WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burton Trading Ltd v. Garry Howard

Case No. D2019-2205

1. The Parties

The Complainant is Burton Trading Ltd, United Kingdom, represented by Sipara, United Kingdom.

The Respondent is Garry Howard, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <newburtonsaleshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2019. On September 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 13, 2019, 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 17, 2019.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on October 17, 2019. 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 fashion retail company, incorporated in the United Kingdom. The Complainant sells a range of men’s clothing, bags, jewelry and other items. In addition to its presence in the United Kingdom, the Complainant operates stores in various other countries, and ships internationally to over 100 countries.

For use in connection with its fashion retail business, the Complainant is the owner of, inter alia, the following trademarks:

- United Kingdom Trademark Registration No. 866587, BURTON, registered on July 8, 1964; and

- United Kingdom Trademark Registration No. 1150483, BURTON, registered on March 13, 1981.

The Complainant also owns the domain name <burton.co.uk>, from which it operates an online fashion retail website.

The disputed domain name was registered on April 10, 2019. The disputed domain name resolves to a website that purports to be an online retail website for the sale of the Complainant’s clothing and accessories (the “Respondent’s website”). The Respondent’s website prominently features the Complainant’s trademark at the top of the page and features advertising and stock images taken directly from the Complainant’s website at “www.burton.co.uk”. The Respondent’s website also purports to offer for sale goods from a third-party brand. The third-party branded goods are subject to substantial discounts (65 to 75 percent off the original retail prices). There is no clear information on the Respondent’s website to identify its owner.

On August 21, 2019, the Complainant’s authorized representative created a user account at the Respondent’s website, subsequent to which it received an email welcoming it to the Respondent’s online store, including a contact email address. On September 2, 2019, the Complainant’s authorized representative sent a letter to the Respondent using the abovementioned email address informing him of the Complainant’s trademark rights and requesting that the Respondent provide evidence showing the legitimacy of his website. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its BURTON trademark as it contains the Complainant’s trademark in its entirety together with the words “new”, “sale” and “shop”. The Complainant asserts that where a domain name is composed of descriptive terms together with a distinctive trademark, that domain name will be considered confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is using the disputed domain name to advertise goods including clothing and shoes that are covered by the Complainant’s trademark registrations and which are identical to the goods sold by the Complainant. The Complainant notes that the Respondent’s website advertises both third-party branded products, as well as products sold by the Complainant. In addition, the Respondent has copied, without authorization, images and text from the Complainant’s own website. The Complainant asserts that the Respondent is not commonly known by the disputed domain name, and that he is not making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the fact that the Respondent did not come forward to reply to the Complainant’s letter sent prior to filing the Complaint confirms that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant claims that its trademark is distinctive and well known in the United Kingdom, from which it infers that the Respondent knew or should have known of the Complainant’s trademark rights at the time he registered the disputed domain name. It further infers that the Respondent had actual knowledge of the Complainant in that the Respondent advertises the Complainant’s goods for sale on his website. The Complainant further asserts that the Respondent has attracted Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark, amounting to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name 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 the disputed domain name;

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the BURTON trademark, by virtue of its registration and use, details of which are provided in the factual background section above.

The disputed domain name incorporates the Complainant’s trademark in its entirety, preceded by the word “new” and followed by the words “sale” and “shop” under the generic Top-Level Domain (“gTLD”) “.com”. Where a domain name incorporates the entirety of a trademark, it will normally be considered confusingly similar to that mark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In the present case, the Complainant’s BURTON trademark is readily recognizable in the disputed domain name. The addition of the descriptive terms “new”, “sale” and “shop” does not prevent a finding of confusing similarity with the Complainant’s trademark; see WIPO Overview 3.0, section 1.8.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent’s website purports to offer for sale goods branded with the Complainant’s trademark, as well as third-party branded goods. Noting that there is no clear contact information on the website as to the owner of the website, that the Respondent appears to have misappropriated images from the Complainant’s website, and further noting that certain goods offered for sale via the Respondent’s website are offered disproportionately below market value, the Panel has some considerable doubts as to the genuineness of the goods themselves. Nevertheless, even if the Panel takes the position that the goods offered at the Respondent’s website are not counterfeit, the Complainant has not authorized the Respondent to act as an agent or any form of authorized reseller of the Complainant’s goods.

In assessing whether an unauthorized reseller may have rights or legitimate interests in a domain name, prior UDRP panels have applied the cumulative requirements outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data criteria”); see also WIPO Overview 3.0, section 2.8.1:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

As mentioned above, even if the Respondent is in fact selling genuine goods of the Complainant, the Respondent’s use of the disputed domain name fails to satisfy the Oki Data criteria. In addition to Burton-branded goods, the Respondent is also offering unrelated, third-party branded goods via his website. Moreover, there is nothing on the website in the way of a disclaimer or otherwise that accurately discloses the Respondent’s lack of relationship with the Complainant. In fact, the Respondent’s website contains no contact information whatsoever.

The Panel does not find the Respondent’s use of the disputed domain name to constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent is not commonly known by the disputed domain name as contemplated by paragraph 4(c)(ii) of the Policy, nor is the Respondent making any noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. The Respondent has not come forward with any evidence that would otherwise confer any rights or legitimate interests on the Respondent in the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel readily infers from the contents of the Respondent’s website, as described above, that the Respondent clearly had the Complainant in mind when registering the disputed domain name, and did with the intention of taking commercial advantage of the goodwill associated with the Complainant’s trademark, despite having no authorization from the Complainant to make use of its trademark in a domain name or otherwise. The Panel finds that the Respondent registered the disputed domain name in bad faith.

By using the disputed domain name in connection with a website purporting to offer for sale goods of the Complainant alongside goods of a competitor of the Complainant, having misappropriated copyrighted images from the Complainant’s website, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his website and the products therein, amounting to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 disputed domain name <newburtonsaleshop.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: October 30, 2019