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Burberry Limited v. Kim Kyoung-Soon [2005] GENDND 1637 (10 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burberry Limited v. Kim Kyoung-Soon

Case No. D2005-0768

1. The Parties

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

The Respondent is Kim Kyoung-Soon, Seongbuk-gu, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <burberryplaza.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2005. On July 20, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On July 20, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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 July 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2005.

The Center appointed Keita Sato as the Sole Panelist in this matter on August 25, 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.

4. Factual Background

The Complainant is Burberry Limited, a company established in 1856 and existing under the laws of England. It is a manufacturer and retailer of luxury products operating a retail and wholesale business in said field. The Complainant has registered the BURBERRY trademark for clothing, bags, scarves, cosmetics, perfumes, glasses, watches, papers, and other accessories in almost 90 countries. In Korea, the Complainant has registered the BURBERRY trademark for classes 3, 9, 14, 18, 25. The Complainant registered the domain name <burberry.com> in 1997, and operates a website under this domain name.

The Respondent registered the domain name <burberyplaza.com> and operates an Internet shop at the website linked to this domain name.

5. Parties’ Contentions

A. Complainant

In its Complaint, the Complainant alleges that the domain name at issue is confusingly similar to the trademark BURBERRY owned by the Complainant, as the domain name at issue reproduces the trademark in its entirety, adding only the generic word “plaza” and the suffix “.com.”

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue, since the Respondent has no trademark registrations and intentionally used the domain name at issue for commercial gain to misleadingly divert consumers and to tarnish the BURBERRY mark. Moreover, 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. Even if it were assumed that the Respondent is selling genuine imported Burberry goods through its website, it should not be considered that such resale activity confers any proprietary rights in the trademark.

The Complainant also alleges that the Respondent registered the domain name at issue in bad faith, since the BURBERRY mark is internationally well-known and is famous in Korea. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the BURBERRY mark prior to the registration of the domain name at issue. Further, the use of the domain name at issue in the Respondent’s website dilutes the BURBERRY mark and this use can only be viewed as being in bad faith.

The Complainant requests the Panel to issue a decision ordering that the domain name <burberryplaza.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

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

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

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark BURBERRY to which (1) the suffix “.com” and (2) the generic term “plaza” are added. The suffix “.com” is a generic top level domain name which is without legal significance when considering confusing similarity or the confusion caused to Internet users. By simply affixing the generic term “plaza” to the Complainant’s trademark and registering such combination of words, the Respondent did create a confusing similarity between the domain name and the trademark of the Complainant. This view is consistent with the opinion expressed by other Panels in a number of cases (cf. Burberry Limited v. S.H. Baek, WIPO Case No. D2005-0334; Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312; Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. D2001-1245; Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375).

Therefore, the Panel finds the domain name <burberryplaza.com> to be confusingly similar with the Complainant’s trademark BURBERRY. The first criterion, as per paragraph 4(a) of the Policy, has therefore been established.

B. Rights or Legitimate Interests

This case raises the question of whether the Respondent has rights and legitimate interests to use the disputed domain name in connection with a bona fide offering of goods or a noncommercial or fair use without the intent for commercial gain. The issue before the Panel is whether the Respondent’s offerings may be characterized as bona fide.

To be bona fide, the offering must meet several requirements (see, Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Among those requirements are the following:

- A respondent must actually be offering the goods or services at issue;

- A respondent must use the domain name to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods;

- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner (i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent);

- A respondent must not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.

The Panel finds the Respondent’s website under the domain name at issue does not meet the second and the third requirements because the Respondent has included in its website several sub-sections, including the PLADA plaza. Sometime after submitting the Complaint, the Respondent has changed its website, since the Panel found no such sub-section on September 4, 2005. However, the Panel found that the website operated by the Respondent still has a sub-section named “Special Shop” in which it sells digital cameras and other goods which have no relation to the goods sold by the Complainant under the trademark BURBERRY. In addition, the Respondent has put its company name on the website. However, the Respondent has written nothing about the relationship between the Complainant and itself on the website.

Therefore, the Panel finds the second criterion, as per paragraph 4(a) of the Policy, is established.

C. Registered and Used in Bad Faith

The Respondent registered the domain name at issue in bad faith. When the Respondent registered the domain name at issue on January 17, 1997, the Complainant had already registered the trademark BURBERRY in Korea. The trademark was first registered by the Complainant in 1980, well before the registration of the domain name at issue. The Complainant began its clothing business in the Korean market in 1986 (see Korean Economic Diary 2001.08, 06; Complainant Evidence Annex E). In the United Kingdom, the Complainant’s business has a long history, starting in 1850 (Evidence Annex C), and has expanded to include almost 150 countries. This evidence shows the Complainant has a worldwide reputation in the fashion business. 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 registration. These findings together with the findings that the Respondent has no rights or legitimate interests in the domain name at issue, lead the Panel to conclude that the domain name at issue has been registered by the Respondent in bad faith.

The last requirement of paragraph 4(a) of the Policy is that the Respondent has used the domain name at issue in bad faith. The Respondent is currently selling not only products of the Complainant’s but also products with no relation to the Complainant’s products or trademark through its website under the domain name at issue, and is thus attracting Internet users to its website for commercial gain, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.

Therefore, the Panel finds the third and last criterion, as per paragraph 4(a) of the Policy, to be established.

7. Decision

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

Keita Sato
Sole Panelist

Dated: September 10, 2005