The Complainant is Bottega Veneta International S.A.R.L. of Luxembourg, Luxembourg, represented by Studio Barbero, Italy.
The Respondent is Wang Jun of Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 23, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On March 23, 2012, GoD LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on May 2, 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
The Complainant is an international leather and luxury goods company that has operated since the 1960’s under the BOTTEGA VENETA mark in numerous countries worldwide including in China. The Complainant or its group companies own various word mark registrations for its mark including Community Trademark registration number 3899184 dating from 2005 and International Trademark Registration No. 420038, since 1975 and International Trademark Registration No. 835291 which also designates China. The Complainant operates a website at registered on July 10, 1997 and , registered on March 17, 2003.
The Respondent registered the Disputed Domain Name on June 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in BOTTEGA VENETA as noted above around the world and in various countries including in China. It submits that in light of the Complainant’s submitted evidence of substantial investments in advertising, its marketing and sales worldwide, its consistent use of the trademark BOTTEGA VENETA for decades and its impressive client base across all product groups, BOTTEGA VENETA is indisputably a well-known trademark worldwide. It also says that the disputed domain name is confusingly similar to its mark and that the inclusion of a hyphen and the word “outlet” does not distinguish the disputed domain name.
The Complainant submits that it has not authorized or licensed the Respondent’s use of its BOTTEGA VENETA mark and to the best of its knowledge, the Respondent is not known by the name and neither does it supply bona fide goods or services under the mark or name. The Complainant submits that the disputed domain name pointed to a website which advertised and offered for sale products made by the Complainant as well as products of the Complainant’s competitors. The Complainant notes that the disputed domain name has been re-directed in the past months to a website in the English language at which products of various brands, such as BOTTEGA VENETA, GUCCI, BALENCIAGA, LOUIS VUITTON, CHANEL, PRADA, MIU MIU, HERMES, CARTIER, BURBERRY, CHLOE and CELINE were advertised and offered for sale but has subsequently been re-directed to a blank site. The Complainant submits that this is not legitimate non-commercial or fair use of the disputed domain name. In summary the Complainant says that it has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Considering the Complainant’s intensive use of the trademark BOTTEGA VENETA since as early as mid-1960s, the amount of advertising and sales of Complainant’s products worldwide and also in China, where the Respondent is based, the Complainant submits that the Respondent could not have possibly been unaware of the existence of the Complainant’ trademark when it registered the Disputed Domain Name. The Complainant submits that the Respondent's purpose in registering the disputed domain name, which incorporates the Complainant's BOTTEGA VENETA mark in its entirety, was to capitalize on the reputation of the Complainant's mark by diverting Internet users seeking products under the BOTTEGA VENETA mark to its own website where the Respondent offered the Complainant’s products and competing products for sale. It says that the Respondent has, therefore, knowingly attempted to attract Internet users to its website for financial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and/or the goods offered or promoted through its website under paragraph 4(b) (iv) of the Policy. The subsequent re-direction of the Ddisputed domain name to a blank page is, according to the Complainant, a passive use which in the circumstances of the earlier use only serves to compound an inference of conduct in bad faith.
The Complainant also submits that the Respondent has engaged in a pattern of registration of domain names confusingly similar to registered and well-known trademarks, including, among others, , , , , and using different names and addresses located in China but indicating the same email address disclosed in relation to the disputed domain name. As a consequence, the Complainant says that it is clear that the disputed domain name was registered and is being used in bad faith, under paragraph 4(a)(iii) of the Policy.
The Complainant further notes that the Respondent’s failure to supply a complete physical contact address and its failure to respond to the Complainant’s pre-action cease and desist letters is a further indication of registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant (or its group companies) own registered trade mark rights in the BOTTEGA VENETA word mark under Community Trademark registration number 3899184 and under International Trademark Registration No. 420038 and International Trademark Registration No. 835291, designating China, in particular. The disputed domain name wholly incorporates the Complainant’s BOTTEGA VENETA mark and the inclusion of a hyphen and of the generic word “outlet” in the disputed domain name does not, in the Panel’s view, distinguish it from the Complainant’s BOTTEGA VENETA mark. This finding is consistent with the Panel’s decision in this regard in Crocs Inc. v. Alex Xie,WIPO Case No. D2011-1500. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BOTTEGA VENETA mark and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has not authorized or licensed the Respondent’s use of its mark in the disputed domain name and it is not aware of the Respondent having used the name in trade or having made a bona fide offering of goods or services in relation to it. The fact that the disputed domain name resolved to a website featuring both the Complainant’s and its competitors’ products for sale is not a legitimate use of the Complainant’s mark by the Respondent, especially in circumstances where there is no evidence to suggest that the Respondent was ever an authorized dealer or re-seller of the Complainant’s products.
The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the circumstances that the Respondent has not filed a Response and there is nothing else before the Panel to rebut this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that the Complainant has made a very substantial use of its BOTTEGA VENETA mark in numerous countries worldwide, including in China and that as a result, a very substantial degree of renown attaches to the mark. Additionally, considering that the mark, which according to the Complainant means “Venetian atelier”, is quite distinctive in English, even if comprised of generic terms in Italian, it is not credible to believe that the Respondent registered the name in the disputed domain name in 2011 by coincidence. For the reasons set out below, the Panel is of the view that the Respondent knowingly registered the disputed domain name incorporating the Complainant’s mark.
The Respondent’s use of the disputed domain name to resolve to a website featuring for sale both the Complainant’s and its competitors’ products does, in the Panel’s view, comprise a knowing attempt to attract Internet users to its website for financial gain. The Respondent has, through its actions, intentionally created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and/or the goods offered or promoted through its website under paragraph 4(b)(iv) of the Policy. This is evidence of both registration and use in bad faith.
Further, the Complainant has submitted evidence that the Respondent has engaged in a pattern of registration of domain names confusingly similar to registered and well-known trademarks, including, amongst others, , , , , and using different names and addresses located in China but indicating the same email address disclosed in relation to the disputed domain name. This is also indicative of registration and use in bad faith under paragraph 4(a) (iii) of the Policy.
The failure of the Respondent to reply to the Complainant’s pre-action cease and desist letter of January 25, 2012, only serves to reinforce the Panel’s view of the Respondent’s bad faith, similarly to the findings of the panel in Bayerische Motoren Werke AG v. This Domain is For Sale) Joshuathan, WIPO Case No. D2012-0787.
For all the above reasons the Panel finds that the Respondent registered and used the disputed domain namein bad faith and that the Complaint succeeds under the third element of the Policy. 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 disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: May 4, 2012
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