As a result of the content on the website, a visitor to “www.burberrywatchesstore.com” would likely believe the Domain Name is the official site for Burberry watches. Such a confusing commercial use cannot be considered legitimate or bona fide.

Lastly, Respondent is profiting from the popularity and fame associated with the Burberry Trademarks by using the Burberry Trademarks to solicit orders for counterfeit goods passed off as Burberry’s merchandise. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.

Accordingly, Respondent does not have a legitimate interest in the Domain Name.

According to Complainant, Respondent has registered the <burberrywatchesstore.com> Domain Name and is using the Domain Name in bad faith by doing so with knowledge of Complainant’s rights in the BURBERRY Trademarks.

As stated above, Complainant has made extensive us of the BURBERRY Trademarks in connection with its goods and services and the BURBERRY Trademarks have become uniquely associated with Complainant. Further, Complainant engages in extensive advertising in various media featuring its name and trademarks. A simple Internet search would have revealed Complaint’s extensive us of the BURBERRY Trademark as source identifiers.

Complainant’s extensive use of the BURBERRY Trademarks also would have been obvious though basic domain name searches and other searches of the USPTO records that are readily accessible online. Respondent is thus deemed to have constructive notice of Complainant’s trademark rights by virtue of Burberry’s numerous trademark registrations around the world for the BURBERRY Trademarks.

Given the widespread use and fame of the BURBERRY word mark, it is inconceivable that Respondent’s use of the exact famous BURBERRY word mark can be construed as anything but bad faith.

Respondent is also using the Domain Name to sell “Burberry” branded merchandise, further illustrating Respondent’s awareness of Complainant and its famous BURBERRY Trademarks.

Indeed, it is evident that Respondent intentionally registered the <burberrywatchesstore.com> Domain Name to attract Internet traffic to its site for commercial gain and to attract customers, who might be seeking Complainant’s own website. This use of the famous BURERRY word mark as “bait” to attract Interest users for commercial gain by creating consumer confusion demonstrates that the <burberrywatchesstore.com> Domain Name is being used in bad faith.

Respondent’s bad faith is also highlighted by the fact that Respondent has used the Domain Name to sell counterfeit goods, which has been found to be paradigmatic bad faith.

Also illustrative of Respondent’s bad faith is that after receiving two cease and desist letters from Complainant, Respondent has listed the <burberrywatchesstore.com> Domain Name for sale on “www.flippa.com”. Thus, Respondent is currently using the Domain Name for the purposes of “selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark of 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,” which is a hallmark example of bad faith.

Under the circumstances, Respondent is clearly attempting to profit from the sale or transfer of the dispute Domain Name in bad faith.

Respondent also has a practice of registering domain names, including other companies’ well-known trademarks, such as <armaniwatchesstore.com> and <dolceabbanawatchesstore.com>, which also demonstrates its bad faith in registering the <burberrywatchesstore.com> Domain Name. A pattern of registering variations of other parties’ well-known trademarks is “probative showing bad faith on the part of Respondent.

Accordingly, Respondent registered and is using the <burberrywatchesstore.com> Domain Name in bad faith.

B. Respondent

Respondent did not submit any Response (apart from the emails of February 17, March 9, and 10, 2011 relating to potential settlement).

6. Discussion and Findings

The Panel finds that:

1. the Domain Name <burberrywatchesstore.com>, is confusingly similar to Complainant’s marks;

2. the Respondent has not established rights and legitimate interests in the Domain Name <burberrywatchesstore.com>; and

3. the Respondent has registered and is using the Domain Name <burberrywatchesstore.com>, in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2) 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

Complainant presents evidence of multiple trademark registrations with the USPTO for its BURBERRY marks. Complainant argues that through its use of the mark, as well as its trademark registrations, that it has established rights in the BURBERRY marks for purposes of the instant proceedings. The Panel finds that Complainant has offered sufficient evidence of trademark rights in its BURBERRY mark to establish rights in such mark under Policy 4(a)(i). See Microsoft Corp. v. Burkes, NAF Claim No. 652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); See also Metro. Life Ins. Co. v. Bonds, NAF Claim No. 873143 (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy 4(a)(i)).

Further, Complainant argues that the <burberrywatchesstore.com> Domain Name is identical to its BURBERRY marks. Complainant contends that the presence of the generic top-level domain (“gTLD”) “.com” is irrelevant in a Policy 4(a)(i) analysis. The Panel agrees and finds that Respondent’s disputed Domain Name is identical to Complainant’s mark under Policy 4(a)(i), where the domain name contains Complainant’s mark in its entirety while adding the gTLD “.com”. See Microsoft Corp. v. Mehrotra, WIPO Case No. D2000-0053 (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, NAF Claim No. 872052 (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy 4(a)(i).”).

Further Complainant contends that Respondent has fully incorporated the BURBERRY word mark in its entirety into the disputed Domain Name and that the addition of the generic dictionary words “watches store” to the BURBERRY word mark does not negate the confusingly similar aspects of Respondent’s Domain Name. The Panel finds that the <burberrywatchesstore.com> domain name is confusingly similar to Complainant’s marks. See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 (finding “BurberryScarfOnline.com” confusingly similar to the BURBERRY marks); see also Burberry Limited v. Forum LLC, WIPO Case No. D2006-1076 (holding <burberryapparel.com> confusingly similar, because the trademark BURBERRY was (1) embodied in the disputed domain name; (2) was visually similar to the disputed domain name “except for the facts that Respondent has added to the term “Burberry” the generic word “Apparel” which has no distinctive power in the context of fashion ware and accessories, and which therefore is not sufficient to prevent confusion”; and (3) “BURBERRY” is well-known and distinctive designation that is entitled to strong level of protection.”); See also PepsiCo, Inc., v. Forum LLC, WIPO Case No. D2005-0737 (“pepsitunes.com”held confusingly similar, because addition of “tunes”to the PEPSI word mark was of no significance).

B. Rights or Legitimate Interests

Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(a) of the Policy:

a) respondent has made 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 prior to the dispute;

b) respondent is commonly known by the domain name, even if respondent has not acquired any trademark rights; or

c) respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.

According to the majority of panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the disputed Domain Name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); See also G.D. Searle v. Martin Mktg., NAF Claim No. 118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Complainant argues that Respondent is not commonly known by the disputed Domain Name, and that Respondent has not been authorized or licensed by Complainant to use its marks in any way. The Panel notes that the Registrar WhoIs information for the disputed Domain Name identifies “Bluehost.com / Dong Xue Mei” as the registrant of the Domain Name. Therefore, the Panel finds that Respondent is not commonly known by the disputed Domain Name under Policy 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, NAF Claim No. 740335 (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WhoIs information and other evidence in the record); See also St. Lawrence Univ. v. Nextnet Tech, NAF Claim No. 881234 (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

Complainant further argues that Respondent’s use of the disputed Domain Name indicates that it does not have rights or legitimate interests in the Domain Name. Indeed, Respondent is intentionally using the BURBERRY Trademark as “bait” to attract consumers, who might be seeking Burberry products. Respondent is profiting from the popularity and fame association with the BURBERRY Trademarks and misleadingly diverting consumers to its website, which consumers falsely believe is associated with or authorized by Burberry. The Panel agrees and finds that Respondent’s use of the disputed Domain Name is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, NAF Claim No. 132439 (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also St. Lawrence Univ. v. Nextnet Tech, NAF Claim No. 881234 (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii)).

C. Registered and Used in Bad Faith

Complainant has presented evidence to show that Respondent is using the disputed Domain Name to sell counterfeit Burberry products. Complainant argues that such use is evidence of bad faith registration and use. The Panel agrees and finds that Respondent’s use of the disputed Domain Name to sell counterfeit Burberry products is evidence of bad faith registration and use under Policy 4(b)(iii). See Burberry limited v. Jonathan Schefren, WIPO Case No. D2008-1546 (“Respondent is using domain name at issue to resolve to a website at which counterfeit goods are offered for sale under the guise of Complainant’s registered trademarks. This in and of itself is evidence of bad faith registration and use”); see also Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552. Indeed, as explained by one UDRP WIPO panelist, and approved by subsequent decisions, the sale of counterfeit goods on the dispute domain “supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products. Courts, too, have severely punished counterfeiters who ply their wares on the Internet using deceptive domain names. The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable.” Lilli ICOS LLC v.Dan Eccles, WIPO Case No. D2004-0750; See Philip Morris USA Inc. v. AND Hosting, WIPO Case No. D2007-1609.

Complainant has convincingly argued, that a simple Internet search would have revealed Complaint’s extensive use of the BURBERRY Trademark as source identifiers. Complainant’s extensive use of the BURBERRY Trademarks also would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online. Respondent is thus deemed to have constructive notice of Complainant’s trademark rights by virtue of Burberry’s numerous trademark registrations around the world for the BURBERRY Trademarks. Given the widespread use and fame of the BURBERRY word mark, it is inconceivable for the Panel that Respondent’s use of the exact famous BURBERRY word mark can be construed as anything but bad faith. See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 (“Complainant’s mark [“BURBERRY”] is so famous as to indicate to Respondent that it could make no legitimate use of the disputed Domain Name and that the mere registration of such a famous name is indication of bad faith”); Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019 (“The Complainant’s trademark PRADA is famous throughout the world as indication the source of the Complainant’s fashion products and the Complainant owns exclusive rights to use PRADE by securing trademark registrations in various countries of the world. Such facts support the finding that the Domain Name consisting of the word “prada” is registered and used in bad faith on the part of the Respondent”); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0266 (“It is clear that the Domain Name can only refer to the Complainant. Moreover the Domain Name is so obviously connected with such a well-known name and products that its very use by someone with no connection to the products suggests opportunistic bad faith”).

Further, the Panel is of the view that the mere fact that Respondent is using the Domain Name to sell (counterfeited) “Burberry” branded merchandise, further illustrates Respondent’s awareness of Complainant and its famous BURBERRY trademarks.

Complainant further argues, that Respondent registered the disputed Domain Name to attract Internet traffic to its site for commercial gain and to attract customers, who might be seeking Complainant’s own website. The Panel also finds that the use of the famous BURBERRY mark as a “bait” to attract Internet users for commercial gain by creating consumer confusion demonstrates that the disputed Domain Name is being used in bad faith. See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 (finding bad faith where “Respondent” [was] using the mark to attract Internet users to his website by consuming them as to Complainant’s connection or involvement with the site and the goods offered”); Lilly ICOS LLc v. Dan Eccles, WIPO Case No. D2004-0750 (“The conclusion that Respondent has acted in bath faith by intentionally seeking t capitalize on consumer confusion, and the goodwill associated with the Mark, is reinforced by Respondent’s use of the Mark and Complainant’s CIALIS logo on Respondent’s website.”); see Burberry Limited v. Domaincar, WIPO Case No. D2006-0196; Government Employees Insurance Company “GEIC) v. Forum LLC, WIPO Case No. D2005-1131.

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 name <burberrywatchesstore.com> be transferred to Complainant.

Reinhard Schanda
Sole Panelist
Dated: April 4, 2011