The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Alex Mercer, Philippines.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 3, 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 November 4, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 9, 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 market, and is particularly known for its jewelry including watches, rings, necklaces, and fragrance products.
The terms “Bvlgari” and “Bulgari” are often used synonymously but are traditionally intended for different purposes: “Bulgari” in relation to the company name (Bulgari S.p.A.), and “Bvlgari” in respect of the brand name.
However, the Complainant registered both BVLGARI / BULGARI trademarks in multiple jurisdictions throughout the world: BVLGARI since at least 1986 (year of registration in Canada, under the number TMA317128), and BULGARI since at least 2008 (year of registration in Italy, under the number 0000896469).
The disputed domain name was registered by the Respondent on September 6, 2021.
The Panel accessed the disputed domain name on December 18, 2021, which resolved to an e-commerce website under the title “Bvlgari Glamour” in all capital letters. Different brands of jewelry were sold there and there was no explanation on the home page about the relationship between the website and the Complainant. In the “About us” section, the website referenced the company Bellucci Jewelery, “your number one source for all things beautiful”; in the “Terms of Service” it stated that it was “not affiliated nor connected with the company Bvlgari and/or any other company”.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant holds a number of registered trademarks for BVLGARI, which covers multiple jurisdictions. Previous UDRP panels have recognized the value of the BVLGARI mark and its association with the Complainant. The disputed domain name incorporates the Complainant’s BVLGARI mark in its entirety, only proceeded by the terms “de” and “glamour”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (descriptive or otherwise) would not prevent a finding of confusing similarity under the first UDRP element. The Complainant requests that the Panel disregards the “.com” extension in the disputed domain name, as this forms a standard registration requirement.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the terms “bvlgari” or “bvlgarideglamour”. There is also no evidence of the Respondent holding unregistered rights in either of these terms. Moreover, the Respondent has not been licensed by the Complainant to use domain names which encompass the BVLGARI mark. The disputed domain name has been used to brandish the BVLGARI mark and advertise the sale of alleged counterfeit jewelry goods. This can be inferred by the fact that the advertised goods are heavily discounted, and that the disputed domain name’s site does not accurately and prominently disclose its relationship with the respective legitimate brand and trademark holders. The Complainant notes that the Respondent also advertises a number of goods on the disputed domain name’s site for no consideration whatsoever. This is not indicative of a legitimate commercial practice; it is highly likely that the Respondent is attempting to solicit the personal details of deceived Internet users. The Respondent has not been commonly known by BVLGARI or the term ‘bvlgarideglamour’. The BVLGARI mark is distinctive and not used in commerce other than by the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BVLGARI mark.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s BVLGARI trademark registrations clearly predate the disputed domain name’s 2021 registration. The BVLGARI term has become strongly associated with the Complainant’s high-end and stylistically unique luxury accessories. As a result, the Complainant has accrued substantial goodwill and international recognition in the BVLGARI mark since its 1884 establishment. It is therefore clear that the simplest degree of due diligence would have otherwise made the Respondent aware of the Complainant’s rights in the BVLGARI mark. The Respondent did not reply to the cease-and-desist letters sent by the Complainant, which may constitute further evidence of its bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BVLGARI mark. The Respondent’s use of the disputed domain name to offer commercial and competing/counterfeit third-party goods reflects its intention to capitalize on the Complainant’s BVLGARI mark for the purposes of deriving commercial gain. The Respondent’s use of the disputed domain name’s site misleadingly diverts and encourages confused visitors to purchase the advertised competing/counterfeit offerings instead. This is clear evidence of bad faith. The disclaimer text in the Terms of Service should be viewed as an admission by the Respondent that Internet users may be confused. The Respondent has engaged in a pattern of abusive conduct by registering other domain names that encompass the distinct marks of third-party luxury brands, including
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Panel has no doubt that “Bvlgari” is a term directly connected with the Complainant’s luxury products.
Annex 7 to the Complaint shows registrations of BVLGARI trademark obtained by the Complainant in multiple jurisdictions, since at least 1986.
The trademark BVLGARI is wholly encompassed within the disputed domain name, together with the suffix “de glamour” and with the gTLD extension “.com”.
Previous UDRP decisions have demonstrated that additions do not avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its famous trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a website offering jewelry for sale under the title “Bvlgari Glamour”. The website does not prominently disclose the registrant’s relationship with the trademark holder and offers for sale other jewelry brands in direct competition with the Complainant (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Moreover, notwithstanding the content’s failure to elucidate the relationship (or lack thereof), the construction of the disputed domain name, namely the addition of “de glamour” in relation to Complainant’s trademark in the field of luxury goods, is such to carry a risk of implied affiliation, contrary to the fact, further establishing Respondent’s intent to misdirect Internet users.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the 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 domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2021) the trademark BVLGARI was already famous worldwide and directly associated with the Complainant’s luxury products.
The disputed domain name encompasses the trademark BVLGARI, which is a coined term, created from a derivation of the surname of the Complainant’s founder. The addition of the sufix “de glamour” makes even clearer that the disputed domain name is related to the Complainant’s products, considering it qualifies the sophisticated aspect of the jewels offered for sale.
Therefore, the Panel concludes that it is at least very unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “bvlgarideglamour” was a mere coincidence.
Actually, the contents at the website linked to the disputed domain name – including reproductions of the Complainant’s trademark – makes clear that the Respondent intentionally attempted to attract the Complainant’s customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. This can also be assumed by the Respondent’s pattern of conduct, having already registered domain names containing other well-known brands in the same industry, such as TIFFANY and PANDORA.
The fact that other jewelry, from different manufacturers, is sold on the website at the disputed domain name, and the absence of prominent clarification that there is no connection with the Complainant or any of the manufacturers are further evidence of bad faith.
Finally, the use of a privacy service, lack of a reply from the Respondent, and of any justification for the use of such famous trademark are further evidence of bad faith in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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
Rodrigo Azevedo
Sole Panelist
Date: December 23, 2021