The Complainant is Bulgari S.p.A, Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Contact Privacy Inc. Customer 0161623541, Canada / Douglas da Silva Marcolino, ImportsJll, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2021, 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 September 16, 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 September 20, 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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on November 4, 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 that operates in the luxury goods and hotel markets, and is particularly known for its high-end jewellery including but not limited to watches, rings, necklaces and fragrance products. The Complainant counts more than 230 retailers worldwide.
The Complainant registered the domain name of its official website, “www.bulgari.com”, on February 17, 1998 and has had a strong web presence since that date. The Complainant’s official website enables users to access all product lines: jewellery, fragrances, leather goods, accessories, watches and the bridal collection.
The Complainant, its affiliates, subsidiaries and associated companies within numerous jurisdictions own trademarks for the words BULGARI and BVLGARI whereat BVLGARI is the same word as BULGARI written in the form of the classic Latin alphabet. Such trademark registrations include but according to the Complainant are not limited to the following, which are exhibited below:
- BULGARI (no. 338663) registered on October 5, 1979 in class 14 in Australia;
- BULGARI (no. 1184684) registered on January 1, 1982 in class 14 in the United States;
- International trademark BULGARI (no. 452694) on May 15, 1980 in classes 11, 14, 20, and 21;
- BULGARI (no. 503494) registered on September 12, 1995 in class 25 in Mexico;
- BVLGARI (no. 1694380) registered on June 16, 1992 in class 18 in the United States;
- BVLGARI (no. TMA312178) registered on March 14, 1986 in classes 14, 21, and 26 in Canada;
- International trademark BVLGARI (no. 494237) July 5, 1985 in classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34;
- BVLGARI (no. 0000984147) November 18, 2005 in classes 25, 34, 38, and 41 in Italy;
- BVLGARI (no. 007138101) on June 3, 2009 in classes 35, 36, 41, and 43 in the European Union.
The Complainant has also established a social media presence and uses the trademark BULGARI to promote its services under this name, in particular on:
- Facebook: “www.facebook.com/Bulgari”
- Twitter: “www.twitter.com/bulgariofficial”
- Instagram: “www.instagram.com/bulgari/”
- Pinterest: “www.pinterest.com/bulgari/”
The Respondent registered the disputed domain name on May 10, 2021. At the time of filing the Complaint, the disputed domain name resolved to a non-functioning commercial website, which allegedly offered for sale similar products to the ones of the Complainant. At the time of the decision, the disputed domain redirects to the website “joiaswold.com”, a webshop in Portuguese that offers jewellery and a Whatsapp communication service. The functionality of the webshop cannot be verified.
A cease and desist letter was sent by the Complainant on June 17, 2021, but the Respondent did not react.
5. Parties’ Contentions A. ComplainantThe Complainant states that it holds numerous trademark registrations for the term BULGARI and BVLGARI since 1984. Previous Panels have recognized the value of this trademark. The disputed domain name incorporates the trademark in its entirety, distinct only by the term “world” and a generic top-level domain (“gTLD”). As a result, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant asserts that to its knowledge the Respondent has not registered any trademarks for the term BULGARI. Furthermore, the Respondent has not received a license from the Complainant. Currently, the disputed domain name is used for a non-functioning commercial website and a WhatsApp contact service. From this, the Complainant draws the conclusion that the Respondent is attempting to take unfair commercial advantage of the Complainant’s trademark by using a similar domain name, which is not a bona fide use. Therefore, the Complainant presented prima facie proof that the Respondent lacks rights or legitimate interests in the disputed domain name.
Furthermore, the Complainant contends that the Respondent acts in bad faith by utilizing the well-known trademark to offer its own services. The registration of the Complainant’s BULGARI and BVLGARI trademarks predate the disputed domain name registration significantly. A lack of reply to a cease and desist letter supports this assumption. Moreover, not only the registration was done in bad faith, but also the use. As the Respondent offers similar goods and chose a closely similar name, it has to be qualified as competitor, who disrupts the Complainant’s business, by creating confusion among the Internet users.
Therefore, the Complainant requests that the disputed domain name be transferred.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the Complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the Complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(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 respect of the disputed domain name, and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe consensus view among panels is that, where a Complainant holds a registered trademark in any country, this prima facie satisfies the threshold of having trademark rights for the purpose of standing to file a UDRP case (WIPO Overview 3.0, section 1.2). The Complainant provided evidence that it holds numerous trademark registrations since 1984 for BULGARI and/or BVLGARI worldwide. Consequently, the Complainant has satisfied the requirement of holding a trademark right in BULGARI.
The disputed domain name incorporates the trademark BULGARI in its entirety, followed only by the term “world” and the gTLD “.com”.
Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The term “world” does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark BULGARI. While the Panel notes that the disputed domain name reproduces the BULGARI trademark in its entirety, which would be sufficient under the first element of the Policy, when compared to the BVLGARI trademark, the Panel finds the Complainant’s trademark BVLGARI is also recognizable (as the letter “v” is replaced for a “u”). The disputed domain name for the reasons set forth in the preceding paragraph therefore also is confusingly similar to the Complainant’s trademark BVLGARI.
The Panel notes that TLDs are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy (see section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks BULGARI and BVLGARI, to which the Complainant has established trademark rights through registration.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 Panel notes that the Respondent has not filed a response in the proceedings and also did not respond to any pre-complaint communication attempts, in particular to the cease and desist letter.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never has authorized the Respondent to use its trademark as part of the disputed domain name.
The disputed domain was used to resolve to a website displaying Complainant’s BULGARI trademark and images of goods that are similar to the goods offered by the Complainant. At the time of the decision, the disputed domain name redirects to a domain that has no connection with the Complainant, but offers products for which the Complainant’s trademark is known, especially jewellery, by also showing the trademark BULGARI, the Respondent attempts to gain unfair commercial advantage from the confusing similarity. This cannot constitute bona fide use.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant has held trademark rights since 1979 and is worldwide well known in regard of jewellery, fashion and lifestyle products. To date, results on popular search engines such as Google for the term “bulgari” or “bulgari world” lists the Complainant’s brand and services as the first result. It has a social media presence on all relevant channels. The disputed domain name was registered in May 2021. Due to its strong online and offline reputation it is unlikely that the Respondent was not aware of the BULGARI trademark when registering the disputed domain name.
Section 3.1 of the WIPO Overview 3.0 states:
“bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
[…]
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.”
As stated in WIPO Overview 3.0 section 3.1.4: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. As stated above, the disputed domain name is confusingly similar to the Complainant’s trademarks and additionally the goods offered are very similar to the Complainant’s business (namely jewellery). Thus, it can only be concluded that an attempt is being made to exploit the confusion of Internet users by gaining attraction for the Respondent’s own offered products or services. This must be qualified as an intentional attempt to attract Internet users for commercial purposes.
For these reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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
Christian Gassauer-Fleissner
Sole Panelist
Date: November 18, 2021