The Complainant is Burberry Limited, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Taylor Wessing LLP, United Kingdom.
The Respondent is Domain Admin, Las Vegas, United States of America / Domain Admin, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 2014.
The Center verified that 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 proceedings commenced on September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 29, 2014. 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 globally renowned luxury fashion brand, headquartered in London. Its flagship trade mark BURBERRY has been in use for over 150 years. The Complainant owns over 497 stores and concessions in 32 countries, as well as a digital online platform at which is active in 11 languages. It sells a diversified product offering across apparel, accessories and beauty. The Complainant’s parent company, Burberry PLC, is listed on the London Stock Exchange and is a constituent of the FTSE100. The Complainant owns, amongst other trade marks, a registered trade mark for BLUELABEL CRESTBRIDGE which it filed in the United Kingdom in May 2014 with a priority date of April 8, 2014, based on an earlier Hong Kong application. The registration covers goods in classes 3, 9, 14, 16, 18 and 25. The Complainant also owns pending applications for the same mark in Hong Kong, Japan and Singapore filed on April 8 and 9, 2014 respectively and covering goods in the same classes set out above.
The Disputed Domain Name was registered by the Respondent on April 11, 2014. On May 20, 2014, an intermediary sent to the Respondent an email on the Complainant’s behalf with an enquiry regarding purchasing the Disputed Domain Name. The Respondent replied that it would consider selling the Disputed Domain Name if the offer to purchase reached an amount of USD 12,000. The website attached to the Disputed Domain Name is a classic PPC website with sponsored listings which include goods covered by the Complainant’s UK registration referred to. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the owner of the trade mark for BLUELABEL CRESTBRIDGE. It contends that the Disputed Domain Name is identical to the registered trade mark in which it holds rights, the only difference being the addition of a hyphen between the words BLUELABEL and CRESTBRIDGE, which should, the Complainant argues, be disregarded for the purposes of this dispute.
The Complainant asserts that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:
(a) there is no evidence that the Respondent has made use of or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods and services;
(b) the Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the Disputed Domain Name; and
(c) the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name;
The Complainant argues that there exists, therefore, at least a prima facie case that the Respondent lacks rights or legitimate interest in the Disputed Domain Name and consequently that the burden of production shifts to the Respondent to come forward with evidence demonstrating rights or legitimate interests.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the Respondent acquired the Disputed Domain Name primarily for purposes of selling, renting or otherwise transferring it to the Complainant or to one of its competitors for valuable consideration in excess of its documented costs. The Complainant states that in response to an enquiry regarding the purchase of the Disputed Domain Name, the Respondent replied that it would only consider selling the Disputed Domain Name if the offer reached the amount of USD 12,000 or more. The Complainant claims that this amount exceeds the Respondent’s out of pocket costs. It points out the fact that the Disputed Domain Name was registered only a couple of days after the Complainant had filed its trade marks in Hong Kong, Japan and Singapore and also that the Disputed Domain Name is identical to an invented trade mark which incorporates an unusual combination of words. The Complainant argues that this demonstrates that the Respondent must have been aware of the Complainant’s rights and intentionally registered the Disputed Domain Name in bad faith.
The Complainant also submits, with reference to paragraph 4(b)(iii) that the Respondent’s purpose in purchasing the Disputed Domain Name was to unfairly disrupt the Complainant’s business and that this would happen irrespective of any confusion that would arise, purely because Internet users would be frustrated in their attempt to access and / or be prevented from accessing the Complainant’s actual website.
The Complainant submits, lastly, that the Respondent is intentionally attempting to attract for commercial gain, Internet users to its website or other online locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship affiliation or endorsement of its website or of a product or service on its website or a location. The Complainant contends that the confusion would arise because the Disputed Domain Name consists solely of the Complainant’s distinctive trade mark.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the BLUELABEL CRESTBRIDGE trade mark as a consequence of the registration that it holds for it in the United Kingdom. Ignoring for this purpose the generic Top Level Domain suffix “.com” (as the Panel is entitled to do), the Panel finds that the complete incorporation of the Complainant’s trade mark in the Disputed Domain Name, distinguishable from the Complainant’s trade mark only with a hyphen, will suffice for the purposes of finding that Disputed Domain Name is identical to the mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has not made any use of or preparations to use the Disputed Domain Name in connection with the bona fide offering of goods or services, that it has not made any legitimate or noncommercial or fair use of the Disputed Domain Name and that the Respondent does not own any registered trade marks or trade names corresponding to the Disputed Domain Name.
The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii)of the Policy and that there is a case for the Respondent to answer. The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on a trade mark owned by the Complainant by diverting Internet users seeking information about the Complainant to the Respondent’s own website in order to obtain financial reward either through the sponsored listings that appear on the website or the sale of the Disputed Domain Name. The Panel has no doubt that the amount that the Respondent sought in response to an approach to sell the Disputed Domain Name is far in excess of it’s out of pocket costs.
Furthermore, the timing of the registration of the Disputed Domain Name and the fact that it is identical to an invented trade mark makes it difficult to believe that the Respondent did not appreciate that it was a trade mark owned by the Complainant and that it would have a commercial value.
The Respondent had an opportunity in this administrative proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii), 4(b)(i) and 4(b)(iv). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Date: November 10, 2014
Full & Egal Universal Law Academy