WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Startelecom

Case No. D2005-1114

 

1. The Parties

The Complainant is Burberry Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Cho & Partners, Republic of Korea.

The Respondent is Startelecom, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <burberrybluelabel.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2005, via email, and on October 28, 2005, as a hardcopy. On October 24, 2005, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the domain name at issue. On October 27, 2005, this registrar informed the Center that the disputed domain name was transferred to another registrar before it could have been locked. On November 2, 2005, the Center asked the registrar, to retrieve the domain name at issue from the new registrar. On November 16, 2005, the disputed domain name was transferred back to Network Solutions, LLC. On November 17, 2005, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2005.

The Center appointed Christian Schalk as the sole panelist in this matter on December 21, 2005. 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

 

4. Factual Background

Established in 1856, the Complainant owns one of the most recognized and respected fashion brands in the world. As of March 2005, the Complainant maintained over 230 retail locations worldwide, including 56 retail centers in the Republic of Korea where the Respondent lives. The Complainant’s presence in the Republic of Korea dates back to 1986. The Complainant’ revenue for past business year was more than 1 billion US dollar.

In accordance to the material brought before the Panel, the Complainant owns trademark rights in the term BURBERRY for goods and services in various classes in more than 60 jurisdictions. The priority dates of these trademarks are before June 30, 2003, the date on which the Respondent registered the domain name at issue.

It is the same with the Japanese trademark registrations No. 4476784 BURBERRY BLUE LABEL and No. 4282407 BURBERRY BLUE LABEL covering goods and services in the International Classes 3 and 25 which are also owned by the Complainant. The mark BURBERRY BLUE LABEL stands for a line of the Complainant’s products sold on the Japanese market. Internet users having typed the disputed domain name into the Internet browser on October 18, 2005, were directed to “http://landing.domainsponsor.com” which is a domain name parking site operating as a search engine. On November 21, 2005, the domain name at issue linked Internet users to a website where a company offers goods of well-known fashion brands among them several kinds of the Complainant’s goods.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has rights.

The Complainant contends that the domain name at issue is identical with Japanese trademark registrations for BURBERRY BLUE LABEL. Furthermore, the Complainant believes that the disputed domain name is also confusingly similar with its numerous trademark registrations for the mark BURBERRY. In this context, the Complainant refers to previous UDRP decisions on the Burberry domain name (Burberry Limited v. S.H. Baek, WIPO Case No. D2005-0334 on <burberryshop.com>; Burberry Limited v. Lee Eun Ju, WIPO Case No. D2005-0667 on <myburberrys.com>; Burberry Limited v. Byung-Choon Kim, WIPO Case No. D2005-0704 on <itsburberry.com>; Burberry Limited v. Kim Kyoung-Soon, WIPO Case No. D2005-0768 on <burberryplaza.com>) where the panelists have stated that an addition of a generic term to BURBERRY does not eliminate the likelihood of confusion between the domain name at issue and the famous BURBERRY trademark, since the term “burberry” would be considered as the prominent portion in the disputed domain name.

The Complainant alleges also that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant contends that the Respondent has no trademark registrations that are identical, similar or in any way related to the terms “burberry” or “burberrybluelabel.” Moreover, the Respondent has not been commonly known under the domain name at issue.

The Complainant explains that the Respondent has never been authorized to or permitted to use the disputed domain name. The Complainant believes also that the Respondent’s use of the domain name at issue cannot be considered to be in connection with a bona fide offering of goods or services since the conditions for such an activity are not met. In this context the Complainant cites the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where the Panelist stated that a bona fide offering of goods and services must meet several minimum requirements. Especially, the site must accurately disclose the registrant’s relationship with the trademark owner and that the Respondent must use the site to sell only the trademarked goods.

Referring to previous UDRP decisions (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584), the Complainant believes that the linking of the disputed domain name to a domain name parking sites cannot be regarded as a legitimate non-commercial or fair use of this domain name.

The Complainant alleges that the domain name at issue was registered and is being used in bad faith.

In this context the Complainant explains that the Respondent is domiciled in the Republic of Korea, where the Complainant has significant business operations and sales. The Complainant’s products are readily seen at many retail locations, in newspapers and other media. Furthermore, the Complainant’s trademark registrations are easily accessible via Korean language sites. Given the Complainant’s reputation on the Korean and international level, the Complainant believes that it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of these facts at the time of the registration of the disputed domain name. Therefore, the Complainant contends that the Respondent’s registration of the disputed domain name was for the purpose of improperly taking advantage of and/or profiting from the fame of the Complainant’s famous trademark.

The Complainant alleges further that the Respondent uses the domain name at issue in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s site when there is no relationship between the parties. The Complainant explains in this context that while there is no relationship between the parties, there are no statements whatsoever anywhere on the domain name parking site advertising Internet users of that fact. The function of the domain name is simply to forward traffic to the domain parking site and thereby deriving revenue.

The Complainant cites in this context previous UDRP decisions where the panels found that a domain name is used in bad faith where a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggest opportunistic bad faith (Parfums Christian Dior v. Javier Garcia Quintas and Chriatindior.net, WIPO Case No. D2000-0226), by using the disputed domain name to serve merely as a forwarding function, luring internet users to the sponsored links whereby the Respondent receives a monetary commission (Claire’s Stores, Inc., Claire’s Boutiques, Inc. CBI Distribution Corp. v. LaPorte Holdings, WIPO Case No. D2005-0589).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) The domain name holder has no rights or legitimate interests in respect of the domain name; and

(C) The domain has been registered and is being used in bad faith.

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).

A. Identical or Confusingly Similar

The Complainant has established that the Complainant has trademark rights in the term BURBERRY BLUE LABEL in Japan. These Japanese trademarks are identical with the domain name at issue.

Furthermore, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademark rights in the term BURBERRY. The term BURBERRY is the most distinctive part of this domain name. It clearly identifies the Complainant. As far as the term BLUELABEL is concerned, the Panel believes that in the eyes of a usual customer this term stands for special kind of products offered by the Complainant, for instance a special product line or products under a special price regime. There are other companies, which use similar strategies, for instance, a Scottish Whiskey manufacturer, which classifies its products as so-called Black Label and Red Label ones. Therefore the Complainant has demonstrated the first element of the Policy.

B. Rights or Legitimate Interests

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue.

The Panel agrees also with previous UDRP decisions that the linking of the disputed domain name to “http://landing.domainsponsor.com” cannot be regarded as a legitimate non-commercial or fair use of this domain name, since the main purpose of such linking is to participate in the revenue obtained from the traffic on such a site.

Also the fact that the disputed domain name has been linked to a site which offers - among others - the Complainant’s goods after the commencement of this proceeding does not change the situation since the circumstances of the case speak against a fair use behavior of the Complainant. At the time of the commencement of this administrative procedure, the first thing the Respondent obviously tried to do was to transfer the disputed domain name to another registrar. The only reason the Panel can imagine why the Respondent did this, was to prevent or at least to impede the Complainant from enforcing its trademark rights. When this effort failed, the Respondent then linked the disputed domain name without the Complainant’s consent to a website of a third company, where the handbags, shoes and other goods of famous fashion brands are offered, among them the Complainant’s goods.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:

(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the Respondent has 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

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under prior UDRP decisions (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. The Panel finds that the trademark BURBERRY is unique and well-known trademark on a worldwide level and therewith also in the Republic of Korea where the Respondent lives. Especially the fact that the Respondent linked the disputed domain name to third company’s website which offers the Complainant’s products for sale, shows, that the Respondent had knowledge about the Complainant and its rights in the term BURBERRY. Furthermore, the Panel believes that the Respondent was also aware of the fact that the term BURBERRY BLUE LABEL was invented and owned by the Complainant since the Complainant is using it for its campaigns in the neighboring Japanese market.

The Respondent linked the disputed domain name to a website, which is operated by an entity called “domainsponsor.com.” This search engine has been subject of a number of previous UDRP proceedings (see e.g. Southern Communications Services, Inc. d/b/a/ Southern LINC v. Henry Chan, WIPO Case No. D2004-0214; Costco Wholesale Membership Inc., Costco Wholsesale Corporation v. Henry Chan, WIPO Case No. D2004-0218; Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Wal-Mart Stores, Inc. v. Modern Limited – Cayman Web Development Domain Administrator, WIPO Case No. D2005-0322; Caisse Nationale des Caisses d’Epargne et de Prevoyance v. La Porte Holdings, WIPO Case No. D2005-0430; Chanel, Inc. v. La Porte Holdings, WIPO Case No. D2005-0487; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589). As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan WIPO Case No. D2003-0584, this website provides links to sponsored websites on a variety of topics. Furthermore, it offers a revenue program which pays domain name owners “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.

This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to “domainsponsor.com” and to share in revenues obtained from the diverted traffic. Even if Internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, such exploitation of trademarks to obtain click-through commissions from the diversion of Internet users was held of use in bad faith (see e.g. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589); Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623). In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.

The fact that the Respondent linked the disputed domain name to another website after the commencement of this administrative proceeding does not change the Panel’s assessment that the Respondent registered and uses this domain name in bad faith, since the purpose of the Respondent’s activities after the start of this administrative proceeding was to prevent or at least to impede the Complainant from enforcing its trademark rights in the dispute domain name.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(b)(iv) of the Policy and 15 of the Rules, the Panel orders that the domain name <burberrybluelabel.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: January 4, 2006