Complainant is Burberry Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by an internal representative.
Respondent is Carlos Lim of Quezon City, Philippines. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2011. On February 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2011. Respondent sent an email communication on March 23, 2011 but did not submit a formal Response.
The Center appointed Michael Albert as the sole panelist in this matter on April 8, 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
Complainant owns numerous trademark registrations in the United States for its BURBERRY trademark. Complainant obtained United States registrations for the word mark BURBERRY as early as 1929 and has trademark registrations in over 90 countries (“BURBERRY Trademarks”).
Complainant 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’s goods are advertised and sold on its website located at “”. There, Internet users can 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.
The Disputed Domain Name was created on July 7, 2006. 5. Parties’ Contentions A. Complainant
Complainant contends that for more than 90 years it has continuously used the BURBERRY word mark in connection with its products, including high-quality apparel, handbags, wallets, scarves, cosmetics, perfumes, eyewear, watches and other accessories. Complainant contends that it has numerous trademark registrations to the BURBERRY mark in dozens of countries around the world.
Complainant further contends that the Disputed Domain Name is confusingly similar to the BURBERRY Trademarks. The Disputed Domain Name incorporates entirely the BURBERRY word mark. The addition of the generic word “world” does not negate the confusing similarity and is descriptive of the world of Burberry, that is, Complainant’s global reach. Complainant alleges that consumers will likely believe Respondent is authorized by or in some way connected with Complainant.
Complainant further contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent is not commonly known by Complainant’s BURBERRY Trademarks. Respondent is not making a legitimate commercial, noncommercial or fair use of the Disputed Domain Name. Respondent’s website is not a legitimate fan site because Respondent is making commercial use of the Disputed Domain Name by filling the website at the Disputed Domain Name with paid advertising. Complainant alleges Respondent is using the BURBERRY Trademarks as “bait” to attract consumers seeking Burberry’s website, and thereby profiting from Complainant’s fame and consumer confusion. Complainant further contends that Respondent’s recent replacement of Burberry content with a “fan page notice” does not change the fact that Respondent has used the Disputed Domain Name for commercially purposes in the past.
Complainant further contends that Respondent registered the Disputed Domain Name in bad faith. Respondent had knowledge of the BURBERRY Trademarks as evidenced by Respondent’s styling its website as a fan site. Complainant further contends Respondent at least had constructive knowledge of Complainant’s trademark rights because of Complainant’s widespread use and promotion of its famous BURBERRY Trademarks.
Complainant further contends that Respondent intentionally registered the Disputed Domain Name in bad faith to attract, for commercial gain, Internet users who might be seeking Complainant’s own website by using the BURBERRY Trademarks as “bait” and profiting from the resulting confusion. Complainant also alleges that Respondent has a practice of registering domain names which incorporate other well-known trademarks and has registered 80 such domain names, including , , , , , , , . B. Respondent
The Respondent made the following submission: “This is a harassment by the complainant. The web site is a fan site and is protected under freedom of speech and is allowed under ‘fair use’ principle. The website has been taken offline to update the website and remove any ads so that it will only be used as a fansite.” 6. Discussion and Findings
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 a complainant to prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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
Complainant has provided sufficient evidence to establish that it is the owner of the BURBERRY Trademarks.
Because Complainant does not have a trademark registration for the phrase “burberryworld” or “,” the issue is not whether the Disputed Domain Name and Complainant’s BURBERRY Trademarks are identical, but whether they are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s BURBERRY word mark; (2) the suffix “world”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “burberryworld”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
While the addition of “world” as a suffix to the BURBERRY mark is not descriptive of Complainant’s goods or services, it is not sufficient to dispel the confusing similarity between the Disputed Domain Name and Complainant’s BURBERRY Trademarks.
For the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s BURBERRY Trademarks, in which Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights in the BURBERRY Trademarks, is not commonly known by the Disputed Domain Name, and is not making a legitimate commercial use, or noncommercial or fair use of the Disputed Domain Name.
Complainant has alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Name.
Complainant contends that Respondent’s claims to running a “fan website” are a pretext for using the Disputed Domain Name as “bait” to lure unsuspecting customers away from Complainant’s site by sowing confusion. While Respondent’s fan website is underdeveloped and resembles Respondent’s other “fan” websites, it does not offer products or services for sale. However, Respondent’s website did host advertisements for the luxury goods of Complainant’s competitors in the past.
Complainant argues that Respondent’s use is commercial because it included pay-per-click advertising. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, section 2.5 (available at ) recognizes two views on whether a fan site may generate rights or legitimate interests in a disputed domain name. Under the first view, rights may be acquired if the site is actively maintained, pay-per-click advertising is minimal and there is a clear disclaimer that the website is not affiliated with Complainant. Estate of Francis Newton Souza v. ZWYX.org Ltd.,WIPO Case No. D2007-0221 (denying transfer where fan website was noncommercial because it did not sell products and contained no advertisements); 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001 (denying transfer where fan website clearly disclaimed endorsement and obtained no commercial benefit); Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,WIPO Case No. D2001-1042 (same).
The second view takes a more stringent approach: any intent by respondent to suggest an association with complainant or any attempt to derive a commercial benefit precludes rights in the mark. Russell Peters v. George Koshy and Navigation Catalyst Systems, Inc.,WIPO Case No. D2009-0173 (ordering transfer despite respondent’s claims to be a “devoted fan” where respondent owned “hundreds of thousands” of domain names and falsely claimed to be official website of complainant); Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall,WIPO Case No. D2006-0916 (ordering transfer where respondent intended to create a fan site but never followed through and website was instead being used as a parking page); David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla,WIPO Case No. D2000-1459 (ordering transfer where respondent acquired domain name with intent to sell goods and noting the absence of a disclaimer and that domain name did not suggest it was a fan site).
Here, Respondent has included no disclaimer and, though not offering goods for sale, at one point had advertisements for the luxury goods of Complainant’s competitors. In addition, the site appears underdeveloped and relatively inactive. Thus, it lacks the hallmarks of an authentic fan website. Moreover, the significant pay-per-click advertisements suggest it provided some commercial benefit to Respondent. That Respondent has registered 80 domain names containing well-known trademarks and hosting similarly designed “fan” websites makes less plausible Respondent’s claim that it runs a “fan site” for noncommercial purposes.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith as per paragraph 4(b)(iv), occurs when respondent attempts to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or of a product or service on respondent’s website. Registered In Bad Faith
The Panel finds that Respondent knew of Complainant’s BURBERRY Trademarks when it registered the Disputed Domain Name – indeed, Respondent’s “fan website” argument implies such knowledge. Moreover, Respondent likely had knowledge given that Complainant has used the BURBERRY Trademarks in connection with the sale of luxury goods throughout the world for decades. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“[i]t defies common sense to believe that Respondent coincidentally selected these precise domain names [ and ] without any knowledge of Complainant and its PROFORCE Trademarks.”); Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (“since Complainant's trademark is well-known throughout the world, it is very unlikely, if not impossible, that, when Respondent registered the Domain Name, it was unaware that it was infringing on Complainant's trademark rights.”).
In addition, Respondent’s contention that the Disputed Domain Name is used as a fan website is unconvincing for the reasons described above, and thus does not weigh against a finding of bad faith.
Based upon the foregoing evidence, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. Use In Bad Faith
The Panel also finds that Respondent used the Disputed Domain Name in bad faith. It is well established that using a domain name which incorporates a trademark to advertise the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537.
Here, Respondent has failed to provide a disclaimer to explain that no affiliation exists between Respondent’s website and Complainant. Respondent has also used the Disputed Domain Name to promote the luxury goods of Complainant’s competitors. See The Vanguard Group, Inc v. Venta,WIPO Case No. D2001-1335 (finding bad faith where redirected to website offering competing financial services). In addition, the website’s underdevelopment and inactivity minimize its noncommercial aspects and undermine the website’s “fan” credentials. Indeed, the most vibrant aspect of the website was the pay-per-click advertising. Finally, Respondent’s last-minute change of heart regarding advertising is too little too late: it will not preclude a finding that Respondent has used the Disputed Domain Name in bad faith.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 Name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: April 22, 2011
Full & Egal Universal Law Academy