WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Burberry Limited v. Misson Tom aka Tom Misson aka Mission Tom Case No. D2010-0440 1. The Parties
The Complainant is Burberry Limited of London, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Misson Tom aka Tom Misson aka Mission Tom of Nanjing, Jingsu, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 23, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On March 24, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 26, 2010, the Center transmitted a communication by email to the parties regarding the language of proceedings in both Chinese and English. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the requested language of proceedings by the specified due date. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2010.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on May 7, 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 designs, manufactures and sells apparels, bags, scarves and other accessories under the trademark BURBERRY, which has been registered and used in many countries or regions since as early as 1929.
The Respondent registered the disputed domain names and on February 18, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names and are confusingly similar to the trademark BURBERRY, the registration and use of which by the Complainant long precedes the registration of the disputed domain names.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith
The Complainant requests that the disputed domain names and be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain names and , as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented its reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center's communications to this effect were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Among other circumstances, the respondent's ability to clearly understand the language of the complaint, and the complainant's being disadvantaged by being forced to translate, may both support a panel's determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties' language ability in the proceeding. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel's conclusion is based in part on the fact that the websites established at the disputed domain names, and , display the contents in English. On the other hand, it is genuinely difficult for the Complainant to translate all the submissions into and take part in the proceeding in the language of the registration agreement.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant's trademark BURBERRY had been registered and used on apparels, scarves and other accessory products in a number of countries.
The disputed domain names are and . Apart from the generic top-level domain suffix “.com”, the disputed domain names consist of “burberryscarfshop” and “burberryscarfstore.” The first one can easily be read as “burberry”, “scarf” and “shop”, and the second one “burberry”, “scarf” and “store”.
It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant's business is likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant's trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. FA93670).
Given that the disputed domain names contain the Complainant's mark BURBERRY in its entirety, adding the generic terms “scarf” and “shop” or “scarf” and “store” that are related to the Complainant's scarf products marked with BURBERRY does not preclude a finding of confusing similarity.
The Panel therefore finds that the disputed domain names and are confusingly similar to the Complainant's registered trademark BURBERRY. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Respondent did not respond.
Through examining the evidence submitted, the Panel is impressed by the facts that the websites set up at the disputed domain names and highlight the mark BURBERRY and sells various scarves, including what appears to be counterfeit versions of the Complainant's products. Since the disputed domain names were registered and are controlled by the Respondent, the Respondent is responsible for any use of the disputed domain names. The use of the disputed domain names that are confusingly similar to the Complainant's mark to attract consumers to the websites that are commercializing what appears to be counterfeit versions of the Complainant's products may cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites or of the products on the websites.
The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain names in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy. 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 disputed domain names and be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Dated: May 21, 2010
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