Complainant is Luxury Goods International (L.G.I.) SA, Switzerland, represented by Studio Barbero, Italy.
Respondent is qiang he, 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 26, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 30, 2020, 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 December 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 2, 2020. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2021. The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 26, 2021. 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 owns trademark registrations for the word mark BOTTEGA VENETA in at least the following jurisdictions: - European Union Trademark Registration No. 6809362, filed on April 4, 2008 and registered on May 31, 2010, in classes 3, 9, 11, 14, 16, 18, 20, 24 and 25; The Disputed Domain Name was registered on February 5, 2020. 5. Parties’ Contentions A. Complainant Complainant asserts that its predecessor was founded in the 1960s to produce artisanal leather goods. Its renown grew due to the quality of its craftsmanship and the appeal of its discreet, no-logo design. Complainant asserts that by the early 1980s its predecessor’s products were among the favorite brands of the international jet set, including names such as Andy Warhol. The founders of Complainant’s predecessor departed beginning in the late 1970s and the company was sold in 2001, and acquired in 2004 by Complainant. Complainant asserts that it has emerged as one of the world’s premier luxury brands, defined by outstanding craftsmanship, innovative design, contemporary functionality, and the highest quality materials. Complainant asserts that it distributes its Bottega Veneta products to a worldwide network of directly-operated stores, and to exclusive department and specialty stores, in Europe, Asia, North America and South America. These stores are complemented by Complainant’s own boutiques operating in 28 countries, including the United States of America and China. Complainant asserts that its activity under its trademark BOTTEGA VENETA is strongly supported by intensive advertising campaigns worldwide including collaboration by famous artists. Its advertising campaigns appear in international magazines with wide circulation such as Elle, Monocle, Vogue, Vanity Fair, and Harper’s Bazaar. Complainant asserts that it received its second Walpole British Luxury Award for “Best International Luxury Brand” in 2014, and in 2018 was ranked in the 13th position of the Top 30 Most Valuable Italian Brands 2018 Ranking. Complainant asserts that its annual revenues were over USD 1 million in 2017, the majority of which was generated from sales of Bottega Veneta leather products. Complainant asserts that its substantial investments in advertising and marketing, its worldwide sales, and its consistent use of the BOTTEGA VENETA mark for decades have made the mark indisputably well known worldwide, including in China where Respondent is located. Complainant asserts that the Disputed Domain Name redirects to a website displaying the BOTTEGA VENETA trademark, and promoting and offering for sale products that are counterfeits of Complainant’s Bottega Veneta products. This website displays the statement “Replica Bottega Veneta Bags Store” and, Complainant asserts, features several products described as “replica” or “fake”. Complainant asserts that no information about the person or entity operating the website is provided, except for an email address. Complainant asserts that the prices at which products on Respondent’s website are offered for sale are much cheaper than the prices at which Complainant’s Bottega Veneta products are offered. Complainant asserts that its representative served Respondent with a cease and desist letter to notify Respondent that Complainant considered the Disputed Domain Name to infringe Complainant’s trademark rights, and requested that Respondent transfer the Disputed Domain Name to Complainant. Complainant sent a short communication to the registrant on June 15, 2020, by the online form available on the public WhoIs records for the Disputed Domain Name, but received no answer. Complainant asserts that on July 13, 2020, Complainant’s representative sent a cease and desist letter to the webhost for the Disputed Domain Name requesting deactivation of the linked website. That communication too was unanswered. On November 18, 2020, Complainant’s representative sent a cease-and-desist letter to Respondent addressed to the email address on Respondent’s website. Respondent provided no formal response. This proceeding followed. Complainant asserts that the Disputed Domain Name is confusingly similar to Complainant’s BOTTEGA VENETA trademark as it incorporates the whole of Complainant’s mark, differing only by the addition of the non-distinctive element “replica“ and the Top-Level Domain (“TLD”) “.com”, neither of which serves to distinguish the Disputed Domain Name from Complainant’s trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not a licensee, authorized agent or in any other way authorized to use Complainant’s mark, and is not the owner of any trademark or service mark identical to the Disputed Domain Name, nor is there any evidence that Respondent might be commonly known by a name corresponding to the Disputed Domain Name, nor is there any evidence of Respondent’s use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use. Complainant asserts that Respondent’s use of the Disputed Domain Name to advertise and offer for sale counterfeits of Complainant’s Bottega Veneta products demonstrates that Respondent is not using the Disputed Domain Name in connection with any legitimate purpose. Complainant asserts that such use by Respondent cannot be considered a bona fide offering of goods or services because Respondent has attempted to gain from the offer for sale of these counterfeit products by free-riding on the well-known character of Complainant’s trademark and causing confusion among users as to the source or affiliation of Respondent’s website and the products offered for sale thereon. Complainant asserts that Respondent’s failure to accurately and prominently disclose its lack of relationship with Complainant causes a clear likelihood of confusion among Internet users, and vitiates any potential legitimate interest Respondent might have demonstrated in the Disputed Domain Name. Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because Complainant’s BOTTEGA VENETA trademark is well known, as has been recognized in several prior panel decisions, and Respondent’s use and incorporation of Complainant’s trademark in the Disputed Domain Name, and linking that name to a website on which “replica” and “fake” versions of Complainant’s products are sold, suggest that Respondent was well aware of Complainant’s mark, and that Respondent’s purpose in registering the Disputed Domain Name was to capitalize on the reputation of Complainant’s BOTTEGA VENETA mark by diverting Internet users seeking products under the mark to Respondent’s website. Complainant asserts that the lack of any disclaimer of affiliation with Complainant on Respondent’s website and the lack of complete contact information for the website operator further evidence Respondent’s bad faith in registering and using the Disputed Domain Name. As a result, Complainant asserts that Respondent has knowingly attempted to attract Internet users to its website for financial gain, by intentionally creating a likelihood of confusion with Complainant’s BOTTEGA VENETA mark as to the source, sponsorship, affiliation, or endorsement of its website. Finally, Complainant asserts that Respondent’s failure to reply to Complainant’s cease and desist communications are additional circumstances evidencing Respondent’s bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) [respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location. These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Findings 1. Identical or Confusingly Similar The Panel finds that the Disputed Domain Name The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. 2. Rights or Legitimate Interests Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent is not a licensee, authorized agent or in any other way authorized to use Complainant’s mark, that Respondent does not own any trademark or service mark identical to the Disputed Domain Name, that there is no evidence that Respondent might be commonly known by a name corresponding to the Disputed Domain Name, and no evidence of Respondent’s use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use. Further, Respondent has used the Disputed Domain Name to advertise and offer for sale counterfeits of Complainant’s Bottega Veneta products, demonstrating that Respondent is not using the Disputed Domain Name in connection with any legitimate purpose. Such use cannot be considered a bona fide offering of goods or services for purposes of the Policy, regardless of whether the website indicates that the products sold there are “replicas”. SeeWIPO Overview 3.0, section 2.13.1, Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu,WIPO Case No. D2012-0888 (“Indeed, the Panel would go further and say that such use of the trade mark of another [to sell counterfeit goods] in the domain name comprises positive evidence that a right or legitimate interest in the domain name could not exist”). Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See Adidas AG v. Domain Manager,WIPO Case No. D2014-1414, WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. Additionally, because Respondent failed to file a Response, and failed to respond to any of Complainant’s cease-and-desist communications, the Panel may make an inference that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221. As a result, the Panel finds that Complainant has established paragraph 4(a)(ii) of the Policy. 3. Registered and Used in Bad Faith The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(a)(iii) of the Policy, namely that Respondent has registered and used the Disputed Domain Name in bad faith because it incorporates Complainant’s well-known mark in its entirety and is linked to a website selling counterfeit versions of Complainant’s products. Although Complainant’s allegations and evidence were a sufficient basis on which to conclude that Complainant’s BOTTEGA VENETA mark is well known, the Panel notes that other panels have reached the same conclusion. See, e.g., Bottega Veneta SA v. Hon LO, Lee,WIPO Case No. D2016-0225 (BOTTEGA VENETA is “distinctive and famous”); Bottega Veneta SA v. Chen Kai a.k.a. Kai Chen/ WhoIs Agent, Domain WhoIs Protection Service,WIPO Case No. D2013-0436; Bottega Veneta International S.A.R.L. v. Domain Administrator,WIPO Case No. D2012-0876. “When a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. Tata Sons Limited v. TATA Telecom Inc/Tatatelecom.com, Mr. Singh,WIPO Case No. D2009-0671. Such is the case here, particularly because the Disputed Domain Name resolves to a website offering for sale “replicas” of Bottega Veneta products. The Panel also finds that linking the confusingly similar Disputed Domain Name to a website selling “replicas” of Complainant’s products, under Complainant’s identical mark, constitutes manifest evidence of bad faith. SeeWIPO Overview 3.0, section 3.1.4 (“given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods […] can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”). Moreover, Respondent cannot be heard to argue that its denotation of its products on its website as “fake” or “replicas” instead of counterfeits makes its use legitimate, as Respondent failed to accurately and prominently disclose its (lack of a) relationship with Complainant. SeeWIPO Overview 3.0, section 2.8.1; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See also Bottega Veneta SA v. Demp Cross,WIPO Case No. D2013-1534. The Panel finds that Complainant has established paragraph 4(a)(iii) 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, Jordan S. Weinstein
- International Trademark Registration No. 705303, registered on October 8, 1998, in classes 3, 9, 14, 18 and 25;
- International Trademark Registration No. 420038, registered on December 16, 1975, in classes 6, 11, 14, 16, 18, 20, 21 and 25, designating China and the United States of America, among other countries;
- Chinese Trademark Registration No. 11880267, registered on May 28, 2014, in class 25; and
- Chinese Trademark Registration No. 22837444, registered on February 21, 2018, in class 18.
Sole Panelist
Date: February 3, 2021
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