The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Perfect Privacy, LLC / Risk Management, Riskmanagement Rcom, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On June 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 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 17, 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 18, 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 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the parties of the commencement of panel appointment.
On July 2, 2019 the Center, received an email from W Domain Compliance Team stating that the Disputed Domain Name was a Fraud Domain whose account was terminated by its Fraud Team in December of 2018. Consequently, its Risk Management Team's information is reflected as the Respondent. Further, in light of this information it requested the Center’s advise on how to proceed.
On July 9, 2019 the Center responded to W Domain Compliance Team, asking whether the Disputed Domain Name is available for registration.
W Domain Compliance Team replied the same day, stating that the account for the Disputed Domain Name was deleted due to fraud, however the domain name itself remains active in its systems and is currently under Lock until further orders are received.
The Center sent an email to the concerned registrar R, on July 12, 2019, requesting confirmation that Respondent is no longer the registrant (account deleted), and, if so, is the domain name available for registration by Complainant. The same day W Domain Compliance Team responded stating that the Disputed Domain Name was deleted due to fraud and is currently under its Risk Management account and not available for resale.
As such on July 17, 2019, the Center informed the Parties that as the due date for Response had passed (July 9, 2019), pursuant to paragraph 6 of the Rules, the Center would proceed to Panel Appointment.
The Center appointed John Swinson as the sole panelist in this matter on July 22, 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 Bulgari S.p.A, a company incorporated in Italy. The Complainant was founded in 1884 and sells high-end jewellery including, watches, rings, necklaces, and fragrance products. The Complainant also operates several hotels through a joint venture with the Luxury Group, a division of Marriott International.
The Complainant is the owner of a number of trade marks for BVLGARI and BULGARI, the earliest for BULGARI of which is International registered trade mark number 543321, registered on October 11, 1989 the (“Trade Mark”). The Complainant is also the owner of domain names which incorporate the Trade Mark, being which was registered on February 17, 1998 and which was registered on December 13, 2000.
The Formal Respondent is Perfect Privacy, LLC / Risk Management, Riskmanagement Rcom. No substantive response was received from the Respondent. The Respondent is a privacy service / the Registrar. The Disputed Domain Name was registered on December 19, 2018. The Disputed Domain Name does not currently resolve to an active website. 5. Parties’ Contentions
The Complainant makes the following submissions. A. Complainant Identical or Confusingly Similar
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “gruppo” and a hyphen. The word “gruppo” is the Italian translation of the term “group”. The addition of this word does not avoid the finding of confusing similarity. The Top-Level domain suffix “.com” is irrelevant when analyzing whether a domain name is identical or similar to a trade mark. Rights or Legitimate Interests
The Respondent does not have rights in the Disputed Domain Name because:
- The Respondent does not hold any trade mark or common law rights in or to the terms BVLGARI/BULGARI. Mere ownership of the domain name is not sufficient to show that a respondent has been commonly known by the domain name. The Respondent has never been commonly known by the Disputed Domain Name.
- The Disputed Domain Name does not resolve to any active content. This demonstrates the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services in good faith and there is no evidence of demonstrable preparations to use the domain name in good faith.
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The fact that the Disputed Domain Name does not resolve to any active content allows the Complainant to show that the Respondent is not making a fair use of the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent’s registration of the Disputed Domain Name post-dates the registration of Complainant’s Trade Mark. Due to the acclaimed reputation of the Complainant’s BVLGARI/BULGARI brand, the Respondent would have known or would have at least been aware of the Complainant’s
pre-existing rights to these terms at the time the Disputed Domain Name was registered. An Internet search would have revealed the Complainant’s business.
The addition of the Italian word “gruppo” in the Disputed Domain Name further reinforces that the Respondent knew of the Complainant, as the Complainant is an Italian brand, renowned all around the world. The term “gruppo” suggests that the Respondent tried to pass itself off as the Complainant.
The Respondent did not reply to the cease and desist letter sent by the Complainant. The Respondent was given a chance to defend their case but chose not to. This is further evidence that the Respondent registered and is using the domain name in bad faith.
The Respondent is passively holding the Disputed Domain Name since its registration, which constitutes bad faith use. The Complainant has proved that it has a strong reputation all around the world. There is no evidence that the Respondent uses or intends to use the domain name in good faith.
The Respondent was involved in a previous domain name dispute where the Panel found the Respondent had acted in bad faith. The Complainant found no evidence in that dispute that the Respondent is going by the name Risk Management RCom. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of a hyphen and the word “gruppo”. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0). In this case the term “gruppo” does not dispel such similarity.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. There is no active website associated with the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant’s brand is well known internationally, having been in operation since 1884. The Complainant has developed a significant reputation in the Trade Mark and it is famous world-wide. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by 29 years. Panels have consistently found 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 section 3.1.4 of the WIPO Overview 3.0). The Panel finds that the Disputed Domain Name was registered in bad faith.
The Disputed Domain Name does not resolve to an active website at the time of filing. The fact that the Disputed Domain Name is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003).
Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The particular circumstances of this case which lead to a conclusion of bad faith use are:
- the Trade Mark and BVLGARI brand has a strong reputation and is widely known, as evidenced by its substantial use and numerous registrations worldwide;
- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use;
- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0); and
- taking into account all of the above, it is not possible to conceive of any plausible good faith use by the Respondent.
The Respondent’s failure to respond to Complainant’s demand letter is additional evidence of bad faith (see Compagnie Generale Des Etablissements Michelin v Vaclav Novotny,WIPO Case No. D2009-1022).
According to the Registrar of Record, the account of the unknown registrant of the Disputed Domain Name was terminated due to fraud.
In light of the above and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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.
John Swinson
Sole Panelist
Date: August 5, 2019
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