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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Kang Kyungnam

Case No. D2006-0186

 

1. The Parties

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

The Respondent is Kang Kyungnam, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <e-burberry.com> is registered with CommuniGal Communications Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2006. On February 13, 2006, the Center transmitted by email to CommuniGal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On February 17, 2006, CommuniGal Communications Ltd. 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 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2006.

The Center appointed Teruo Doi as the Sole Panelist in this matter on March 28, 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 facts stated in the Complaint are as follows:

(1) The Complainant, Burberry Limited (“Complainant” or “Burberry”), was established in 1856 by Thomas Burberry, and has become a world-famous manufacturer and retailer of luxury products, operating retail and wholesale businesses as well as licensing networks throughout the world, including Korea.

With its reputation having been built over a 150 year period, Burberry is one of the most recognized and respected names in fashion in the world. Starting with one shop in London in 1891, Burberry now sells products in Europe, North America, Asia and the Middle East (Annex C).

As of March 31, 2005, there were over 230 Burberry retail locations worldwide, including 157 stores directly operated by Burberry – 56 of them in Korea. Burberry’s annual revenue for the year ending March 32, 2005, was 715,5 million pounds (approximately 1,32 billion United States dollars) (Annex D).

Burberry’s presence in Korea, where the Respondent resides, dates back to 1986. By 2000, the company’s annual revenue from Korean sales was over 70 billion won (approximately 68 million United States dollars), with over 40 stores nationwide. As stated above, Burberry now has 56 retail centers in the country (Annex E).

(2) Burberry owns registrations for the BURBERRY trademark in almost 90 countries. In Korea, the BURBERRY mark was first registered in or about 1980. Products sold under the trademark includes all types of apparel, bags, scarves, cosmetics, perfumes, glasses, watches and other accessories (Annex F).

Burberry has spent substantial time, effort and money advertising, promoting and protecting its various trademarks, including the BURBERRY Trademark. As a result, the BURBERRY mark has become internationally famous and has acquired enormous and valuable goodwill. In Korea, Burberry’s fame and recognition has been noted by the media in recent years with reports that, among imported luxury brands, Burberry marks somewhere between number one and for in terms of popularity. (Annex G).

Burberry operates a website based on the BURBERRY trademark, “www.burberry.com”, which is frequently accessed by consumers as well as the general public. The domain name, <burberry.com>, was registered on January 17, 1997. A Copy of the WhoIs domain name search report is attached (Annex H).

(3) On January 25, 2004, the Respondent registered the Domain Name at issue, <e-burberry.com>. An online shopping site is being operated at the Domain Name at issue, selling a number of Burberry products, including clothing, bags, perfumes and accessories. The website also offers for sale products of Burberry’s competitors in the field of luxury goods such as Gucci, Tiffany & Co., Prada, Coach and Cartier. In fact, despite operating at the Subject Domain Name, which incorporates Burberry’s famous trademark, Burberry brand products make up only a small minority of the goods offered for sale at the site. As a reflection of its status as an online shopping mall selling multiple brands, the site is also accessible via another domain name, <luxurywell.co.kr>. Copies of extracts from the Respondent’s website at the Domain Name at issue (screen captures and regular website printouts) are attached to the Complaint (Annex I).

 

5. Parties’ Contentions

A. Complainant

On the basis of facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <e-burberry.com>, be transferred to the Complainant in accordance with Paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Name at issue is essentially identical and confusingly similar to the Complainant’s famous BURBBERRY trademark: If the “.com” portion was excluded since it is a necessary component of a “.com” Top Level Domain Name), the Domain Name at issue consists of the Complainant’s famous trademark BURBERRY, preceded by the additional portion, “e-”.

Administrative Panels have routinely found that, “as a rule, when a domain name wholly incorporates a complainant’s mark and only adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is only heightened when the generic word added by [the] Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”. (ACCOR, Sociйtй Anonyme a Directoire et Conseil de surveillance v. Tigertail Partner, WIPO Case No. D2002-0625) (Annex J).

In this case, the Domain Name at issue wholly incorporates Burberry’s trademark. Also, the additional portion, “e-”, as a generic term commonly used to refer to electronic or online transactions, lacks distinctiveness, as found by a previous Administrative Panel in a case involving the domain name <eburberry.com> [Burberry Limited v. Byungil Jeon, WIPO Case No. D2005-0668] (Annex K).

Moreover, a number of Administrative Panels decided in previous domain name disputes that the addition of a generic term to “Burberry” does not eliminate the likelihood of confusion between the domain name and the famous BURBERRY trademark since “Burberry” would be considered the prominent portion of the domain name [Burberry Limited v. Byungil Jeon, WIPO Case No. D2005-0668, <eburberry.com> (Annex K); Burberry Limited v. Kim Kyooung-Soon, WIPO Case No. D2005-0768, <burberryplaza.com>; Burberry Limited v. S.H. Baek, WIPO Case No. D2005-0334, <Burberryshop.com>; Burberry Limited v. Lee Eun Ju, WIPO Case No. D2005-0667, <myburberrys.com>] (Annex L).

Accordingly, while the Respondent was never authorized or permitted to use the BURBERRY mark by Burberry, anyone encountering the Respondent’s use of the phrase “e-burberry” is likely to believe incorrectly that it identifies goods or services from, authorized by or in some way connected with the Complainant.

(2) The Respondent has no rights or legitimate interests in respect of the domain name: To the best of Burberry’s knowledge, the Respondent does not hold any trademark registrations that are identical, similar or in any way related to the term “Burberry” or “e-burberry”.

Moreover, to the best of Burberry’s knowledge, the Respondent has not been commonly known by the Subject Domain Name. In fact, this would be extremely unlikely in view of the fame of the BURBERRY trademark, which is owned by Burberry.

Also, the Respondent is not making a legitimate noncommercial or fair use of the Subject Domain Name. Rather the Respondent is intentionally using the Subject Domain Name for commercial gain to misleadingly divert consumers and to tarnish the BURBERRY mark. As stated above, the website at the Subject Domain Name is an online shopping mall, selling a wide range of not only Burberry products, but also those of its competitors in the field of luxury goods (e.g., Gucci, Tiffany & Co.). In that regard, it must be noted that the website can also be accessed via another domain name, <luxurywell.co.kr>, as stated above. As such, by also using the Subject Domain Name for the same online shopping mall, the Respondent is profiting from the popularity and fame associated with the BURBERRY mark and using it as “bait” to attract customers to the site for the purposes of selling not only Burberry goods but also other types of products unrelated to Burberry, and thus diluting the BURBERRY mark.

Moreover, the Respondent’s use of the Subject Domain Name cannot be considered to be in connection with a bona fide offering of goods or services. In that regard, previous Administrative Panels have found that, in order to be bona fide, the offering must meet several minimum requirement, 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 [Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903] (Annex M).

In this case, nowhere in the website is there any disclosure concerning the Respondent’s relationship with Burberry, or more accurately, the fact that there is no relationship between the Respondent and Burberry. Moreover, as stated above, the Subject Domain Name is being used to sell not only Burberry goods but also products of Burberry’s competitors. Such use cannot be considered to be legitimate or fair use.

Even if it were assumed that the Respondent is selling genuine, parallel imported Burberry goods through the website, Administrative Panels have found that such resale activity does not confer any proprietary rights in a given trademark. In Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A. Ermegildo Zegna Corporation v. Ms. Girolama Pradormo, WIPO Case No. D2003-0936 (Annex N), the Panel wrote: “…..a retailer does not acquire trademark rights simply by retailing goods manufactured by other parties. Concluding otherwise with respect to domain names would deprive trademark owners of their rights, since any given product is sold by thousands of retailers, and each of them would be recognized as potentially legitimate owner of the corresponding domain name”[also refer to Companhia Muller De Bebidas v. Productos Tropicales, Heinz Bosch, WIPO Case No. DCH2004-0013 (Annex N)]. In that regard, the extent to which a reseller of goods can use the mark depends on the extent to which such use accurately reflects the user’s connection with the mark owner [Ferraro S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262; Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601 (Annex O)]. In this case, as there is no connection between Burberry and the Respondent, it is clear that the Respondent selected and is using the Subject Domain Name solely in order to attract Internet users to the website concerned by trading on the fame of the BURBERRY mark.

(3) The domain name was registered and is being used in bad faith: The Respondent registered the Subject Domain Name in bad faith. As stated above, Burberry is a world famous luxury brand. In Korea, BURBERRY trademarked goods began to be sold in 1986 well before the Respondent registered the Subject Domain Name, and is now one of the most well-known and popular imported luxury brands. Given Burberry’s fame both internationally and in Korea, as well as its wide reputation in the BURBERRY mark, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the BURBERY brand and trademark prior to registering the Subject Domain Name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) (Annex P). As such, it is clear that the Respondent’s registration of the Subject Domain Name was for the purpose of improperly taking advantage of and/or profiting from the fame of Burberry’s famous trademark.

The Respondent continues to use the Subject Domain Name in bad faith. While there is no relationship between Burberry and the Respondent, there are no statements whatsoever anywhere on the site advising Internet users of that fact. Previous Administrative Panels have found that 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 suggests opportunistic bad faith” (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (Annex Q)) It is clear that, by using the Subject Domain Name, the Respondent is using the fame of Burberry’s mark to improperly increase traffic at a site that is unrelated to Burberry. In that regard, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site by creating a likelihood of confusion with Burberry’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Furthermore, as stated above, the website at the Subject Domain Name sells products of Burberry’s competitors besides Burberry goods. Accordingly, the Respondent is using the popularity and fame associated with the BURBERRY mark to attract customers to the site for the purposes of selling other brands completely unrelated to Burberry. Such conduct dilutes the BURBERRY mark and can only be viewed as bad faith.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

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

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

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

The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:

A. Identical or Confusingly Similar

The Domain Name at issue, <e-burberry.com>, is identical or confusingly similar to the Complainant’s trademark BURBERRY registered and used worldwide including the Republic of Korea where the Respondent resides, because it embodies the mark along with elements which do not alleviate the confusion.

The Complainant’s luxury products bearing the trademark, BURBERRY, have been extensively marketed through many retail outlets located worldwide, including the Republic of Korea, and the Complainant’s trademark, BURBERRY, has become internationally famous. The Complainant operates a website based on its trademark, “www.burberry.com”, which is frequently accessed by consumers as well as the general public. The Complainant’s domain name, <burberry.com>, was registered on January 17, 1997 (Annex H).

The Respondent registered the Domain Name at issue, <e-burberry.com>, on January 25, 2004. In the finding of its confusing similarity with the Complainant’s trademark, BURBERRY, the suffix “com” should be disregarded since it represents the top-level domain. The prefix “e-” does not prevent the finding of confusing similarity because the prefix “e-” is commonly used to refer to electronic or online transactions and has no distinctive quality, as correctly asserted by the Complainant citing WIPO UDRP Panel Decisions in cases involving domain names each consisting of the word “burberry” that corresponds to the Complainant’s trademark, BURBERRY (Annexes K and L).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name at issue, because there is no evidence to show that the Respondent has been or is commonly known by the Domain Name, and the Complainant has never authorized or permitted the Respondent to use the word “burberry” for its Domain Name.

Furthermore the Panel notes that the website at the Domain Name at issue is an online shopping mall selling not only Burberry products but also the products of the Complainant’s competitors in the field of luxury goods such as Gucci and Tiffany & Co.

Even if the Respondent is selling genuine goods bearing the Complainant’s trademark on the website, the Panel finds that such a resale activity does not confer the Respondent any proprietary rights in the Complainant’s trademark as has been consistently held by the Panels in the WIPO domain name cases cited by the Complainant (Annex N).

C. Registered and Used in Bad Faith

The Domain Name at issue, <e-burberry.com>, has been registered and used in bad faith by the Respondent for the following reasons:

The Complainant’s trademark, BURBERRY, is registered and used for a wide variety of luxury consumer goods in many countries around the world, including the Republic of Korea where the Respondent resides, and it has become well-known and famous for the Complainant’s products. This is particularly due to the distinctive quality of the Complainant’s trademark and the Complainant’s promotional efforts backed by their appropriate trademark management. .

As noted above, the Complainant’s registration of its domain name, <burberry.com>, precedes the Respondent’s registration of the Domain Name at issue for a bit over seven years. And the Respondent’s registration was made possible by adding the prefix “e-” to the Complainant’s domain name. Taking into account the important distinctiveness of the Complainant’s marks, the Panel is convinced that the registration and use of the disputed domain name were undertaken with a view to profit from the goodwill associated with the mark BURBERRY.

Accordingly, the panel finds that circumstances listed in Paragraph 4(b)(iii) and (iv) of the Policy exist to show the Respondent’s bad faith in the registration and use of the Domain Name at issue.

 

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, <e-burberry.com>, be transferred to the Complainant.


Teruo Doi
Sole Panelist

Dated: April 4, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0186.html

 

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