WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta International S.A.R.L. v. ks system / ks sysem
Case No. D2011-1343
1. The Parties
The Complainant is Bottega Veneta International S.A.R.L. of Luxembourg, represented by Studio Barbero, Italy.
The Respondent is ks system / ks sysem of Osaka, Japan.
2. The Domain Names and Registrar
The disputed domain names <bottegaveneta-select.com> and <bottegaveneta-style.net> are registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 8, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On August 9, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on September 9, 2011. 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. The Complainant has numerous trademark registrations for the trademark BOTEGA VENETA, including a WIPO registration dating to 1975 designating Japan and covering classes 6, 11, 14, 16, 18, 20, 21 and 25 as several domestic Japanese trademark registrations. The Complainant had revenue of EUR 510 Million in 2010 of which about EUR123 million was generated in Japan.
The disputed domain names <bottegaveneta-select.com> and <bottegaveneta-style.net> were registered by Respondent, on November 19, 2007 and on July 9, 2008, respectively.
The disputed domain names have been and currently are redirected to websites in Japanese language where users can find descriptions and images of Complainant’s products and several banners and sponsored links to Respondent and third party’s websites displaying many other fashion brands such as “Miu Miu”, “Vivienne Westwood” and “Kate Spade”.
The Complainant sent cease and desist letters in 2009 and followed up in 2010. The Complainant monitored the website to see if the Respondent would renew the disputed domain names. The Respondent did renew the disputed domain names and accordingly, the Complainant has now brought these proceedings.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends the disputed domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights. The disputed domain names incorporate the whole of Complainant’s BOTTEGA VENETA trademark. The fact that the disputed domain names include the non- distinctive elements “style”, “select” and the hyphen “-”, does not affect the confusing similarity. It is a well-established principle that a domain name that wholly incorporates a trademark, is found to be confusingly similar for purposes of the Policy, despite the fact that the domain name may also contain a descriptive or generic term. Furthermore, in the present case, the generic terms “style” and “select” are particularly apt to increase the likelihood of confusion and induce Internet uses to believe that there is an association with Complainant.
No rights or legitimate interests
Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use Complainant’s trademark, nor is the Respondent commonly known by the disputed domain names as an individual, business, or other organization, and “Bottega Veneta” is not the family name of the Respondent.
Respondent has not provided Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. The disputed domain names pointed, and are currently pointing, to websites on which images of Complainant’s products are displayed, along with numerous banners and sponsored links which redirect users to Respondent’ s websites and to third party websites on which various branded products are offered for sale.
It is apparent that Respondent’s use can be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names. Such wilful conduct clearly demonstrates, to the contrary, that Respondent did not intend to use the disputed domain names in connection with any legitimate purpose, since Respondent has been exploiting the reputation of Complainant and its well known trademark to generate traffic to its web sites and to other on line locations, deriving profits from the sponsored links published therein.
Registered and used in bad faith
In light of the intensive use of the trademark BOTTEGA VENETA since as early as mid-1960s, the amount of advertising and sales of Complainant’s products worldwide and also in Japan, where Respondent is apparently based, Respondent could not have possibly ignored the existence of Complainant’ trademark, confusingly similar to the disputed domain names, at the time of their registration..
With regard to the bad faith use, as mentioned in the paragraphs above, the disputed domain names are currently linked the web pages where Internet users can find a number of banners and sponsored links to other websites.
The use of the disputed domain names, confusingly similar to Complainant’s trademark, for advertising and linking to other websites, presumably in exchange for pay- per-click revenue, is itself evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a very simple case of clear trademark hijacking for the purposes of commercial gain which the UDRP was designed to stop.
A. Identical or Confusingly Similar
The disputed domain names <bottegaveneta-select.com> and <bottegaveneta-style.net> contain the Complainants registered trademark in full and only differ by the addition of the words “select” and “style”. The Panel agrees with the Complainant that in this case the generic terms “style” and “select” are particularly apt to increase the likelihood of confusion and induce Internet uses to believe that there is an association with Complainant.
Accordingly, the Panel determines the disputed domain names are identical or confusingly similar to the Complainant’s registered trademark rights.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the websites at the disputed domain names where the Complainant’s trademark features prominently and contain links to other commercial websites make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in Paragraph 4(c) of the Policy, which sets out how a Respondent can prove its rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names were registered in bad faith and are being used in bad faith.
This case clearly falls with Paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(…) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bottegaveneta-select.com> and <bottegaveneta-style.net>, be transferred to the Complainant.
Dated: September 23, 2011