The Complainant is J Barbour & Sons LTD of Newcastle upon Tyne, United Kingdom of Great Britain and Northern Ireland represented by McDaniel & Co., United Kingdom.
The Respondent is Chen Guangbiao of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 19, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on August 24, 2013. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that it was properly constituted. 4. Factual Background
The Complainant owns numerous trademark registrations throughout the world for the mark BARBOUR in connection with clothing and related goods, including European Community Trade Mark Registration Number 405704, United Kingdom Registration Number 2487977, United States Registration Number 1265059, China Registration Number 1088702, and many others.
The Domain Name was registered on January 21, 2013. 5. Parties’ Contentions A. Complainant
The Complainant is a company incorporated in the United Kingdom whose business covers the manufacture and sale of clothing and associated articles. The Complainant uses the brand names Barbour and Barbour International in connection with its business. The Complainant and its predecessor in title have been using the Barbour name since 1894 in connection with clothing and associated products and have been using the brand name Barbour International since 1956. The Complainant has extensively promoted its Barbour and Barbour International brands in major sales territories throughout the world, which the Complainant contends has led to an enhanced level of distinctiveness and reputation of the marks.
The Complainant argues that the Domain Name is identical or confusingly similar to its BARBOUR trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent’s web site uses images from previous web sites operated by the Complainant and that the Respondent’s site purports to sell the Complainant’s Barbour products but either does not deliver the goods or delivers counterfeit products to customers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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
The Complainant has demonstrated that it owns rights in the trademark BARBOUR. There is much support in precedent interpreting the Policy for the proposition that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which combines the BARBOUR trademark with the less distinctive terms “cheap,” “jackets” and “women,” is confusingly similar to the Complainant’s BARBOUR trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent used the Domain Name in connection with a web site that used images from the Complainant’s web site to defraud customers who either did not receive the goods or received counterfeits of the Complainant’s BARBOUR branded products. The Respondent has not denied the allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name long after the Complainant began using the BARBOUR mark in connection with clothing. Further, the Respondent used the Domain Name in connection with a web site that offered counterfeit versions of the Complainant’s BARBOUR branded clothing for sale, which demonstrates that the Respondent was well aware of the Complainant’s rights when the Respondent registered and used the Domain Name. Under the circumstances, the Panel finds that the Respondent’s use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent’s site by creating a likelihood of confusion with the Complainant’s trademark. 7. Decision
For 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.
Michelle Brownlee
Sole Panelist
Date: September 6, 2013
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