The Complainant is Bulgari S.p.A. of Rome, Italy, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is yang yi of Suzhou, Jiangsu Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2014. On December 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 11, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 15, 2014, the Complainant requested that English be the language of the proceeding. On December 16, 2014, the Respondent requested that Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Response was filed with the Center on January 6, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 13, 2015. 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, Bulgari S.p.A., is an Italian jewelry and luxury goods brand established in 1884. The Complainant, under the BULGARI mark markets various product lines including watches, fragrances, accessories and hotels.
The Complainant has a distribution network of about 300 stores, located in exclusive shopping areas worldwide. The Complainant opened the first hotel in 2004 and today operates several hotels in different locations in the world.
The Complainant is the owner of numerous trademark registrations for the mark BULGARI/BVLGARI around the world. For example: United States of America trademark registration no. 1184684 BULGARI, filed on November 20, 1979 and registered on January 5, 1982; European Community trademark registration no. 1510866 BVLGARI, filed on February 16, 2000 and registered on June 20, 2002; International trademark registration no. 452694 BULGARI, registered on May 15, 1980; Chinese trademark registration no. 333566 BVLGARI, filed in 1988 , and many more.
The disputed domain name was registered on September 20, 2014.
Currently, the disputed domain name resolves into an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the trademark BULGARI which has been registered in the United States for 35 years and has a worldwide registration for over 24 years.
The Complainant argues that the disputed domain name incorporates in its entirety the BULGARI mark with only a few small changes: lower case letters and the extension “.xyz”.
The Complainant argues that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that also before the notice of this disputed there has been no use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further claims that there is no evidence showing that any use was made with the disputed domain name.
The Complainant further argues that the Respondent has not been authorized or licensed to use the Complainant’s trademark nor has there been any relation that would give rise to such permission.
The Complainant further argues that there is no indication showing that the Respondent is known as “Bulgari”.
The Complainant further argues that the Respondent is not making a legitimate or fair use of the disputed domain name. The disputed domain name was inactive prior it filed the Complaint and this passive holding amounts to the Respondent’s bad faith.
The Complainant further argues that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domains name, and he has engaged in a pattern of such conduct. The Complainant argues that the Respondent had registered at last 60 other domain names containing well-known international third party trademarks.
The Complainant further indicates that the Respondent had failed to respond to two cease and desist letters sent to the Respondent’s listed email address.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent contends that the “.xyz” domain names are available since February 2014, so it is not understood by the Respondent why the Complainant did not register the disputed domain name.
The Respondent further contends that domain names and trademarks are different types of intellectual property registration systems and therefore there is no relation between them.
The Respondent further argues that the dispute domain name was not in use so it did not indicate the source of any goods or service and it will not have any relationship or conflict with the Complainant’s trademarks and brand name. The Respondent further argues that the disputed domain name is and the Complainant’s trademark in China is BVLGARI and that they are not the same.
The Respondent further argues that any entity has the right to enjoy the freedom of combination of letters or characters and the right to use it.
The Respondent further argues that in Chinese the Chinese characters have different pronunciation than the English characters. The Respondent further argues that the disputed domain name is a registering of “Bullinger Gan Day: bu ling gan ri” is Pinyin combinations for bulgari. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent requested that Chinese be the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, rather than Chinese characters;
b) The Complainant’s trademarks and the disputed domain name are composed of words which are only recognized in the English characters;
c) The Respondent provided a Response in Chinese and in English suggesting that the Respondent might be able to understand the English language;
d) Neither the Complainant nor its legal representatives have knowledge of the Chinese language; therefore, requiring the Complainant to translate the Complaint into Chinese would result in significant delay and cost to the Complainant;
e) The Respondent’s domain names portfolio shows that the Respondent registered multiple domain names containing English words and phrases.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of trademark registrations for the mark BULGARI/BVLGARI around the world. For example: United States trademark registration no. 1184684 BULGARI, filed on November 20, 1979 and registered on January 5, 1982; European Community trademark registration no. 1510866 BVLGARI, filed on February 16, 2000 and registered on June 20, 2002; International trademark registration no. 452694 BULGARI, registered on May 15, 1980; Chinese trademark registration no. 333566 BVLGARI, filed in 1988, and many more.
The disputed domain name incorporates in its entirety the Complainant’s BULGARI trademark, as a dominant element.
The disputed domain name differs from the registered BULGARI trademark by its lowercase characters and the additional generic Top-Level Domain (“gTLD”) “.xyz”.
The Panel is of the opinion that the use of lowercase is a non-significant element and does not sufficiently differentiate the disputed domain name from the registered trademark of the Complainant since domain names are not case sensitive. The use of lowercase letter does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as decided in prior UDRP cases see, e.g. “the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s marks”, Swarovski Aktiengesellschaft v. cao zhiming,WIPO Case No. D2012-1028.
The addition of the gTLD “.xyz” to the disputed domain name does not avoid confusing similarity. (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.xyz” is without legal significance in this case since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the BULGARI trademark, or a variation thereof.
The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is 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 name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark BULGARI and long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the BULGARI trademark at least since the year 1979. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute registration and use in bad faith. In this regard, the Panel is taking into consideration the Complainant’s argument and evidence that the Respondent registered more than 60 other “.xyz” domain names of other well-known trademarks, arguments that were not rejected in the Response. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively can be regarded as evidence of bad faith registration and use. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the instant case, the Complainant has provided sufficient evidence to show that its BULGARI trademark has strong reputation and is widely known. The record also shows that the Respondent provided no evidence of good faith registration or use of the disputed domain name and did not respond to two cease and desist letters sent by the Complainant. The Panel finds that the Respondent’s passive holding of the disputed domain name indicates in this case bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept”. (Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754.) See also: “The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, supra).
Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant’s BULGARI trademark, as a domain name may be considered as a clear indication of bad faith registration and use (see Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441). Another indication for the Respondent’s bad faith registration and use is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The circumstances of this case, and especially the use of the Complainant’s well-known trademark as the prominent part of the disputed domain name may also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name. Finally, the evidence shows that the Respondent has been engaged in systematic activity of registering domain names comprising trademarks of known brands and companies. Such systematic behavior is further evidence of bad faith registration and use of the disputed domain name.
In light of the Complainant’s distinctive registered trademark and the Respondent’s registration of a confusingly similar disputed domain name which is being passively held, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has established 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.
Jonathan Agmon
Sole Panelist
Date: January 27, 2015
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