Complainant is Bottega Veneta International S.A.R.L. of Luxembourg, represented by Studio Barbero, Italy.
Respondent is peng fen of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 6, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 6, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 13, 2012. 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
Complainant was founded in the 1960s and sells leather goods, jewelry, furniture, and other products under its BOTTEGA VENETA trademark. Complainant’s goods have enjoyed a significant amount of promotion by being featured in third party short films, fashion shows, advertising campaigns, and in boutiques devoted primarily to Complainant’s merchandise located in multiple countries worldwide. Complainant owns numerous trademark registrations for BOTTEGA VENETA covering multiple jurisdictions for leather goods, accessories, furniture, clothing, and other goods.
The disputed domain name was created on November 10, 2010. The record shows that the webpages displayed at the disputed domain name have advertised handbags, shoes, and accessories and have featured the heading “Bottega Veneta” and descriptions such as “Bottega Bags” and “Bottega Veneta Handbags”. 5. Parties’ Contentions A. Complainant
Complainant claims to offer one of the world’s “premier luxury brands” and has provided significant evidence of ownership of the BOTTEGA VENETA trademark for items such as clothing, handbags, leather goods, jewelry, and accessories. The record includes a significant amount of advertising provided by Complainant showing its use of the BOTTEGA VENETA trademark for the aforementioned goods. Complainant claims to be world renowned based upon its extensive use of the BOTTEGA VENETA trademark for its goods and promotion of its brands in fashion shows, advertising campaigns, and boutiques located in 29 countries which are designed and maintained by Complainant to showcase its products.
Complainant claims that the disputed domain name is confusingly similar to its BOTTEGA VENETA trademark because it combines Complainant’s BOTTEGA VENETA trademark with the term “outlet”, a term which Complainant claims is not distinctive. Complainant alleges that the use of the term “outlet” by Respondent in the disputed domain name increases the likelihood that consumers will believe that the disputed domain name is operated by or associated with Complainant. Complainant maintains that it has never authorized Respondent to use its trademark, and that Respondent’s use of the domain name can be classified as bad faith because the content features Complainant’s trademarks, goods identical to those offered by Complainant under its trademarks, and suggests that Respondent is related to Complainant. Moreover, Complainant cites the inclusion of links to third party websites featuring goods offered by Complainant’s competitors in the website’s content as evidence of Respondent’s bad faith, and notes that the disputed domain name could not have been registered by Respondent in good faith given the significant amount of advertising and sales of Complainant’s products under its BOTTEGA VENETA trademark throughout the world. A further claim of bad faith is set forth by Complainant based upon alleged false WhoIs contact information provided by Respondent. Specifically, Complainant maintains that the WhoIs contact information associated with the disputed domain name is not associated with a legitimate postal address. Finally, Complainant notes that it sent cease and desist letters to Respondent via email but did not receive replies to its complaints regarding the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language.
The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. The content featured on the website at the disputed domain name is displayed in the English language. This demonstrates that Respondent has a working knowledge of this language. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay. B. Identical or Confusingly Similar
Complainant has provided significant evidence of its promotion and public awareness of its products sold under the BOTTEGA VENETA brand, including copies of advertisements featured in widely circulated publications, copies of webpages featuring its trademarks and statistics regarding traffic to these webpages, and details regarding its operation of boutiques devoted to its BOTTEGA VENETA brand in multiple countries worldwide. Complainant has also provided details of its registered rights in BOTTEGA VENETA as a trademark.
The disputed domain name combines Complainant’s BOTTEGA VENETA trademark with the term “outlet”. The incorporation of a trademark in its entirety into a domain name supports a finding of confusing similarity. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates Complainant’s central trademark ‘Xerox’. This is sufficient to justify the finding that the name is ‘confusingly similar’ to Complainant’s registered trademarks”). The use of the term “outlet” in the disputed domain name does nothing to dispel the likelihood of consumer confusion. This term has been cited by prior panels as non-distinctive. See, e.g., Crocs Inc. v. Alex Xie,WIPO Case No. D2011-1500 (Noting that “‘Outlet’ has the meaning of ‘discount shop’. Mere addition of the descriptive term ‘outlet’ as a suffix to Complainant’s mark in the Domain Name fails to distinguish” in a finding of confusing similarity between complainant’s CROCS trademark and the domain name ). The Panel believes that the use of the term “outlet”, which is defined as “a store, merchant, or agency selling the goods of a particular wholesaler or manufacturer”, with Complainant’s BOTTEGA VENETA trademark to form a domain name increases the likelihood of consumer confusion because its composition suggests that the domain name is connected with Complainant.
The Panel concludes that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Complainant has established rights in the BOTTEGA VENETA trademark which precede the creation of the disputed domain name. Complainant’s rights are recognized in China, the jurisdiction cited as Respondent’s country of residence.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “bottega veneta” or “bottegavenetaoutlet”. Complainant has provided prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name, and the burden of production therefore shifts to Respondent to come forward with evidence demonstrating the rights or legitimate interests it may have. However, Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The record shows that Complainant has extensively promoted the goods sold under its BOTTEGA VENETA trademark in numerous jurisdictions including China, the jurisdiction cited as Respondent’s country of residence. Complainant owns trademark rights in BOTTEGA VENETA which precede creation of the disputed domain name, and these rights are recognized in China, Respondent’s country of residence. Moreover, the record indicates that Complainant operates boutiques in China to promote and sell its products under the BOTTEGA VENETA trademark. Given the extensive promotion of products by Complainant using its BOTTEGA VENETA trademark, the extent of Complainant’s activities in China, and Complainant’s prior trademark rights in China, it is clear to the Panel that Respondent was likely aware of Complainant or should have known of Complainant when registering the disputed domain name.
The record shows that the content of the website at the disputed domain name has featured Complainant’s BOTTEGA VENETA trademark and has advertised goods which appear identical to those provided by Complainant under its BOTTEGA VENETA trademark. Moreover, the content has suggested a connection between the disputed domain name and Complainant, including a copyright line reading “© Bottega Veneta”. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the disputed domain name which is subject of the Complaint based upon a bona fide intent to offer goods or services distinctive from those provided by Complainant under its BOTTEGA VENETA trademark. Moreover, the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain names illustrates an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Further, it is clear from the record that Respondent provided false contact information when registering the disputed domain name. Specifically, Respondent identified “dsfsgdfhsdhh, dsfsgdfhsdhh, aerawrewfr, WG, 876345” as its contact address, details of which cannot be traced to a physical location. The provision of false contact details when registering a domain name has been cited by prior UDRP panels as evidence of bad faith. See, e.g., Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 and Chanel v. 1,WIPO Case No. D2003-0218.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: May 21, 2012
Full & Egal Universal Law Academy