The Complainant is Bottega Veneta SA, Switzerland, represented by Studio Barbero S.p.A, Italy.
The Respondent is Domain Administrator, PrivacyG, United States of America (the “First Respondent”) / Gretchen Aquino, Canada (the “second respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
The Center appointed Jane Lambert as the sole panelist in this matter on July 9, 2019. 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 a well-known supplier of luxury goods. Its products include, leather goods, ladies’ wear, menswear, shoes, jewelry, fragrances, furniture and furnishings. It has over 250 shops in 43 countries including Canada. It generated sales of just under EUR 1.2 billion in 2016. It is now part of the Kering group of companies.
The Complainant has registered the words BOTTEGA VENETA as a trade mark in many countries including Canada. Its Canadian registrations include trade mark number TMA268115 whereby the trade mark BOTTEGA VENETA was registered for umbrellas, luggage, handbags, attaché cases and wallets in class 18, picture frames in class 20 and shoes, scarves, sweaters, gloves and ties in class 25 on April 16, 1982.
The First Respondent is a privacy service while the Second Respondent is its client who has given an address in Canada. The disputed domain name was registered on March 1, 2019. The disputed domain name has been used as a universal resource locator for a website bearing the Complainant’s trade mark and copies of the Complainant’s photographs of some of its products. The prices of the items that are offered for sale on that website are very much lower than those on the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant requested the transfer of the disputed domain name on the grounds that:
(i) The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant observes that the disputed domain name differs from the Complainant’s trade mark only in the omission of the letter “e” from the adjective “veneta”, the combination of the words “bottega” and “venta” as one word and the addition of the suffix “online”. Relying on section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and the Complainant submits that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
In respect of the second ground, the Complainant affirms that the Respondent is neither a licensee nor an agent of the Complainant and has no right to use its trade mark. It further states that to the best of its knowledge and belief the Respondent is not known by the words “bottega veneta”. It has found no evidence of the use or preparations for the use of the disputed domain name for the bona fide offering of goods and services. On the contrary, the use that appears to have been made of the disputed domain name is for the sale of items purporting to be the Complainant’s goods but at a substantial undervalue. The Complainant contends that any goods supplied in response to orders placed through that website are likely to be counterfeit.
With regard to the third ground, the Complainant contends that the unauthorized registration and use of a domain name that is the same as or similar to that of a trade mark with a reputation has been found to be sufficient evidence of registration and use in bad faith. In this case, the Complainant alleges that the Respondent has used the disputed domain name intentionally to attract for commercial gain to the website mentioned above by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of the products thereon. The Complainant also notes that the Second Respondent used a privacy service and that she had not responded to the Complainant’s correspondence. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s registration agreement incorporated the following provision of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The Complainant is the registered proprietor of the Canadian trade mark number TMA268115 which is mentioned above. Self-evidently, that is a trade mark in which the Complainant has rights. The disputed domain name differs from the trade mark only in the omission of the letter “e” in “veneta”, the combination of the words “bottega” and “venta” as one word and the addition of the suffix “online”. Internet users are likely to surmise that the disputed domain name is the Uniform Resource Locator (“URL”) for a website where the Complainant’s products can be purchased online. Alternatively, as “venta” is Spanish for “sale”, anyone noticing the misspelling might think that the website disputed domain name was a website where the Complainant’s surplus or discounted stock might be obtained at substantial price reductions. In either case, the disputed domain name would be confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds the second element to be present.
Section 2.1 of the WIPO Overview 3.0 notes:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Paragraph 4(c) of the Policy lists a number of circumstances which if found by the Panel to be proved shall demonstrate that the Respondent has rights or legitimate interests to the disputed domain name for purposes of Policy paragraph 4(a)(ii). The Complainant has considered all those circumstances and has found that none of them applies. It has also affirmed that it has neither licensed nor authorized the Respondent to use its trade mark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has had an opportunity to answer that case but has not done so. It follows that it has not discharged its evidential burden of proof. C. Registered and Used in Bad Faith
The Panel finds the third element to be satisfied.
Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s mark and that the Respondent has created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and also of products on that website. The Respondent used the disputed domain name to attract internet users to that website where sales were likely to be made and thus a commercial gain. It is reasonable to infer that such a result was intended.
That is sufficient for a finding of registration and use in bad faith. The Complainant’s other submissions as to the registration by the Respondent of a disputed domain name that is confusingly similar to a well-known trade mark, its use of a privacy service and its failure to acknowledge the letter before claim fortify that finding. 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.
Jane Lambert
Sole Panelist
Date: July 23, 2019
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