The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Rong Deng (邓蓉), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 17, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 18, 2020. The Respondent did not comment on the language of the proceeding. The Center verified that 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 the Respondent of the Complaint in English and Chinese, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021. The Center appointed Joseph Simone as the sole panelist in this matter on February 16, 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 The Complainant, Bulgari S.p.A., submits that it is an Italian company founded in 1884, and it now has more than 230 retail locations worldwide operating in the luxury goods and hotel markets, and is particularly known for its high-end jewelry including but not limited to watches, rings, necklaces and fragrance products. The “bvlgari” name derives from the Italianized version of the founder’s name “Voulgaris”, and the Complainant’s trademark is both written as “bvlgari” in the classic Latin alphabet and “bulgari” in the modern alphabet, whereas “bulgari” is used in relation to the company name, whilst the term “bvlgari” relates to the brand name. The Complainant has an extensive global trademark portfolio of BVLGARI trademarks, which include the following: - International Trade Mark Registration No. 494237 BVLGARI in Classes 3, 8, 11, 14, 16, 18, 20, 21, 25 and 34, registered on July 5, 1985; The disputed domain name was registered on September 25, 2019. The Complainant asserts that, at the time the complaint was filed, the disputed domain name resolved to an active website that advertised online betting and gambling services with links redirecting users to third-party websites. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has prior rights in the BVLGARI trademarks and that it is a leading player in its field of business. The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s BVLGARI trade marks, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks. The Complainant asserts that it has not authorized the Respondent to use the BVLGARI mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also asserts that the Respondent is a domain warehouser that was found to be engaged in a pattern of registering domain names that abused trademark rights, and has established a pattern of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings In accordance with paragraph 11 of the Rules: “[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In this case, the language of the Registration Agreement for the disputed domain name is Chinese. Hence, the default language of the proceeding should be Chinese. However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting that: - The Complainant is not familiar with the Chinese language and conducting the proceeding in Chinese would result in substantial additional expense; and - The Respondent understands the English language, as it holds an extensive portfolio of domain names which comprise English dictionary terms. The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not object, or submit any further formal response. Accordingly, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. B. Identical or Confusingly Similar The Panel acknowledges that the Complainant has established rights in the BVLGARI trade mark in many territories around the world. Disregarding the “.com” gTLD, the disputed domain name incorporates the BVLGARI trade mark in its entirety, and the addition term of “int”, which is most commonly used as the abbreviation of “international”, however, this term does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. Thus, the disputed domain name should be regarded as highly similar to the Complainant’s BVLGARI trademark. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the BVLGARI trademark and in showing that the disputed domain name is identical or confusingly similar to its mark. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. The Complainant has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the case file establishes that the disputed domain name resolved at one point in time to an active website that advertised online betting and gambling services with links redirecting users to third-party websites. Thus, the Panel holds that the Complainant has established its prima facie case with sufficient evidence. The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is evident in this case. Accordingly, the Panel further finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name, given the extensive prior use and fame of these marks. When the Respondent registered the disputed domain name in September 2019, the BVLGARI trade marks had already become widely known and was directly associated with the Complainant’s activities. The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive mark BVLGARI was a mere coincidence. Ultimately, the Complainant’s registered rights in the BVLGARI trade mark for its signature products and services predate the registration date of the disputed domain name by almost five decades, and a simple search on Baidu against the term “bvlgari” would have revealed that it is a world-renowned brand. The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trade mark. In doing so, the Respondent has created a likelihood of confusion with the Complainant’s trade mark and potentially deprived the Complainant of the opportunity to offer its products to prospective customers through the disputed domain name. The Respondent’s behavior of registering trade mark-abusive domain names further reinforces the Panel’s view of establishment of bad faith. The Panel therefore finds that the disputed domain name was registered and is being used 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 Joseph Simone
- European Union Trade Mark Registration No. 007138101 BVLGARI in Classes 35, 36, 41 and 43, registered on June 3, 2009;
- Italy Trade Mark Registration No. 2001900939311 BVLGARI in Classes 25, 34, 38 and 41, registered on November 18, 2005.
Sole Panelist
Date: March 2, 2021
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