The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Therese Laube, United States of America. 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 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 13, 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 November 14, 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 November 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019. The Center appointed Gregor Vos as the sole panelist in this matter on December 26, 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 an Italian Company that operates in luxury goods and hotels. It is established in 1884. The Complainant is the owner of inter alia the following trademarks: - International Trademark registration No. 452694 for the word mark BULGARI registered on May 15, 1980 (hereinafter: the “Trademark”); - International Trademark registration No. 494237 for the word mark BVLGARI registered on July 5, 1985; and - European Union Trademark registration No. 007138101 for the word mark BVLGARI registered on June 3, 2009. In addition to these Trademarks, the Complainant owns the domain name The Respondent seems to be a Minnesota based individual. The Domain Name resolves to a webpage displaying the message: “Forbidden – You don’t have permission to access / on this server.” 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to the BULGARI Trademark. The Complainant further argues that the Trademark is a well-known trademark and that the Domain Name reproduces this Trademark in its entirety followed by “-it”. The dominant feature of the Domain Name would therefore be the Trademark. The generic Top-Level Domain (“gTLD”) “.com” could be disregarded according to the Complainant. Furthermore, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant argues that it appears that there are no predating rights of the Respondent. Further, the Complainant raises that the Respondent is not commonly known by the Domain Name, that the Respondent is not affiliated with the Complainant or authorized by the Complainant to use the Domain Name or to use the Trademark. Also, the Respondent would not have a legitimate interest. The Domain Name is held passively by the Respondent, as the website merely displays the message: “Forbidden – You don’t have permission to access / on this server.” According to the Complainant, there seems to be no indication that the Respondent will offer any goods or services by the term “Bulgari” or “bulgari-it”. Finally, the Complainant asserts that the Domain Name has been registered and used in bad faith. The Complainant argues that the Respondent knew or should have known the Trademark, especially since it concerns a well-known trademark. The Claimant also argues that the Respondent did not reply to its cease and desist letter, which would infer bad faith in itself. Furthermore, the Complainant submits further evidence that a pattern of bad faith would exist. This pattern would consist of the registration of other domain names in bad faith by the Respondent. Also, the Complainant raises that phishing emails were sent with the email address linked to the Domain Name. Furthermore, the Domain Name is inactive and there would be no evidence of any good faith use. This would constitute the bad faith registration and use of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. In the administrative proceedings, the Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedy requested by the Complainant. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights. With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that the Complainant is registered as the owner of the Trademark, as can be seen from the submitted copies of the registrations of the Trademark. Consequently, the Panel finds that the Complainant has proven that it is the owner of the Trademark. With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, 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 for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). For the purpose of assessing confusing similarity under the Policy, the gTLD suffix (in the present case “.com”) is generally ignored in the comparison between the disputed domain name and a complainant’s trademark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). The Domain Name incorporates the Complainant’s Trademark BULGARI entirely. Additionally, “-it” is added after the Trademark. The addition may designate the country of origin of the Complainant, as “it” is the two-lettered country code for Italy. Anyhow, the addition of the term “-it” to “bulgari” in the Domain Name does not alter the fact that the Trademark is recognizable in the Domain Name. Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark. Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP is fulfilled. B. Rights or Legitimate Interests In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of proving a negative, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0). The Panel finds that the Complainant showed that there are no indications for legitimate use of the Domain Name. The Respondent is not affiliated with the Complainant and is not authorized to use the Trademark. Also, there is no evidence that the Respondent is commonly known under the Domain Name, as its name does not correspond to the Domain Name. The Complainant submitted evidence that the disputed Domain Name is currently inactive. According to the Panel, considering all the circumstances of the case, the inactivity of the Domain Name is a contra-indication for legitimate interests. There are no indications for legitimate use of the Domain Name by the Respondent, such as the bona fide offering of goods or services, or a legitimate noncommercial or fair use. Because of the inactivity, there are no further grounds that would indicate bona fide use or use that is not per se illegitimate under the UDRP. Also, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use is a factor that points towards a lack of rights or legitimate interests. Based on the above, the Panel finds that the Complainant has sufficiently set out its prima facie case. The burden of production on this element therefore shifts to the Respondent. As the Respondent has not replied to the Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled. C. Registered and Used in Bad Faith Bad faith under paragraph 4(a)(iii) of the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. The mere registration of a domain name that is confusingly similar to a famous trademark by an unaffiliated entity creates a presumption of bad faith (see section 3.1.4, WIPO Overview 3.0). The Trademark is a well-known trademark and the Domain Name is confusingly similar to the Trademark, as explained under section 6.A above. As the Complainant argued, the Respondent is unaffiliated to the Complainant. Furthermore, the Respondent lacks rights or legitimate interests in the Domain Name. The fact that the Trademark is widely known also constitutes that the Respondent knew or should have known that its registration would be confusingly similar to the Trademark. 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 WIPO Overview 3.0, section 3.1.4; Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225). There is no evidence on record showing that the Domain Name has been actively used. However, considering the totality of the circumstances in this case, the non-use of the Domain Name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Furthermore, the Complaint proved that an email server has been configured on the Domain Name and that a serious risk exists that the Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with the Complainant. Considering the circumstances of this matter, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith. Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled. 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 Domain Name Gregor Vos
Sole Panelist
Date: January 14, 2020
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