WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta International S.A.R.L. v. PrivacyProtect.org and henli, luo xiaojie
Case No. D2012-0715
1. The Parties
The Complainant is Bottega Veneta International S.A.R.L. of Luxembourg, Luxembourg, represented by Studio Barbero, Italy.
The Respondent is PrivacyProtect.org of Australia and henli, luo xiaojie of Putian, Fujian, China.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <bottegavenetaoutlet.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2012. On April 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2012, 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 April 16, 2012 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 amendment to the Complaint on April 19, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 21, 2012. 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 Bottega Veneta International S.A.R.L., a company established since the mid-60s in the fashion business, with special attention to artisanal leather goods. Since the beginning of its operations the Complainant does business under the trademark and name BOTTEGA VENETA, which is Italian for “Venetian atelier”. This mark currently identifies luxury leather and fashion goods, having its renown and fame reached the whole world over.
The trademark BOTTEGA VENETA is the object of several registrations throughout the world, the oldest one dating back to 1975, that is, almost 40 years ago, as state the copies attached as Annexes 3.1 to 3.6 of the Complaint.
The Complainant holds over 100 domain name registrations, all of them formed by its mark BOTTEGA VENETA. It is important to note that among these domains there are some formed by the mark BOTTEGA VENETA and comprising several different top level domains. Proofs of these registrations are given in Annex 5 of the Complaint.
The evidence presented shows that the trademark BOTTEGA VENETA is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6 bis of the Paris Convention.
In sum, the Complainant shows evidence of substantial goodwill and name recognition in the expression “Bottega Veneta”, based on intensive use on a long term basis.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <bottegavenetaoutlet.net> contains its worldwide known trademark BOTTEGA VENETA.
The Complainant has obtained registrations for the trademark BOTTEGA VENETA throughout the world, as well as over 100 domain names formed by this mark, as stated above.
The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply for any kind of domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, the disputed domain name was originally directed to a website featuring the Complainant’s trademark and advertising and selling goods under that mark, as well as under marks owned by competitors to the Complainant, such as HERMES and JUICY COUTURE, as states Annex 7.1 of the Complaint.
Before starting this proceeding, the Complainant tried to contact the Respondent through a cease and desist letter, in an attempt to obtain the voluntary transfer of the disputed domain name to its name. Since the address provided by the Respondent to the previous registrar was false or incomplete, the letter was then addressed to the email indicated in the WhoIs database. No response was ever received to this first letter.
The Respondent has then sent an inaccurate data report to the previous Registrar. The disputed domain name was then suspended, but still directed to the same website.
The Complainant addressed again the cease and desist letter to the same email address. The letter was once again ignored.
The disputed domain name was deactivated and in parallel the data for the Respondent were hidden by a privacy shield of PrivacyProtect.org. From this point on the Complainant tried several times to contact the Respondent using the online system provided by PrivacyProtect.org, but no response was ever received.
The absence of any possible contact to reach a settlement led to the filing of this Complaint, according to the UDRP proceeding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. the 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 to the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark BOTTEGA VENETA, which is registered in several countries and clearly used regularly throughout the world.
Further, the Panel finds that the disputed domain name <bottegavenetaoutlet.net> is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in it. Moreover, the disputed domain name incorporates entirely the mark BOTTEGA VENETA by merely adding the word “outlet”, which is clearly linked to the retail fashion business. As further discussed below, this fact can be considered as an attempt to lead the consumers to confusion.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate Interests
Given the clear evidence that the BOTTEGA VENETA trademark is widely known, the fact that the goods are sold under this mark throughout the world as well as the undeniable link between that mark and the Complainant, the Panel finds that the Complainant has established a prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Hence, the Respondent cannot claim to have been using the trademark not knowing the Complainant’s rights to it. Besides, as shows the Annex 7.1 of the Complaint, when active, the disputed domain name led to a webpage that bore the Complainant’s mark and goods, as well as goods bearing marks of competitors for the Complainant, apparently sold by the Respondent. This, among other facts such as the decision to hide the data under a privacy shield once contacted by the Complainant, shows that the Respondent’s interests cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
It is the Panel’s opinion that the Respondent has registered the disputed domain name <bottegavenetaoutlet.net> with the purpose of taking advantage of the renown of the Complainant’s mark. The fact that the word “outlet” is commonly used in the fashion business to identify a discount sale of renown trademarks supports this supposition.
Further, the Respondent was previously using the disputed domain name to identify a website where various products were offered for sale, including those from the Complainant, in a clear act of bad faith. The Respondent appears to be doing so for the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant and its mark.
The fact that the Respondent expressly decided to use a privacy shield just after two cease and desist letters were sent and the domain was suspended by the Registrar is also an element leading to bad faith. This behavior has been considered as a clear evidence of bad faith in registering and using a domain name in several previous disputes.
The Panel finds that, for the reasons mentioned above, the Respondent obtained the registration and has been using the disputed domain name in bad faith.
The Panel, hence, finds present the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bottegavenetaoutlet.net> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: June 4, 2012