Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
Respondent is Libin Zhu, France, represented by William Shen, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2019. On November 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 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 Complainant on November 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 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 Respondent of the Complaint, and the proceedings commenced on November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. On November 8, 2019, the Center received from Respondent’s representative an email communication proposing settlement. Accordingly, the Center sent to the Parties an email regarding possible settlement on November 11, 2019. Complainant did not comment on the latter email and Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to the panel appointment stage on November 28, 2019. The Center appointed Peter Wild as the sole panelist in this matter on December 4, 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 Complainant is an Italian company founded in 1884 which operates in the luxury goods and hotel markets, and is particularly known for its high-end jewellery. Complainant is the owner of the International trademark BVLGARI, registered on July 5, 1985 with the registration No. 494237. The Disputed Domain Name was registered on August 13, 2019, and it currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant shows an international portfolio of trademark protection for BVLGARI, most of the trademarks clearly predating the registration of the Disputed Domain Name. According to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s trademark BVLGARI as it is included in its entirety. The generic Top-Level Domain (“gTLD”) “.app” does not influence the overall impression and is irrelevant for recognizing the identity of the Disputed Domain Name. Complainant furthermore claims that Respondent has no rights or legitimate interests in the term BVLGARI and that the Disputed Domain Name has been registered and used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions in substance, but its representative only sent an email dated November 8, 2019, stating among other that he “…respect(s) all rights that your client Complainant is owner of the well-known trademark BVLGARI in many countries, going back several decades. Respondent appears to acknowledge these rights in the email of November 8, 2019. Previous UDRP decisions have confirmed that BVLGARI is a well-known trademark. In addition, a number of previous UDRP panels confirmed Complainant’s rights. See most recently Bulgari S.p.A. v. Stefan Paraniac,WIPO Case No. D2019-2018. The Disputed Domain Name contains, in its entirety and prominently and without a further element on the level of Second-Level Domain, Complainant’s trademark BVLGARI. The added gTLD “.app” does not, according to numerous previous UDRP decisions, prevent a finding of confusing similarity between the Disputed Domain Name and Complainant’s trademark. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Section 1.7 provides that “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, […], the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” In line with this, the Panel decides that Complainant has rights in the trademark BVLGARI and that the Disputed Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. There is no reason to believe that Respondent’s name somehow corresponds with the Disputed Domain Name and Respondent does not appear to have any trademark rights associated with the term “bvlgari”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1596. Respondent is not identified in the WhoIs database as “bvlgari”. Previous UDRP decisions have held that a respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that Respondent is not commonly known by the Disputed Domain Name. According to Complainant, Respondent is not affiliated with nor authorized by Complainant in any way to use the trademark and there is no other plausible reason for registration of the Disputed Domain Name than to take advantage of the goodwill and reputation associated with the trademark BVLGARI. Furthermore, the Disputed Domain Name does not point to any active page which would indicate that Respondent did make any legitimate or bona fide use of Disputed Domain Name since its registration. Based on these facts, the Panel holds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith Complainant’s trademark BVLGARI has been found to be well-known by previous UDRP decisions, see section A above. Given the distinctiveness of Complainant’s trademarks and reputation at the time of the registration of the Disputed Domain Name, it is reasonable to infer that Respondent has registered the Disputed Domain Name with full knowledge of Complainant’s trademarks, constituting opportunistic bad faith. The Panel finds it hard to see any other explanation than Respondent knew Complainant’s well-known trademark. See Ferrari S.p.A v. American Entertainment Group Inc,WIPO Case No. D2004-0673 and Revlon Consumer Products Corporation v. Terry Baumer,WIPO Case No. D2011-1051. The fact that Respondent did not react to Complainant’s cease and desist letter is a further element which previous UDRP panels have seen as an indication of bad faith registration, see Facebook, Inc. and Instagram, LLC v. C W / c w, c w,WIPO Case No. D2018-1159. In addition, Respondent, in his representative’s email of November 8, 2019, expressly indicated that “…respect(s) all the rights that your client BVLGARI small enjoy according to the trademark they own”. This is a further indication that Respondent is fully aware of Complainant’s rights. Furthermore, the Disputed Domain Name points to no active page which would indicate any legitimate and good faith use. Passive use has repeatedly been held to be bad faith use by previous UDRP panels, if certain circumstances are present. In the case at hand, the selection of the Disputed Domain Name appears clearly to be connected to Complainant’s trademark; such use by someone with no affiliation with Complainant strongly suggests opportunistic bad faith, see Singapore Airlines Ltd. v. European Travel Network,WIPO Case No. D2000-0641; and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798, where the panel also highlighted the fact that Complainant’s mark predated Respondent’s registration of the domain name, which is also true in the current case. Complainant contends that Respondent has not demonstrated any activity in respect of the Disputed Domain Name, in spite of having received a cease and desist letter; nor did Respondent submit any such claims in the present procedure. It is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. For these reasons, the Panel concludes that Respondent has registered and is using the Disputed Domain Name 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 Disputed Domain Name Peter Wild
Sole Panelist
Date: December 12, 2019
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