ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bottega Veneta S.r.l. v. Kexin Cai, Chengjun Yang, Unjcds Ybnjnska, Tbds Undwq, Gbsh Ybcsh, Bbdfy Ybdhw, Ynvwse Unee, and Zjfjhjj Xkosw Case No. D2023-0679 1. The Parties The Complainant is Bottega Veneta S.r.l., Italy, represented by Studio Barbero, Italy. The Respondents are Kexin Cai, China; Chengjun Yang, China; Unjcds Ybnjnska, Hong Kong, China; Tbds Undwq, Hong Kong, China; Gbsh Ybcsh, Hong Kong, China; Bbdfy Ybdhw, Hong Kong, China; Ynvwse Unee, Hong Kong, China; and Zjfjhjj Xkosw, Hong Kong, China. 2. The Domain Names and Registrars The disputed domain names, and , are registered with Dynadot, LLC; the disputed domain names, , , , , , and are registered with Name.com, Inc. (collectively the "Registrars"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2023. On February 15, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 16, 2023, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Whois Agent, Domain Protection Services, Inc. / Dynadot Privacy Service / Not Disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2023, providing the registrant and contact information for multiple underlying registrants disclosed by the Registrars, and inviting the Complainant to either amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all of the disputed domain names are under common control; and/or, to file a separate complaint for any disputed domain name for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all of the disputed domain names are under common control. The Complainant filed an amendment to the Complaint on February 17, 2023, including arguments for consolidation. page 2 The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on February 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 15, 2023. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 21, 2023. 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 is an Italian fashion company founded in the mid-1960s in Vicenza, Italy, by Michele Taddei and Renzo Zengiaro, having developed a leather-weaving technique, called "intrecciato", which has become its signature. Now being part of the multinational Kering Group it has reached revenues of approximately EUR 1.5 billion in 2021 and is frequently displayed in rankings relating to fashion and luxury brands. The Complainant owns over 400 domain names incorporating the trademark BOTTEGA VENETA or variations thereof under several different Top-Level Domains ("TLDs") (Annex 7.1 to the Complaint), including (registered on July 10, 1997) and (registered on May 21, 2002) are both registered in the name of Luxury Goods International (L.G.I.) S.A., part of the Kering Group. The Complainant's official website is available at "www.bottegaveneta.com" where the Complainant's products are available. In addition to that, the Complainant is the owner, amongst many others, of the European Union Trade mark registration No. 006809362 for the word mark BOTTEGA VENETA, filed on April 4, 2008, registered on May 31, 2010, subsequently renewed, in classes 3, 9, 11, 14, 16, 18, 20, 24, and 25. The disputed domain names are the following: Disputed Domain Names Registration Date Use of the Disputed Domain Names July 11, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. July 12, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. July 8, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. June 28, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. page 3 July 11, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. June 30, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. July 1, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. July 1, 2022 Online shop reproducing the Complainant's trademark and purportedly offering the Complainant's products at heavily discounted prices. On July 6, 2022, July 14, 2022, July 15, 2022, July 19, 2022, and September 14, 2022, the Complainant's representatives sent cease and desist letters to the Respondents, demanding them to immediately cease any use of the disputed domain names and transfer them to the Complainant (Annexes 9.1 to 9.10 to the Complaint), having also sent subsequent reminders (Annexes 9.11 to 9.19 to the Complaint), all of which remained unanswered. 5. Parties' Contentions A. Complainant The Complainant asserts to have become one of the world's premier luxury brands, being defined by outstanding craftsmanship, innovative design, contemporary functionality, and the highest quality materials. The Complainant further asserts that, in 2014, for the second time, BOTTEGA VENETA was recognized as Best International Luxury Brand at the prestigious Walpole British Luxury Awards, for being the brand with the greatest impact in terms of sales in the United Kingdom and abroad, through innovation, business, strategy and media exposure during 2013-2014, also having been ranked at the 13th position of the BrandZ™ Top 30 Most Valuable Italian Brands 2018 Ranking. According to the Complainant, it distributes its products through a worldwide network of directly operated stores, exclusive departments and specialty stores, encompassing Europe, Asia, North and South America, as well as by a growing number of boutiques owned by the Complainant, located, inter alia, in Italy, United States of America, China, France, United Kingdom, Germany, the Russian Federation, Türkiye, Japan, Hong Kong, China, the Republic of Korea, Singapore, Indonesia, Thailand, Kuwait, India, United Arab Emirates, Saudi Arabia. Under the Complainant's view, in light of the Complainant's substantial investments in advertising and marketing as well as consistent use of the trademark BOTTEGA VENETA for decades and substantial sales worldwide, its BOTTEGA VENETA trademark has indisputably become a well-known trademark worldwide. According to the Complainant, the disputed domain names are under common control given that all of the disputed domain names: i) share the same name servers (ns.cloudflare.com); ii) have been registered in a very short period of time (from June 28, 2022, to July 12, 2022); iii) share a similar naming pattern, reproducing the Complainant's well-known BOTTEGA VENETA trademark with the addition of a descriptive term; iv) are being used for the same purpose, in connection with substantially identical websites with a very similar layout and all displaying the BOTTEGA VENETA trademark and offering for sale purported BOTTEGA VENETA products at discounted prices, also depicting in most of the sections of the websites page 4 available at the disputed domain names (such as the "About Us" page - where, moreover, "Montgomery, Alabama" is indicated as location of the corporate office where the team operating all the websites is based). In addition to that, the disputed domain names have been registered using two Registrars and part of the contact information disclosed is the same in connection with the disputed domain names , , , , , and . Under the Complainant's view, the disputed domain names all incorporate the Complainant's well-known BOTTEGA VENETA trademark with the addition of the non-distinctive elements "store", "shop", "outlet", "sale", and a hyphen in one of the disputed domain names, which does not affect the confusing similarity and rather reinforce the likelihood of confusion. Regarding the absence of the Respondents' rights or legitimate interests, the Complainant argues that: i) the Respondents are not licensees, authorized agents of the Complainant or in any other way authorized to use the Complainant's trademark, specifically not being authorized to register and use the disputed domain names; ii) the Respondents are not currently and have never been known under the disputed domain names; iii) the Respondents have not provided any evidence of use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or service before or after any notice of the dispute herein, not there being any evidence that the Respondents might have used the disputed domain names in connection with a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark; iv) the Respondents have been using the disputed domain names to redirect users to websites displaying the Complainant's BOTTEGA VENETA trademarks, where purported BOTTEGA VENETA products are advertised and offered for sale at discounted prices and no disclaimer is provided as to the lack of affiliation between the Respondents' websites and the Complainant; and v) in view of the very low prices at which the purported BOTTEGA VENETA goods are being offered by the Respondents and the lack of complete and reliable information about the entity operating the Respondents' websites, the Complainant concludes that the Respondents might have engaged in the sale of counterfeit goods and wilfully indicated inaccurate and incomplete contact details to avoid being identified and prosecuted for their illegal conduct. As to the registration and use of the disputed domain names in bad faith, the Complainant asserts that: i) the Respondents could not have ignored the well-known character and the reputation of the trademark BOTTEGA VENETA, already found in several prior UDRP decisions in favour of the Complainant (Bottega Veneta SA v. Hon LO, Lee, WIPO Case No. D2016-0225; Bottega Veneta SA v. Chen Kai a.k.a. Kai Chen/ WhoIs Agent, Domain WhoIs Protection Service, WIPO Case No. D2013-0436; Bottega Veneta International S.A.R.L. v. Wang Jun, WIPO Case No. D2012-0600 and Luxury Goods International (L.G.I.) SA v. qiang he, WIPO Case No. D2020-3189) when registering the disputed domain names; ii) the fact that purported BOTTEGA VENETA products are offered for sale at the disputed domain names and the Complainant's trademark is displayed on the websites to which the disputed domain names resolve, indicates that the Respondents were fully aware of the Complainant and its trademark; and iii) the use of the disputed domain names in connection with the commercial websites described above, displaying the Complainant's trademark and offering for sale prima facie counterfeit BOTTEGA page 5 VENETA branded products, clearly indicates that the Respondents' purpose in registering and using the disputed domain names was to intentionally attempt to attract Internet users seeking the Complainant's branded products to their own websites for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of their websites and the goods offered and promoted on said website, according to paragraph 4(b)(iv) of the Policy; and iv) a further circumstance evidencing the Respondents' bad faith is the lack of reply to the Complainant's cease and desist letters and subsequent reminders sent. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names. Before turning to these questions, however, the Panel needs to address the issue of the consolidation of the multiple Respondents. A. Consolidation of Multiple Respondents The Complainant requests that this Panel accept the multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A above. The Respondents have not objected to the common control claim. In addition to that, section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") establishes that "[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the eight disputed domain names dealt with in the same proceeding given that: i) all of the disputed domain names share a common naming pattern, reproducing the Complainant's well-known BOTTEGA VENETA trademark with the addition of dictionary terms; ii) the disputed domain names were registered within a window of two weeks (from June 28, 2022 to July 12, 2022); iii) the disputed domain names resolve to substantially identical online shops with a very similar layout and all displaying the BOTTEGA VENETA trademark and offering for sale purported BOTTEGA VENETA products at heavily discounted prices, also depicting in most of the sections of the websites available at the disputed domain names with the same texts; iv) the disputed domain names share page 6 the same name servers (ns.cloudflare.com); v) the disputed domain names have been registered using two Registrars; and vi) the registrants for the disputed domain names , , , , and have the same phone number and their names appear to be fake. In view of the evidence submitted, this Panel is satisfied on balance that the disputed domain names are indeed subject to common control, and that consolidation would be fair and equitable to all Parties. B. Identical or Confusingly Similar The Complainant has established rights over the BOTTEGA VENETA trademark duly registered in various jurisdictions. The Panel finds that all of the disputed domain names reproduce the Complainant's BOTTEGA VENETA trademark in its entirety. The addition of the terms "sale", "shop", "outlet", "store", or a hyphen, does not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a "side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name" (WIPO Overview 3.0, section 1.7). For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents' rights or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondents' use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondents. In that sense, the Panel notes that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, indeed stating that the Respondents are not licensees, authorized agents of the Complainant or in any other way authorized to use the Complainant's trademark, or to register and use the disputed domain names. Also, the Respondents are not commonly known by the disputed domain names. There is no evidence showing that any trademarks registered by the Respondents correspond to the disputed domain names. Moreover, according to the evidence submitted by the Complainant, the disputed domain names are being page 7 used in connection with online shops displaying the Complainant's trademark and purportedly offering for sale BOTTEGA VENETA products at very low prices, however, no disclaimer is provided as to the lack of affiliation between the Respondents' websites and the Complainant. Further, there is no complete and reliable information about the entity operating the Respondents' websites. Considering the above, the Respondents have not used the disputed domain names for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Furthermore, the composition of the disputed domain names, wholly incorporating the Complainant's trademark with the addition of the terms, "sale", "shop", "outlet", or "store", carries a risk of implied affiliation. See section 2.5.1, WIPO Overview 3.0. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv). In view of the reproduction of the Complainant's trademark and purportedly offering the Complainant's products at the online shops available at the webpages relating to the disputed domain names, which creates a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement thereof. Furthermore, the products on the disputed domain names are offered for sale at very low prices compared to prices applied to genuine BOTTEGA VENETA products, which could indicate that the Respondents have engaged in the sale of counterfeited goods. Moreover, bad faith of the Respondents is also supported here by (i) the choice to retain privacy protection services in an attempt to conceal the Respondents' true identities; (ii) the lack of reply by the Respondents invoking any rights or legitimate interests; (iii) the lack of reply to the cease and desist letters and reminders sent prior to this proceeding; and (iv) the indication of false or incomplete information used by the Respondents for registering the disputed domain names, since the Written Notices were not delivered to the Respondents by courier service. For the reasons above, the Panel finds that the Respondents have registered and are using the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The third element of the Policy has therefore been met. 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 names, , , , , , , , and , be transferred to the Complainant. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Sole Panelist Date: April 4, 2023
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