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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Conco

Case No. D2006-0095

 

1. The Parties

The Complainant is Burberry Limited, Wanchai, Hong Kong, SAR of China, represented by Cho & Partners, Republic of Korea.

The Respondent is Conco, Con Murphy, Ballybrown Clarina, Limerick, Alabama, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <dcburberry.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 24, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 1, 2006, eNom 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 February 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2006. The Response was filed with the Center on February 8, 2006.

The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on March 1, 2006. 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 owns the registrations for the BURBERRY Trademark in many countries as per Annex E produced with the Complaint. The BURBERRY mark was first registered in 1929 in U.S.A. followed by registration in other countries. The products sold under the trademark include all types of apparel, bags, scarves, cosmetics, perfumes, glasses, watches, and other accessories. The Complainant operates a website based on the BURBERRY trademark, “www.burberry.com” and Annex C are the copies of the extracts of the website containing details of its history and corporate overview.

The Respondent has registered the domain name <dcburberry.com> on March 14, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name <dcburberry.com> is identical and confusingly similar to the trademark BURBERRY in which the Complainant has rights.

The Complainant, Burberry Limited, was established in 1856 by Thomas Burberry and has become a world famous manufacturer and retailer of luxury products, operating retail and wholesale business as well as licensing network throughout the world. The Complainant operates over 230 retail locations worldwide including 42 retail centers in the U.S.A. BURBERRY is the registered trademark of the Complainant and it has spent money and efforts to promote the trademark.

The domain name <dcburberry.com> wholly incorporates the BURBERRY trademark.

The website “www.dcburberry.com” serves to provide links to other sites related to providing counterfeit Burberry goods for sale. The Respondent has intentionally attempted to attract for commercial gain, Internet users to the site by creating a likelihood of confusion with BURBERRY trademark as to the source, sponsorship, or endorsement of the Respondent’s site when in fact there is no relationship between Burberry and the Respondent.

The Complainant has never authorized or permitted the Respondent to use the trademark BURBERRY.

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent.

B. Respondent

The Complainant had not bought the few variations of the word Burberry. The domain name was freely available on eNom and for experimental purposes the Respondent had purchased the same, hence the domain name belongs to him.

 

6. Discussion and Findings

A. Relevant Provisions of the Policy and the Rules

Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in rendering its decision: “A panelist shall 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 sets out the three elements which must be present for a proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:

“4(a). Applicable Disputes. You (the Respondent) are required to submit to a mandatory administrative proceeding in the event that a third party (a “Complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:

“4(b). Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith” circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, demonstrate the Respondent’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a) (ii). Paragraph 4(c) reads:

“4(c). How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a) (ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

At the outset, it is observed that the Complaint is well-prepared and comprehensive along with detailed documentary evidence in its support. The Response of the Respondent is brief and does not respond to all the allegations made in the Complaint.

B. Identical or Confusingly Similar

The domain name <dcburberry.com> wholly incorporates the Complainant’s registered trademark which is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the letters “dc” to such mark. Many panels have decided in similar circumstances that the domain name is confusingly similar to the trademark.1

An addition of a generic term, “dc”, to Burberry does not eliminate the likelihood of confusion between the domain name and the trademark as Burberry is the prominent portion in the domain name. The Complainant has established that it has registered trademark rights to BURBERRY. These have been established in prior UDRP decisions. 2

The panel finds that the domain name <dcburberry.com> is confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

The Complainant has owned the trademark BURBERRY since 1929 and it has used the mark since in many countries. The Complainant has not authorized or permitted the Respondent to use the trademark. The Respondent has failed to demonstrate his rights to and legitimate interests in the domain name as per paragraph 4(c) of the Policy. The Respondent does not hold any trademark registration that is identical, similar or in any way related to the terms Burberry or dcburberry.

The Respondent’s use of the domain name cannot be considered to be in connection with a bona fide offering of goods or services. The Respondent’s website provides links to other websites and online shopping site related to Burberry and other luxury brands. In order to be bona fide, the offering of goods or services must meet minimum requirements including: (i) the site must accurately disclose the registrant’s relationship with the trademark owner, and (ii) the Respondent must use the site to sell only the trademarked goods.3 The Panel has examined Annex H, i.e. contents of the website “dcburberry.com”, and found that the Respondent is not using the domain name in a manner that can be considered legitimate non-commercial or fair use. The Respondent is using the domain name for commercial gain to divert consumers and to tarnish the trademark Burberry. The website “dcburberry.com” does not disclose that it has no relationship with the Complainant, the owner of the trademark BURBERRY.

The Administrative Panel finds that Respondent has no rights or legitimate interests in respect of the domain name <dcburberry.com>.

D. Registered and Used in Bad Faith

The Complainant is required to prove both that the domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction ‘and’ rather than ‘or’ and it refers to both the past tense (‘has been registered’) and the present tense (‘is being used’) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.

It is stated by the Complainant that on January 18, 2006, the website at the subject domain name opened on to a page describing itself as a portal site and containing links to sites related to Burberry and other designer brands. The site allowed individual website owners to add there URLs to this site through a registration process and provided online shopping links and information on Burberry products from Burberry bags to Burberry scarves. Annex H has depicted the contents of the said website in which “Burberry’ has been repeatedly used, and it gives an impression that this website is related with the Complainant Burberry.

The case is squarely covered by paragraph 4(b)(iv) of the Policy.

It has been alleged by the Complainant that the Respondent has not given notice or statements that there is no relationship between Burberry and the Respondent. The website of the Respondent provides links to other sites related to providing counterfeit Burberry goods for sale. There is no reply of the Respondent to rebut this serious allegation of the Complainant.

The Respondent is domiciled in the U.S.A. where the Complainant has business operations and sales and where the trademark is registered. Hence, it can be presumed that the Respondent was aware of the trademark BURBERRY of the Complainant.4

The domain name <dcburberry.com> is confusingly similar with the known Burberry trademark and products, and its use by the Respondent suggests opportunistic bad faith. The fame of the Complainant’s trademark is used to increase traffic at the site of the Respondent, providing links to websites offering products competing with Burberry and also to unrelated products.

The Panel finds that the domain name<dcburberry.com> has been registered and is being used by the Respondent in bad faith.

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 domain name <dcburberry.com> be transferred to the Complainant.


Ashwinie Kumar Bansal
Sole Panelist

Date: March 6, 2006


1 See decisions in Oki Data Americas, Inc. v. ASD. Inc, WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096, “parts” added to mark EAUTO in <eautoparts.com>; Caterpillar Inc. v. Off Road Equipment Parts, Case No. FA0095497, “parts” added to mark CAT in <catparts.com>; Komatsu Ltd. and Komatsu America International Company v. R K Web Ltd., WIPO Case No. D 2000-0995, “parts” added to mark KOMATSU in <komatsu-parts.com>.

2 See related decisions in <burberryplaza.com> in Burberry Limited v. Kim Kyoung-Soon, WIPO Case No. D2005-0768; <burberryshop.com> in Burberry Limited, Inc. v. S.H. Baek, WIPO Case No. D2005-0334; <myburberrys.com> in Burberry Limited v. Lee Eun Ju, WIPO Case No. D2005-0667; and <itsburberry.com> in Burberry Limited v. Byung-Choon Kim, WIPO Case No. D2005-0704.

3 See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

4 See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0095.html

 

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