The Complainant is Bulgari S.p.A., Italy, represented by Safenames Ltd., United Kingdom.
The Respondent is 王先生 (Wang Xian Sheng), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 27 and 28, 2021, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 28, 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 in English on October 29, 2021.
On October 28, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 29, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2021.
The Center appointed Francine Tan as the sole panelist in this matter on November 29, 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 states that it is an Italian company which was founded in 1884. It operates in the luxury goods and hotel markets and is particularly known for its high-end jewelry, including watches, rings, necklaces and fragrance products. It is headquartered in Rome, Italy and opened its first international locations in New York, Paris, Geneva, and Monte Carlo in the 1970s. Today, the Complainant has more than 230 retail locations worldwide.
The Complainant states that its BVLGARI trade mark is derived from the Italianized version of the founder’s surname name, “Voulgaris”. The Complainant’s trade mark is both written as BVLGARI in classic Latin alphabet and BULGARI in modern alphabet. Both are often used interchangeably but are traditionally intended for the following purposes: BULGARI is used in relation to the company name “Bulgari S.p.A” whilst BVLGARI corresponds to the brand name.
The Complainant registered the domain name of its official website
The Complainant has devoted, and continues to devote, substantial resources in advertising and marketing its brand. The BVLGARI trade mark is advertised globally, with promotional videos, billboards and other sources of marketing material to further promote its high-end jewelry and accessories. The BVLGARI trade mark and its products have been used by many celebrities (e.g., Leighton Meester, Eva Mendes, Anne Hathaway, Isla Fisher and Jessica Alba) at high profile events such as the Oscars and Premieres. The Complainant has also operated several hotels since 2001 under the BVLGARI trade mark in major locations such as London, Beijing, Milan, Bali and Dubai.
The Complainant owns registrations for the BVLGARI trade mark in many countries around the world. It owns, inter alia, the following trade mark registrations for BVLGARI:
(i) United States of America Trade Mark Registration No. 1,694,380, registered on June 16, 1992;
(ii) Canadian Trade Mark Registration No. TMA312178, registered on March 14, 1986;
(iii) Italian Trade Mark Registration No. 0000984147, registered on November 18, 2005;
(iv) European Union Registration No. 007138101, registered on June 3, 2009; and
(v) International Trade Mark Registration No. 494237, registered on July 5, 1985, designating China.
The disputed domain names
The Complainant states that prior to the commencement of this proceeding, the Complainant sent a cease and desist letter to the Respondent requesting for the disputed domain names to be transferred to the Complainant. The Complainant sent a follow-up email, but the Respondent never responded.
5. Parties’ Contentions A. ComplainantThe disputed domain names are confusingly similar to the Complainant’s BVLGARI trade mark which is well known around the world and in which it has rights. The first disputed domain name
The Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent has any registered or unregistered trade mark rights in the term “Bvlgari”. The Respondent has not been licensed by the Complainant to use the BVLGARI trade mark or to apply for any domain name incorporating such trade mark. There is no evidence that the Respondent’s name is “Bvlgari”, “bvlgaribagnew”, “bvlgaricojp”, or “bvlgari1”. Further, the Respondent is not making fair use of the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has been using the disputed domain names for webpages, which offer pornographic content and advertising links to sports betting and other online gambling which redirects Internet users to third-party sites. Such use of the disputed domain names does not constitute an offering of goods and services in good faith.
The disputed domain names were registered and are being used in bad faith. The Complainant’s earliest BVLGARI trade mark registration predates the creation date of the disputed domain names by at least 36 years. The Respondent would have been well aware of the Complainant’s BVLGARI trade mark at the time the disputed domain names were registered as the Complainant’s BVLGARI trade mark is synonymous with high-end and stylistically unique luxury accessories. Anyone with access to the Internet can easily find the BVLGARI trade mark on search engines. The disputed domain names were registered in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s well-known BVLGARI mark as to the source, sponsorship, affiliation or endorsement. The use of two of the disputed domain names for “pornosquatting” is evidence of bad faith. The Respondent’s failure to respond to the cease and desist letter and to provide evidence of any actual or contemplated good faith use are further evidence of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: Language of the ProceedingParagraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
The language of the Registration Agreements for the disputed domain names is Chinese. The Complainant requested that the language of the proceeding be English, as the following circumstances show that the Respondent comprehends the English language:
(i) The disputed domain names comprise English text such as “new” and “bag”.
(ii) The webpages to which the disputed domain names resolved contained English text such as “This Site Contains Adult Contents, No Entry For Less Than 18-Years-Old!”, and some redirections in the English language.
(iii) The Respondent did not respond to the Complainant’s cease and desist letter in the English language to state that he does not understand English or that he would like to receive correspondence in another language.
On the other hand, the Complainant and its representatives are based in the United Kingdom and have no knowledge of the Chinese language. Requiring the Complainant to translate the Complaint into Chinese would cause the Complainant to incur additional costs and cause unnecessary delay in the proceeding.
The Respondent did not respond on issue of the language of the proceeding.
The Panel determines that it is appropriate for English to apply as the language of the proceeding. The Panel make its determination in the spirit of fairness and justice to the Parties, being mindful for the need to ensure that the proceeding takes place expeditiously and in a cost-effective manner. The Panel is persuaded that the Respondent is likely to be conversant and/or familiar with the English language. Moreover, the Center’s communications regarding the language of the proceeding and notification of the Complaint have been sent to the Parties in both English and Chinese. On a balance of the competing interests, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Respondent would be prejudiced by a determination that English be adopted as the language of the proceeding.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Complainant has established it has rights in the BVLGARI trade mark. The BVLGARI trade mark is reproduced in its entirety in the disputed domain names and is recognizable therein. The Panel agrees that the addition of the terms “bag” and “new”, “co” and “jp”, and the numeral “1” in the respective disputed domain names do not avoid a finding of confusing similarity with the Complainant’s trade mark. The Panel also agrees that the gTLD “.com” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain names and the Complainant’s trade mark.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate InterestsThe Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s use and registrations of the BVLGARI trade mark long predate the registration dates of the disputed domain names. The Panel takes into account the fact that the BVLGARI trade mark has been recognized as well known by panels in earlier UDRP cases (see, e.g., Bulgari S.p.A. v. 王先锋 (wang xian feng), 吴斌靓 (wu bin jing), 沈晓宇 (chen xiao yu),WIPO Case No. D2021-1005; Bulgari S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergejs Grinfelds,WIPO Case No. D2021-0425). The Complainant did not license or authorize the Respondent to use the “Bvlgari” word as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “Bvlgari”, “bvlgaribagnew”, “bvlgaricojp”, or “bvlgari1”. The use of the disputed domain names which incorporate the Complainant’s famous BVLGARI trade mark for websites providing pornographic content and links to sports betting and gambling do not constitute a bona fide offering of goods or services nor legitimate noncommercial or fair use.
The Complainant’s prima facie case has not been rebutted by the Respondent. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad FaithIn view of the fame of the Complainant’s BVLGARI trade mark across the world, it is not at all plausible that the Respondent, by pure coincidence and without prior knowledge of the Complainant and its BVLGARI mark, selected the disputed domain names. Further, at the time the Complaint was filed,
“Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (see, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008, and further cases cited there). In addition, the linking of the disputed domain name with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark.”
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 names,
Francine Tan
Sole Panelist
Date: December 9, 2021