The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 August 5, 2021 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 August 9, 2021.
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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on September 13, 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 BackgroundThe Complainant is an Italian company founded in 1884 which operates in the luxury goods and hotel markets, and is particularly internationally known for its high-end jewellery. The Complainant has currently 230 retail locations worldwide.
The “Bvlgari” name derives from the Italianized version of the Complainant’s founder name, Sotirious Voulgaris. The Complainant’s trademark is both written and used as BVLGARI in the classic Latin alphabet and BULGARI in the modern alphabet.
The Complainant holds numerous trademark registrations for BVLGARI (and BULGARI), such as the International trademark registration number 494237 for the word BVLGARI, registered on July 5, 1985, designating many jurisdictions worldwide and covering goods in Nice classes 3, 8, 11, 14, 16, 18, 20, 21, 25 and 34.
The Complainant’s official website is available at “www.bulgari.com” and it was registered on February 17, 1998.
The disputed domain name
Before commencing the present procedure, on May 18, 2021, the Complainant sent a cease and desist letter to the Respondent asking to cease from using the disputed domain name. No response was received.
According to evidence provided in Annex 13 to the Complaint, the disputed domain name was offered for public sale for USD 999 on a third-party website.
According to Annex 14 to the Amended Complaint, the Respondent Carolina Rodrigues was involved in multiple past UDRP disputes where it was recognized that it is a serial cybersquatter. See for example Signify Health, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-1036; ZipRecruiter Inc. v. Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues,WIPO Case No. D2021-2184 and cases cited therein.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its worldwide well-known BVLGARI trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to itself.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsIn view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the BVLGARI trademark.
The disputed domain name
Numerous UDRP panels have considered that a domain name consisting of a common, obvious or intentional misspelling of a trademark (i.e., typosquatting) is considered confusingly similar for the purpose of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark BVLGARI, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark BVLGARI, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
The Respondent has used the disputed domain name in connection with a parking page displaying PPC links. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant has been using the BVLGARI mark for more than thirty years and the mark is well-known worldwide.
UDRP panels have also found the Complainants’ mark to be distinctive and well-known worldwide. See for example Bulgari S.p.A. v. Wang Xian Feng, Wu Bin Jing, Chen Xiao Yu,WIPO Case No. D2021-1005; Bulgari S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergejs Grinfelds,WIPO Case No. D2021-0425; Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi,WIPO Case No. D2019-1901; or Bulgari S.p.A. v. Libin Zhu,WIPO Case No. D2019-2694.
From the above, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name resolves to a parking page providing links to various third-party websites.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to potentially obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.
Aditionally, as mentioned above under section 4, the Respondent has been the subject of adverse decisions in numerous UDRP proceedings where it was recognized that the Respondent is a serial cybersquatter. This falls within the circumstances listed by paragraph 4(b)(ii) of the Policy and demonstrates that the Respondent has engaged in a pattern of bad faith behavior.
Paragraph 4(b)(i) of the Policy provides a circumstance of bad faith registration and use when the respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In the present matter, according to the evidence provided in the Complaint, the disputed domain name was offered for sale for USD 999. The Panel finds that this amount exceeds the out‑of‑pocket costs directly related to the disputed domain name.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Marilena Comanescu
Sole Panelist
Date: September 27, 2021