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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Forum LLC

Case No. D2006-1076

 

1. The Parties

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

The Respondent is Forum LLC, Roseau, Dominica.

 

2. The Domain Name and Registrar

The disputed domain name <burberryapparel.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2006. On August 25, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 12, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2006.

The Center appointed Kamen Troller as the sole panelist in this matter on October 17, 2006. 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 large and well-known maker of fashion ware and accessories, the total estimated retail value of products sold globally under the Burberry brand being in excess of ₤ 2.7 billion.

The Complainant is the owner of numerous trademarks containing the name BURBERRY in the United States (Complaint’s Exhibit D).

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, ie. United States, United Kingdom, and many other countries.

Respondent is Forum LLC of Roseau, Dominica. Due to its total silence, the Panel has no first hand information about its activities.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.

It alleges that:

- it has legitimate rights to the distinctive designation BURBERRY, which it uses as trade name and trademark since 1856.

- Respondent registered the <burberryapparel.com> domain name and is using it to promote and advertise Burberry products without any authorization from Complainant. When an Internet user types “www.burberryapparel.com” into the address bar of his or her Internet browser, he or she is directed to a website that clearly displays the BURBERRY marks numerous times. When an Internet user clicks on a link on the left side of the webpage, the right side of the webpage becomes populated with 5 links to third-party websites (none of which are authorized Internet retailers of Burberry merchandise) that purportedly offer “Burberry” products for sale. Some of these third-party websites have been found to sell counterfeit merchandise that have infringed upon the BURBERRY marks.

- It had some difficulties to discover the true identity of Respondent. As soon as identified, it promptly sent a notice of infringement to the Respondent on April 12, 2006. The Respondent received and signed for the letter on April 18, 2006. In the April 12, 2006 letter, Complainant asserted that the registration and use of the <burberryapparel.com> domain name was cyberpiracy under 15 U.S.C. § 1125(d), and requested the surrender of the <burberryapparel.com> domain name registration. Respondent failed to respond to the April 12, 2006 letter, so Complainant sent a final notice of infringement to the Respondent via email on July 18, 2006. In the letter, Burberry requested the surrender of the <burberryapparel.com> domain name registration. The July 18, 2006 letter was also sent to Moniker.com via email. On July 20, 2006, Monte Cahn, CEO of Moniker.com, replied via email and informed Burberry that he had forwarded the July 18, 2006 letter to the registrant. Respondent has not replied to the July 18, 2006 letter.

- Respondent is a serial cybersquatter who has registered thousands of domain names. For example, Respondent has registered many domain names that capitalize on variations and misspellings of famous trademarks. Respondent has been named in many ICANN administrative proceedings requiring the transfer of infringing domain names.

- the <burberryapparel.com> domain name is confusingly similar to the well-known BURBERRY marks. Respondent has fully incorporated the BURBERRY word mark in its entirety into the infringing domain name, and has merely added the generic dictionary word “apparel” which describes Burberry’s business.

- consumers who search the Internet for the BURBERRY marks may be directed to Respondent’s <burberryapparel.com> domain, creating a likelihood of confusion. This confusion is heightened by the fact that the word “apparel” added by Respondent is descriptive of Burberry’s goods.

- Respondent has no rights or legitimate interests in the <burberryapparel.com> domain name. Respondent has no connection or affiliation with Burberry and has not received any license or consent, express or implied, to use the BURBERRY marks in a domain name or in any other manner.

- The Respondent’s use of the <burberryapparel.com> domain name cannot be considered to be in connection with a bona fide offering of goods or services. The website associated with the <burberryapparel.com> domain name merely acts as a host page for links and advertisements for third-party websites that sell competitors’ goods and have been found to sell counterfeit merchandise that have infringed upon the BURBERRY marks, among other things.

- The Respondent is intentionally using the BURBERRY word mark as “bait” to attract consumers, who might be seeking Burberry products. The Respondent is profiting from the popularity and fame associated with the BURBERRY marks and misleadingly diverting consumers to third-party websites described in the preceding paragraph. This results in the tarnishing of the BURBERRY marks, a dilution of the BURBERRY word mark, and has a detrimental effect on Burberry’s online presence. This use of the <burberryapparel.com> domain name is not a legitimate non-commercial use.

- Respondent has registered the <burberryapparel.com> domain name in bad faith by doing so with knowledge of Burberry’s rights in the BURBERRY marks. Burberry engages in extensive advertising in various media featuring its name and marks. Even a simple Internet search would have revealed Complainant’s extensive use of the BURBERRY marks as source identifiers. Complainant’s rights in the BURBERRY marks also would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online.

- Respondent’s well-documented practice of registering domain names, including other companies’ well-known trademarks or obvious misspellings of such marks (e.g., “PEPSITUNES.COM,” “WELLSFARGOAWARDS.COM,” AND “ENTERPRISECARENTAL.COM”), also demonstrates its bad faith in registering the <burberryapparel.com> domain name.

The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Procedural matters

For the cases where the Respondent did not submit a response, paragraph 5(e) of the Rules states that in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.

No such exceptional circumstances exist in the present case. The rule mentioned above shall thus be applied.

B. Substantive matters

Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar

The Complainant alleges that the domain name <burberryapparel.com> is similar to the Complainant’s trademark and trade name BURBERRY since the latter is entirely embodied in the disputed domain name. Moreover, it contends that the part “apparel” is descriptive and thus not distinctive; the only distinctive part of the domain name is precisely the Complainant’s trademark and trade name.

In the assessment of whether a domain name and a trademark are confusingly similar, all relevant circumstances must be taken into account, in particular, the degree of oral, visual or conceptual similarity between both terms.

The Panel finds that the domain name and the trademark are confusingly similar, based upon the following factors:

- the Complainant’s trademark and trade name BURBERRY is embodied in the disputed domain name and forms the distinctive part of the latter. This similarity is both phonetical and visual;

- the Complainant has registered at least in the United States of America the trademark BURBERRY and variations thereof, which is 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, as stated in former Administrative Panel Decisions, see e.g. WIPO Case No. D2001-0079 “Tchibo”, 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).

- BURBERRY is a well-known and distinctive designation that is entitled to strong level of protection.

Considering these circumstances, the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.

(b) Rights or legitimate interests

Paragraph 4 (c) of the Policy defines the circumstances required for the Respondent to demonstrate rights to and a legitimate interest in the domain name, the Respondent only being required to demonstrate one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the 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 non-commercial 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.

By refraining from submitting a Response to the present Complaint, the Respondent has not demonstrated any of the above circumstances. The Panel cannot find in the documents submitted to it any such circumstances.

Therefore, the Panel finds that Respondent does not have rights or legitimate interests in respect to the Domain Name.

(c) Bad faith

Paragraph 4(a) (iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances each of which shall be evidence that the registration and use of a domain name is in bad faith:

(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 website 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 website or location or of a product or service on your website or location.

The Panel follows Complainant in its considerations that the Respondent has registered and used the disputed domain name in bad faith for the following reasons:

- Since there is no business relationship between the Parties, the Respondent had no legitimate interest to use the designation “Burberry” in its domain name. The purpose of such a use could only be to mislead the users in the double goal of attracting them to the Respondent’s website and the sites linked to it and to keep them away from the Complainant’s official website (paragraph 4(b)(iv) of the Policy);

- The use made by Respondent demonstrates neither a bona fide offering of goods or services nor a legitimate interest. See, e.g., Harcourt, Inc. v. Henry Chan., NAF Claim No. 214531 (January 14, 2004) (“Diversion to competing websites, advertising, or pornography is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain name”); American Express Co. v. Am. Express Pay, NAF Claim No. FA196044 (October 27, 2003) (respondent’s use of <americanexpresspay.com> domain name to direct Internet users to links to competitors was not bona fide and did not demonstrate a legitimate interest).

- Respondent in all likelihood was aware of Complainant’s trademark rights.

- A pattern of registering variations of other parties’ well-known trademarks is “probative in showing bad faith on the part of the Respondent.” Doctor.Ing.h.c. F.Porsche AG v. Stoneybrook Inv. Ltd., WIPO Case No. D2001-1095 (October 26, 2001); see also Microsoft Corp., WIPO Case No. D2003-0501 (August 18, 2003).

- Respondent has registered a variety of domain names consisting or comprised of others’ trademarks, or common misspellings or variations thereof, for the purpose of diverting Internet traffic to Respondent’s website and third-party websites. Given its pattern of conduct, Respondent’s bad faith in registering the <burberryapparel.com> domain name is irrefutable. See Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (November 7, 2002).

Based on these considerations, and to the fact that the Respondent did not rebut them, the Panel finds that the Complainant has succeeded in proving that the Respondent registered and used the domain name in bad faith.

 

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 <burberryapparel.com> be transferred to the Complainant.

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Kamen Troller
Sole Panelist

Dated: October 30, 2006