Burberry, renowned for its iconic trench coats and signature check pattern, successfully reclaimed the domain burberrybeauty.com through a UDRP proceeding. This outcome at the WIPO Arbitration and Mediation Centre shows Burberry’s commitment to safeguarding its trademark and maintaining its brand identity in the digital space.

This case shows Burberry’s strategy of protecting its trademark rights against unauthorised use, preventing consumer confusion, and preserving its reputation for luxury and quality.

The Case

Burberry filed a complaint against Wang Jun, the registrant of burberrybeauty.com, arguing that the domain name was registered and used in bad faith. Burberry claimed that the domain name exploited its well-known brand name, misleading consumers by creating an association with its beauty product line.

Wang Jun did not respond to the complaint. In UDRP disputes, failing to respond usually weakens the respondent’s position, as it leaves the complainant’s claims unchallenged. This allowed the panel to decide the case based solely on Burberry’s evidence.

UDRP Requirements and Panel’s Findings

Under the Uniform Domain Name Dispute Resolution Policy (UDRP), a complainant must prove three elements:

1. The domain name is identical or confusingly similar to a trademark in which Burberry has rights.
2. Wang Jun has no rights or legitimate interests in the domain name.
3. The domain name was registered and used in bad faith.

Identical or Confusingly Similar

The panel found that the domain name burberrybeauty.com fully incorporated the well-known BURBERRY trademark, with the addition of the word beauty. The addition of this descriptive term did not prevent confusion, as the dominant part of the domain name remained “Burberry.”

The panel noted that adding a term related to Burberry’s product line made it more likely that consumers would assume an association with Burberry. The panel also stated that the .com suffix was irrelevant when assessing similarity.

No Rights or Legitimate Interests

Burberry argued that Wang Jun had no rights or legitimate interests in the domain name because:

• He was not affiliated with Burberry and had no authorisation to use the BURBERRY trademark.
• He was not commonly known by the domain name.
• The domain name was used as a pay-per-click website featuring third-party links, generating revenue from internet traffic associated with the BURBERRY name. This did not qualify as a legitimate business use.

Wang Jun did not provide any evidence to dispute these claims. In UDRP cases, once a complainant establishes a prima facie case, the burden shifts to the respondent to prove otherwise. In this case, the panel found that Wang Jun failed to show any rights or legitimate interests.

Bad Faith Registration and Use

The panel concluded that Wang Jun registered and used the domain name in bad faith. Several factors supported this finding:

• The BURBERRY trademark is globally recognised, making it unlikely that Wang Jun was unaware of it when registering the domain name.
• The domain name was used as a parking page with pay-per-click links, likely attracting traffic due to the BURBERRY name. Such use is commonly considered evidence of bad faith.
• Wang Jun listed the domain for sale, suggesting an intention to profit from Burberry’s trademark. Under UDRP rules, offering a domain for sale at a price exceeding out-of-pocket costs is considered evidence of bad faith.

Wang Jun had a history of registering domain names linked to luxury brands, such as hermescouture.com and givenchy-fragrances.com, indicating a pattern of targeting well-known trademarks for commercial gain. This practice, combined with his false claim of being a Burberry partner, supported the panel’s conclusion of bad faith registration and use.

The Decision

The panel ruled in favour of Burberry and ordered the transfer of burberrybeauty.com. The panel also reviewed a supplemental filing submitted by Burberry but found that it did not provide any new arguments or evidence affecting the decision.

This ruling allows Burberry to regain control over its brand identity online and prevents further misuse of its trademark. By securing the domain name, Burberry reduces the risk of consumer confusion and protects its reputation as a luxury brand.

Conclusion

Burberry’s success in reclaiming burberrybeauty.com followed established UDRP standards on confusing similarity, lack of legitimate interest, and bad faith registration and use. The case illustrates the ongoing risks of cybersquatting, particularly in the luxury sector where brand value depends on consumer perception and trust. Unauthorised domain registrations can mislead consumers, divert traffic, and damage brand reputation.

To protect trademarks and maintain brand identity, brands must remain vigilant in monitoring domain registrations and take swift legal action when necessary. As online presence continues to shape consumer trust, actively safeguarding intellectual property is essential to preserving brand value and reputation.

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Source:

1.https://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-1304.html