Generic Top Level Domain Name (gTLD) Decisions

The Complainant in this administrative proceeding is Burton S.A., 14/26 Boulevard Poissonnière, 75009 Paris, France.

The Respondent in this administrative proceeding is Burton, P.B. 36, Grevenmacher 6701, Luxembourg.

This dispute concerns the domain name <burton.biz>.

The Registrar with which the domain name is registered is Namebay, Monaco.

The WIPO Arbitration and Mediation Center ("the Center") received the STOP complaint on April 24, 2002 (electronic version) and April 30, 2002 (hardcopy). The STOP complaint was made pursuant to the Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001 ("the STOP") and the Rules for Start-up Trademark Opposition Policy, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules"). On May 29, 2002, the Respondent sent to the Center an e-mail communication. The notification of STOP complaint and commencement of administrative proceeding was sent on May 31, 2002. On June 3, 2002, the Center received a letter from the Respondent. On June 26, 2002, The Center sent an e-mail communication to the Respondent. On June 27, 2002, the Center issued a notification of Respondent Default. On June 28, 2002, the Respondent’s reply to the Center’s Notification of Respondent Default reached the Center.

The Panel has been appointed on July 17, 2002.

This complaint is based on the following trademarks :

The Complainant Montague Burton S.A. was created on March 30, 1928, and became Burton S.A. on November 16, 1994. The name BURTON has been exploited in more than 100 stores throughout France since 1928.

The Complainant owns the following French trademarks :

BURTON OF LONDON, N° 1546963, date October 31, 1964, classe 25.

BURTON N° 1255670, date December 29, 1983, classes 3, 18, 23, 24, 26.

BURTON, N° 1260057, date February 8, 1984, classe 25.

In its complaint, Complainant contends that Complainant’s domain name <burton.biz> is strictly identical to trade name and to Complainant’s French trademarks BURTON. Further, the Respondent allegedly does not use the sole name BURTON but BURTON GRAPHIC DESIGN AGENCY.

The Respondent’s present domain name is <burtondesign.lu>.

The Registrant is not the owner of any BURTON trademark in Luxembourg according to the Benelux Trademarks Office (BTO).

The Registrant cannot ignore this, since the name BURTON is being exploited in more than 100 stores throughout France.

In an e-mail of May 29, 2002, the Respondent mentioned

"You’re right, we don’t own a Burton trademark … We are Burton !

Founder and General Manager of Burton s.à r.l. is Mr Eugène Burton, and the company is not running under the name of Burton Graphic Design Agency, but simply under Burton s.à r.l. this is why we haven’t opted for burtondesign.biz

Burton s.à r.l. is a full service agency in terms of communication and not only design. And since 25 years".

This was reiterated in a letter of May 31, 2002 :

"Referring to the letter from May 27, of the French company Burton S.A. (ref. : omitted), we simply want to clarify that we are in no way trying to take advantage of the BURTON "fame" and prevent the French company from using the domain name BURTON.BIZ in a bad intention.

In his letter, Mr Philippe GOUDARD of Burton S.A. says that we are not an owner of any Burton trademark, this is in fact true, … We simply are BURTON. Founder and General Manager of Burton Design s.à r.l. is Mr Eugene BURTON himself.

The company is not called Burton Graphic Design Agency, but simply Burton since 1976, and officially registered to the Luxembourg "Registre de Commerce" since 1987 as Burton s.à r.l. I believe that at this time Burton S.A. was not even founded. Anyway the name has no reference to any physical person of the clothing company, and is only an artificial trademark name.

We had to register to the Internet with burtondesign.lu, because the domain names burton.lu as well as burton.com where already registered to Burton Snowboard Company. Even burtondesign.com was already taken so that we had to opt for burtondesign.lu simply. The day the .BIZ domains where announced, we wanted to take the opportunity to register at least the burton.biz domain knowing that we missed to register the above-mentioned domains.

We don’t want to register as burtondesign.biz or any other combination, because Burton s.à r.l. is a full service agency in various fields of the communication business and not only focused on design. "

On June 28, 2002, The Respondent sent the following mail :

"We sended a letter to your organization explaining that we’re not trying to take advantages of the BURTON fame and prevent the Burton Clothing Company from using the domain name BURTON.BIZ in bad intentions.

First come first play … !

Why does the Burton Snowboard Company not complain against us, or we against them ?

We have nothing more to say than what is mentioned in our letter.

What else should we do ?"

There is no doubt that the domain name <burton.biz> is identical to Complainant’s trademarks, as the top level domain name .biz is not a distinguishing feature.

As pointed out in both e-mail of May 29, 2002, and letter of May 31, 2002, the Respondent was founded by Mr. Eugène Burton 25 years ago. Thus, it is a typical case of a family name used in a trade name in good faith for many years.

Therefore, the Panel finds that under Paragraph 4 (b) STOP, the Respondent has a valid claim to use Burton as a trade name.

There are no indication of bad faith registration and use of the disputed domain name, as this name was used since two decades and a half in business before being registered as <burton.biz>.

The Complainant points out that, under the former system governing the registration of domain names, the Respondent had registered a different domain name, namely <burtondesign.lu>. It contends that this fact, taken together with other facts as are alleged above (to wit mainly, that the Respondent is not the owner of any BURTON trademark) shows that the Respondent is trying to take advantage from the Burton fame and to prevent the Complainant from using the domain name <burton.biz>.

However, the Panel cannot share this view of the Respondent’s conduct. First, it is to be noted that the French Burton trademarks are not the only Burton trademarks in existence. Annex 8 of the Complaint lists for the Benelux Registry 16 registered trademarks in areas as diverse as "tea", "cookies", and "menswear". Further, the Respondent also alludes to the rights of Burton Snowboard Corp. Thus, it is obvious that the Complainant has to tolerate the activities of third parties under the name and/or marks BURTON, to the extent that they do not run counter to its own trademark in the garment industry.

Second, it might well be that even the owner of a trade name which is based on the family name of the firm’s founder should take steps to differentiate his business from other business with the same name or surname, such as adding the first name of the firm’s founder, or its seat, or its area of business. Such differentiation may be required by the national law against unfair competition, for example. Nevertheless, the STOP proceedings do not allow a panel to order the modification of a given domain name; only transfer of the domain name is to be ordered if the conditions of the STOP Rules are met.

In the present case, as the Panel finds that the Respondent has a right to its trade name and that its bad faith has not been proved, it will decline to order transfer of the domain name at issue.

In the light of the foregoing, the Panel decides that the domain name registered by the Respondent is identical to the trademarks of the Complainant, but that the Respondent has a right to it as this domain name corresponds to its trade name used for 25 years, and that the domain name has not been shown to have been registered in bad faith by the Respondent.

Accordingly, the Panel declines to order that the registration of the domain name <burton.biz> be transferred to the Complainant.