World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bottega Veneta International S.A.R.L. v. Domain Administrator

Case No. D2012-0876

1. The Parties

The Complainant is Bottega Veneta International S.A.R.L., Luxembourg, represented by Studio Barbero, Italy.

The Respondent is Domain Administrator, Central Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <botegaveneta.com>, <bottegavenata.com>, <bottegaventa.com> are registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 24, 2012, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain names. On April 24, 2012, Moniker Online Services, LLC. 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 April 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2012.

The Center appointed Daniel Peña as the sole panelist in this matter on June 13, 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 was founded in the mid-1960s in Vicenza, Italy.

Bottega Veneta begun to produce artisanal leather goods, in particular, the company’s artisans developed a leather-weaving technique, called “intrecciato”, which has become the signature of the brand.

The Complainant’s commercial recognition grew, thanks to the quality of its craftsmanship and the appeal of its discreet, no-logo design.

In the 1970s the Complainant began advertising with the tag line “When your own initials are enough”, which expresses a philosophy of individuality and confidence that now applies to a range of products including women’s and men’s ready-to-wear, fine jewelry, furniture, and more.

By the early 1980s the Complainant was among the favorite brands of the international jet set.

As of 1990s, the Complainant ventured into more trend-driven fashion territory and in 2001 it was purchased by the Gucci Group.

In 2001, the brand was returned to its original identity; by removing visible logos from the brand’s products, highlighting the signature intrecciato weave prominently, and returning its focus to artisanal production, presenting his first collection, Spring-Summer 2002, to immediate critical acclaim.

Since July 2004, when the Gucci Group was acquired by the French multinational group PPR, the Complainant has introduced additions to its collection, including fine jewelry, a new watch, furniture, and home accessories, while continuing to offer an exclusive and coveted assortment of ready-to-wear, handbags, shoes, small leather goods, eyewear, luggage, and gifts.

The Complainant presented its first women’s ready-to-wear runway show in February 2005 and its first men’s runway show in June 2006. Today, ready-to-wear and furniture presentations are held in the corporate offices in Milan.

Steeped in the traditions of Italy’s master leather craftsmen and long celebrated for its extraordinary leather goods, the Complainant has emerged as one of the world’s premier luxury brands. While it continues to grow, the qualities that define it are unchanged: outstanding craftsmanship, innovative design, contemporary functionality, and the highest quality materials.

The Complainant distributes its products through a worldwide network of directly operated stores, exclusive departments and specialty stores, encompassing Europe, Asia, North and South America. Wholesale distribution in select specialty and department stores is complemented by a growing number of Bottega Veneta owned boutiques, currently located in Italy, United States, Spain, France, United Kingdom of Great Britain and Northern Ireland, Switzerland, Germany, Greece, Russia Federation, Turkey, Denmark, Sweden, the Republic of Lithuania, Ukraine, Japan, Guam, South Korea, Taiwan, Singapore, Indonesia, Philippines, Thailand, the State of Kuwait, India, Malaysia, the United Arab Emirates, the Kingdom of Saudi Arabia and China including Hong Kong.

The Complainant’s activity under the trademark BOTTEGA VENETA was and presently is strongly supported by intensive advertising campaigns worldwide, which involves the collaboration of famous artists.

In light of Complainant’s substantial investments in advertising, it’s marketing and sales worldwide, its consistent use of the trademark BOTTEGA VENETA for decades, and its impressive client base across all product groups, BOTTEGA VENETA is indisputably a well-known trademark worldwide.

The Complainant is the owner of numerous trademark registrations for BOTTEGA VENETA, including the following:

- Community Trademark Registration No. 3899184, filed on June 24, 2004 and registered on October 4, 2005, in classes 4, 8 and 21;

- International Trademark Registration No. 420038, registered on December 16, 1975 in classes 6, 11, 14, 16, 18, 20, 21 and 25;

- International Trademark Registration No. 495595, registered on August 2, 1985, in class 3;

- International Trademark Registration No. 701592, registered on October 8, 1998, in class 9;

- International Trademark Registration No. 705303, registered on October 8, 1998, in classes 3, 9, 14, 18 and 25;

- International Trademark Registration No. 835291, registered on August 4, 2004, in classes 4, 8 and 21;

- International Trademark Registration No. 947399, registered on November 27, 2007, in class 43.

The Complainant has registered numerous domain names containing the BOTTEGA VENETA trademark, including <bottegaveneta.com> registered on July 10, 1997.

The disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> were registered on August 17, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights over the trademark BOTTEGA VENETA.

The Complainant argues that it registered over 100 domain names consisting of or comprising the words BOTTEGA VENETA under several different TLDs, including <bottegaveneta.com>, in order to protect its trademark BOTTEGA VENETA on the Internet and promote its brand online.

The Complainant states that its store at “www.bottegaveneta.com” generates a significant number of visits by Internet users, as well as a substantial number of on line sales, of which an important percentage are made in Hong Kong, China place where the Respondent would be established, according to the information in the “WhoIs” database.

The Complainant emphasizes that the trademark BOTTEGA VENETA is indisputably a well-known trademark worldwide, regarding its substantial investments in advertising, marketing and sales worldwide, consistent use of the trademark for decades, as well as its impressive client base across all product groups.

The Complainant contends that the Respondent registered the disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> without authorization of the Complainant.

The Complainant submits that the disputed domain names “have been, and currently are, redirected to web pages displaying several sponsored links, including links featuring the trademark BOTTEGA VENETA”, which could generate revenues for the registrar and/or for the domain name holder.

The Complainant argues that the Respondent has tried to derive profit from the registration and use of the disputed domain name <botegaveneta.com>, bearing in mind that in an email, he mentioned his availability to transfer the Domain “for a consideration of 2000 USD”.

The Complainant contends that it sent to the Respondent two cease and desist letters, referring that the registration of the disputed domain name <botegaveneta.com> was infringing the trademark BOTTEGA VENETA, and also claiming to cease its use, among others. These letters were not answered and the Respondent did not take any action on this issue.

The Complainant states that the disputed domain names registered by the Respondent are “confusingly similar to trademarks prior registered in which the Complainant has rights”, taking into account that “the Complainant’s trademark BOTTEGA VENETA and the disputed domain names <botegaveneta.com>, <bottegaventa.com> and <bottegavenata.com> are confusingly similar since the elimination of the letters “t” and “e” in the disputed domain names <botegaveneta.com> and <bottegaventa.com>, respectively, and the substitution of the letter “e” with an “a” in <bottegavenata.com> are not sufficient to eliminate confusion”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant argues that the disputed domain names <botegaveneta.com>, <bottegaventa.com> and <bottegavenata.com> “pointed, and are currently pointing, to web sites displaying several sponsored links which redirect users to third party commercial sites on which various products are offered for sale”, so the Respondent`s use would not respond to a legitimate purpose or interest.

The Complainant contends that “the Respondent registered the disputed domain names in bad faith, bearing in mind that he could not have ignored the existence of the Complainant’s trademark”, according to its intensive use since the 1960s, the amount of advertising and the sales of Complainant’s products worldwide.

The Complainant argues that the Respondent is Mr. Lam, a person whose occupation is “to buy domains that resemble a big domain name with a typing (spelling) error in the mix to make it slightly different”, with the aim to sell it to the owners of the trademarks confused, and/or derive profits from sponsored links from merchants that sign up considering the high traffic of Internet users these pages can reach. Mr. Lam “has engaged in a pattern of registrations of domain names corresponding to trade names and marks, or variations thereof, of third parties and has been respondent in several UDRP proceedings”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name be transferred:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which the Complainant has rights.

According to the evidence, BOTTEGA VENETA is a trademark duly registered and well-known throughout the world, is owned by the Complainant, who has developed important goodwill in the BOTTEGA VENETA trademark.

In this Panel’s view the disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> are confusingly similar to the Complainants’ trademark BOTTEGA VENETA, whereas the lack or substitution of a letter, as detailed below, is not sufficient to eliminate confusion.

Herein, we highlight the minor differences between the trademark BOTTEGA VENETA and the disputed Domain Names:

BOTTEGA VENETA

botegaveneta.com

elimination of the letter “t”

BOTTEGA VENETA

bottegaventa.com

elimination of the letter “e”

BOTTEGA VENETA

bottegavenata.com

substitution of the letter “e” with an “a”

Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant bears the burden of establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain names.

However, the Panel considers relevant and necessary an examination of the Complainant's arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names.

Thereby, regarding that “the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use Complainant’s trademark BOTTEGA VENETA”, as well as the fact that the 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”, and also that the Respondent has not been commonly known by the disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> which derive from the practice of “typo squatting”, are redirected to a web site published at “www10.bottegavenata.com”, that displays several sponsored links that in turn redirect users to third party commercial sites on which various products or/and services are offered, what probably generates profits in favor of the Respondent, what cannot be considered as a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, allows this Panel find that the respondent has no rights or legitimate interests in respect of the disputed domain names.

Likewise, the Panel notes that the Complainant sent the cease and desist letters in relation to the disputed domain names, but the Respondent did not reply or take any action on this issue.

The Panel concludes from the evidence provided by the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com>. Therefore, the Panel considers that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

“(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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location”.

The registration of the disputed domain names <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> made by the Respondent, bearing in mind that it could not have reasonably ignored the existence of the Complainant’s well-known trademark BOTTEGA VENETA given its use since the 1960s, the amount of advertising and sales of Complainant’s products worldwide”, as well as its registration since 1975, and also the fact that the Respondent attempts to take advantage of “Internet users typing an incorrect address when seeking to access the Complainant’s website”, through the elimination or substitution of a letter in the disputed domain names, as well as the fact that the disputed domain names have been and currently are linked to web pages which display several sponsored links that redirect users to third party commercial sites on which various products or/and services are offered, what probably generates profits in favor of the Respondent, allow the Panel infer that the disputed domain names have been registered and are being used in bad faith.

According to the evidence, once the Respondent knew that he had been contacted by the Complainant, tried to derive profit from the registration of the disputed domain name <botegaveneta.com>, bearing in mind that it mentioned its availability to transfer this domain name for a consideration of USD 2000. This fact is a further indication that the domain name <botegaveneta.com> has been registered and used in bad faith.

Based on the above, including the Respondent’s lack of rights or legitimate interests in the Domain Names, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

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 <botegaveneta.com>, <bottegavenata.com> and <bottegaventa.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Dated: June 27, 2012

 

Explore WIPO