Decision for dispute CAC-UDRP-108118

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner of the BURBERRY trade mark, which is used in relation to, inter alia, watches, jewellery, luggage, handbags, perfumes, sunglasses, and clothing. The Complainant has numerous trademark registrations for BURBERRY including the following:

• United Kingdom trademark registration No. UK00000405317, registered since June 18, 1920; 
• United Kingdom trademark registration No. UK00001428264, registered since November 29, 1991; 
• United Kingdom trademark registration No. UK00002225986, registered since August 25, 2000; 
• United Kingdom trademark registration No. UK00002299458, registered since October 4, 2002;
• European Union trademark registration No. 001058312, registered since March 27, 2000;
• European Union trademark registration No. 002680460, registered since July 31, 2003; and
• United States trademark registration No. 260843, registered since August 27, 1929.

The Complainant is global luxury brand involved in the design, manufacture, advertising, distribution, and sale of high-quality apparel, bags, cosmetics, perfumes and accessories. Established in 1856 in England, the Complainant has continuously used the BURBERRY mark in connection with its goods and services. The Complainant currently operates over 400 retail and concession outlets around the world, and its products are also sold in well-known department stores, boutiques, Burberry stores, online at www.burberry.com, and other authorized retail establishments. In the 2024 fiscal year, the Complainant had over £2,461 million in revenue.

The Complainant states that it has spent substantial resources in advertising and promoting its BURBERRY trade mark, and as a result, the BURBERRY mark has become internationally famous and has acquired enormous and valuable goodwill, and is considered one of the most valuable fashion brands worldwide.

The Respondent registered the <burberryssale.com> domain name on July 1, 2025, and the <burberrysale.shop> domain name on June 30, 2025. At the time of filing the Complaint, the disputed domain names resolved to inactive webpages. The disputed domain names previously resolved to websites that impersonated the Complainant’s official website, www.burberry.com, prominently displayed its BURBERRY trade mark, and sold purportedly BURBERRY-branded products. At the time of filing the Complaint, the disputed domain names resolved to inactive websites.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese.  Pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Rules“), paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceedings be English for these reasons:

• The disputed domain names include the Complainant’s English-language trade mark;
• The disputed domain names comprise words in the Latin script, and not in Chinese characters;
• The disputed domain names are “in the international ‘.com’ and ‘shop’ zone”;
• The Respondent uses English words in the disputed domain names, demonstrating that the Respondent is familiar with the English language;
• At the time when the Respondent’s websites to which the disputed domain names resolved were active, they were in the English language; and
• The details of the registrant as provided by the Registrar indicates an address in Canada, an English-speaking country.

The Respondent did not make any submissions with respect to the language of the proceeding. 

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the language/script of the domain name particularly where the same as that of the complainant’s mark, potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, and evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (see section 4.5.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Having considered the circumstances of this case including the composition of the disputed domain names which contain the English word “sale” and are registered in the “.shop” and “.com” generic Top-Level domain, and the location of the Respondent, the Panel determines that the language of the proceeding shall be English. There does not appear to be any reason which warrants a delay and additional expense in ordering the Complainant to translate the Complaint into English.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.

A registered trade mark provides a clear indication that the rights in the mark shown on the trade mark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in BURBERRY. The Panel also agrees with the Complainant’s contention that BURBERRY is a well-known trade mark.

In this case, the disputed domain names comprise the entirety of the Complainant’s BURBERRY trade mark with the addition of the generic term “sale” and the misspelt version thereof, “ssale”. The addition of the term “sale” does not serve to distinguish the disputed domain names from the Complainant’s BURBERRY trade mark but in fact adds to the confusion with the Complainant’s trade mark. The disputed domain names are therefore confusingly similar to the BURBERRY trade mark in which the Complainant has rights.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests 

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns registered trademark rights in BURBERRY long before the date that the disputed domain names were registered. Further, there is no evidence that the Respondent was licensed or otherwise authorized by the Complainant to use the Complainant’s BURBERRY trade mark or that the Respondent is commonly known by either of the disputed domain names. 

At the time of the filing of the Complaint, the disputed domain names resolved to inactive websites but were previously used in relation to websites which pass off as those of the Complainant or as being associated with the Complainant. Such use of the disputed domain names can never confer on the Respondent rights or legitimate interests in the disputed domain names.

The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show she has rights or legitimate interests in the disputed domain names which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith 

The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant’s BURBERRY trade mark was registered years before the registration of the disputed domain names. it is evident in this case that the Respondent knew of the Complainant and its BURBERRY trade mark prior to the registration of the disputed domain names. The body of previous UDRP panel decisions has established the principle that “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. (See See WIPO Overview 3.0, section 3.1.4.).

The disputed domain names consist of the Complainant’s BURBERRY trade mark in its entirety with the addition of the generic term “sale” and “ssale”, a mis-spelling of “sale”. The disputed domain names currently resolve to inactive webpages. The fact that there is currently no active use of the disputed domain names does not have any impact on the Panel's decision under paragraph 4(a)(iii) of the Policy. It has long been established that the lack of use of a disputed domain name will not prevent the finding of bad faith use and registration. It is well-established that panellists would consider the totality of the circumstances including: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the domain name may be put. (See WIPO Overview 3.0, section 3.3.).

Given the said factors, which the Panel finds to be present in this case, as well as the evidence of previous impersonation of the Complainant’s official website and unauthorized use of the Complainant’s BURBERRY trade mark on the Respondent’s website, the Panel is persuaded by the evidence that the Respondent registered and was using the disputed domain names in bad faith with the aim of specifically targeting the Complainant.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.