WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bicester Nominees Ltd, Bicester II Nominees Ltd v. Mulan Case No. D2009-1799 1. The Parties
The Complainant is Bicester Nominees Ltd and Bicester II Nominees Ltd of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CMS Cameron McKenna LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mulan of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2009. On January 4 and 6, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, GoD, Inc. transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 8, 2010. 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 proceeding commenced on January 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2010. The Respondent sent six email communications to the Center. However, the Respondent did not file a formal response, nor responded to the Center's request to confirm that these email communications were to be regarded as its complete Response.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on February 9, 2010. 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 in this administrative proceeding is Bicester Nominees Limited and Bicester II Nominees Limited. The Complainant, along with various affiliates, owns and operates the ‘Bicester Village' retail outlet situated in Oxfordshire in the United Kingdom (“UK”). The Bicester Village retail outlet sells, in the main, discounted designer clothing and accessories including designer hand bags.
The Complainant is the proprietor of UK registered trade mark number 2324943 for the word mark BICESTER VILLAGE which was registered on April 30, 2004. Two companies, Bicester GP Limited and Bicester II GP Limited (which the Complainant submits are part of its group of companies) are the proprietors of registered Community trade mark number 3498177 for a device mark bearing the text ‘Bicester Village', which was registered on October 4, 2005.
The disputed domain name was registered on June 10, 2009. The registration and use of the BICESTER VILLAGE UK and Community trade marks therefore pre-date the Respondent's registration of the disputed domain name. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that the disputed domain name is identical or confusingly similar to the registered and unregistered trade marks in which it has rights as it contains the words ‘Bicester Village' in their entirety.
The Complainant submits that the only differences between the disputed domain name and its trade marks are the addition of the “e-” prefix and the “.com” suffix in the disputed domain name. The Complainant submits that these variations do not make the disputed domain name distinctive and therefore does not avoid the likelihood of confusion with its BICESTER VILLAGE trade marks. Rights or Legitimate Interests
The Complainant submits that the disputed domain name is directed to a website which offers for sale counterfeit versions of the types of designer goods sold at its Bicester Village retail outlet. The Complainant submits that the Respondent's reason for registering the disputed domain name is therefore to benefit from the reputation of its trade marks for commercial gain by seeking to confuse Internet users searching for the Complainant's website and encouraging them to buy competing counterfeit versions of the goods offered at its Bicester Village retail outlet. Further, the Complainant submits that no licence or any other rights to use the BICESTER VILLAGE mark have been granted to the Respondent.
The Complainant therefore submits that the Respondent does not have any right or legitimate interest in the disputed domain name. The Domain Name was Registered and has Been Used in Bad Faith
The Complainant submits that its BICESTER VILLAGE trade mark is well-known in the field of discounted luxury goods shopping, including handbags. The Complainant submits that, as the Respondent's website to which the disputed domain name resolves offers counterfeit versions of the luxury handbags which it sells at the Bicester Village retail outlet, the Respondent is seeking to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between the Complainant's trade marks and reputation and the disputed domain name and the Respondent's website hosted thereon.
Further, the Complainant submits that the Respondent has submitted false registration details which constitutes further evidence of bad faith.
The Complainant therefore submits that the Respondent registered and has used the disputed domain name in bad faith. B. Respondent
The Respondent did not respond to the Complainant's contentions, nor did it confirm that any of its email communications with the Center should be regarded as its Response. 6. Discussion and Findings
For the Complainant to prevail it 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 Complainant has 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.
Paragraph 5(e) of the Rules provides that if a respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. A. Identical or Confusingly Similar
The Complainant has established that it is the registered proprietor of a registered UK trade mark for the words BICESTER VILLAGE. The Panel is given no reason not to accept the Complainant's submission that the proprietors of the Community registered trade mark which incorporates the words BICESTER VILLAGE are a part of the same group of companies as the Complainant. The Policy does not require that the Complainant has rights in a mark in the country in which the Respondent is domiciled (or any other specific country for that matter) and so both of these registrations are relevant for the assessment under paragraph 4(a)(i) of the Policy.
It is well established that the ‘.com' suffix is irrelevant for the purposes of determining whether a contested domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights under paragraph 4(a)(i) of the Policy (see Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499).
The remaining difference between the BICESTER VILLAGE mark and the disputed domain name is the ‘e-' prefix.
As noted in a variety of previous UDRP decisions (see Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522, for example) this prefix has become a generic or non-descriptive term used to identify electronic commerce activity. The Panel is satisfied that this prefix is therefore insignificant and that the disputed domain name is confusingly similar to the Complainant's BICHESTER VILLAGE mark.
The Complainant has also sought to rely on unregistered trade mark rights, stating that it has “an extensive reputation under the brand BICESTER VILLAGE within the UK and worldwide”. The Complainant has provided no support whatsoever for this assertion. In light of the foregoing findings regarding the Complainant's registered trade marks, little turns on this point. However, had the Complainant not been able to rely on those trade mark registrations, the mere assertion of unregistered trade mark rights might not have been sufficient in this case for the Complainant to have satisfied the requirement of paragraph 4((a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent does not have a right or legitimate interest in the disputed domain name as follows:
(1) the Complainant is the proprietor of registered trade marks for the words BICESTER VILLAGE and for a device mark which also contains the words ‘Bicester Village';
(2) the Respondent has no licence, permission or authorization to use any of the Complainant's marks; and
(3) the Respondent registered the disputed domain name after the priority date of the Complainant's registered marks.
In these circumstances, the evidential burden moves to the Respondent to show that it does have rights or legitimate interests in the disputed domain (see Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074).
The Respondent has failed to make any submissions to the contrary and, accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel considers that, pursuant to paragraph 4(b)(iv) of the Policy, the Respondent has registered and is using the disputed domain in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of that web site or of a product or service on that web site.
The Complainant has provided evidence that the Respondent's website hosted at the disputed domain name offers for sale counterfeit versions of those goods which are offered for sale under its BICESTER VILLAGE mark. Having found that the disputed domain name is confusingly similar to the Complainant's marks and, in the absence of any Response or obvious reason to the contrary, the Panel is satisfied that this is sufficient evidence that the Respondent registered and has used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Further support for this finding is given by the false contact information which the Respondent has provided to the registrar with which the disputed domain name is registered. 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 be transferred to the Complainant.
Charters Macdonald-Brown
Sole Panelist
Dated: February 24, 2010
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