WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bottega Veneta SA v. Chen Kai a.k.a. Kai Chen/ WhoIs Agent, Domain WhoIs Protection Service

Case No. D2013-0436

1. The Parties

The Complainant is Bottega Veneta SA of Cadempino, Switzerland, represented by Studio Barbero, Italy.

The Respondents are Chen Kai a.k.a. Kai Chen of Beijing, China and WhoIs Agent, Domain WhoIs Protection Service of Beijing, China.

2. The Domain Names and Registrars

The disputed domain names <borsabottegaveneta.com> and <borsebottegavenetas.com> (the “Disputed Domain Names”) are registered with Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. respectively (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 5, 2013 and March 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On March 13, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 13, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.

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 Respondents of the Complaint, and the proceedings commenced on March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. On April 2, 2013, an email communication was received from the Respondents by the Center.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 15, 2013. 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 facts pertinent to the decision in this case are:

(i) The Complainant is the owner of numerous registrations for the trademark BOTTEGA VENETA, inter alia, Community Trademark Registration No. 3899184, registered on October 4, 2005; International Trademark Registration No. 420038 and No. 835291, registered on December 16, 1975 and August 4, 2004 respectively, both designating China among other jurisdictions. These registrations cover bags, clothing, shoes, belts and other fashion accessories and other goods, in classes 18 and 25 of the Nice International Classification of goods and services for the registration of trademarks.

(ii) The Complainant has used the trademark BOTTEGA VENETA, on which the Complaint is based, on its products of leather bags and garments. The Complainant’s products are available online at the website “www.bottegaveneta.com”.

(iii) The Disputed Domain Names <borsabottegaveneta.com> and <borsebottegavenetas.com> were registered on March 22, 2012 and September 19, 2012 respectively.

(iv) The Disputed Domain Names resolve to websites that offer for sale bags and garments that include reference to the Complainant’s trademark BOTTEGA VENETA.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(i) The Disputed Domain Names are identical or confusingly similar to the registered trademark of the Complainant.

The Disputed Domain Names contain the “bottega veneta” element in its entirety, which is identical to the Complainant’s BOTTEGA VENETA trademark. The incorporation of the prefixes “borsa” (“bag” in Italian) and “borse” (“bags” in Italian) are both non-distinctive and a suffix of “s” does not assist to distinguish the Disputed Domain Name <borsebottegavenetas.com> from the Complainant’s trademark. The top-level domain “.com” is irrelevant for the purpose of determining whether the Disputed Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights.

(ii) The Respondents have no rights or legitimate interests in the Disputed Domain Names.

The Complainant has never authorized nor otherwise licensed the Respondents to use the Complainant’s trademark BOTTEGA VENETA or any other trademark, and yet the Respondents have been offering bags and garments by reference to the BOTTEGA VENETA mark for sale via the websites to which the Disputed Domain Names resolve while imitating the look and feel of the Complainant’s official website.

(iii) The Disputed Domain Names were registered and are being used in bad faith.

The Disputed Domain Names were registered and are being used for the purpose of attracting Internet users for commercial gain by offering products purporting to be BOTTEGA VENETA branded goods for sale. The fact that the websites to which the Disputed Domain Names resolve clearly try to imitate the look and feel of the Complainant’s official website, with reproducing images from the Complainant’s advertising campaigns and fashion shows, and displaying copyright notices regarding the Complainant’s trademark, creates confusion to the public as to the source, affiliation, sponsorship or endorsement of these websites and the products offered for sale thereon, thereby showing that the Respondents registered and are using the Disputed Domain Names in bad faith.

B. Respondents

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

6. Preliminary Procedural Issues

A. Language of Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreements for both of the Disputed Domain Names is Chinese. The Complainant requested, in its email dated March 13, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Complainant would be prejudiced and the proceeding would be delayed due to the extra expense and time in having the Complaint and all annexes translated into Chinese. Second, the Respondents are capable of communicating in English, which the Complainant claims to be established with the fact that the Disputed Domain Names resolve to websites in English; and also with the fact that the Respondent Chen Kai’s email response to the Complainant’s cease and desist letter is in English (as shown in Annex 13 dated on January 30, 2013 to the Complaint provided by the Complainant).

Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Panel notes the following facts:

(i) The Respondents’ websites at the Disputed Domain Names <borsabottegaveneta.com> and <borsebottegavenetas.com> appear to contain text in the English language, and appear to have been directed to Internet users worldwide rather than exclusively to Chinese speakers (as evidenced by the screen shots provided by the Complainant in Annex 8.1, 8.2.1 and 8.2.2 to the Complaint). The Panel is satisfied that the Respondents are familiar with the Complainant’s requested language.

(ii) the Respondent Chen Kai’s pre-complaint email response to the Complainant’s cease and desist letter is in English (as shown in Annex 13 dated on January 30, 2013 to the Complaint provided by the Complainant), which is a clear indication that the Respondent Chen Kai is capable of both understanding the cease and desist letter that was sent in English as well as communicating in English.

(iii) The Panel notes that all the Center’s communications to the Respondents were made in both Chinese and English and that the Respondents were given opportunities to object to the Complainant’s request that English be the language of proceedings. The Respondents were also advised that, in the absence of any response from the Respondents, the Center would proceed on the basis that the Respondents have no objection to the Complainant’s request that English be the language of proceedings. The Panel finds that the Respondents have been given fair chances to object, and has not done so.

(iv) The Panel finds that the Complainant, being an entity incorporated under the laws of Switzerland, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint and supporting Annexes.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English.

B. Consolidation of Multiple Disputed Domain Names and Respondents

Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules provides that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” It is established that the consolidation of multiple disputed domain names under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named disputed domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve. Common control have been found by UDRP panel based on commonalities, such as shared administrative or technical contacts and shared postal or email addresses in registrant information, or other circumstances in the record indicating that the respondents are related, and also, substantially identical content of the websites to which multiple disputed domain names resolve (see paragraph 4.16 of WIPO Overview 2.0; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659).

In the present case, the Panel finds that the Complainant has established that the Disputed Domain Names are subject to the common ownership or control of Chen Kai based on the following facts.

(i) the registrants of the both Disputed Domain Names were the same person who is the Respondent Chen Kai (see Annex 1.2 dated on November 11, 2012 and Annex 1.1 dated on February 28, 2013 to the Complaint provided by the Complainant); however, after a cease and desist letter sent on November 26, 2012 from the Complainant’s representative to the Respondent Chen Kai (see Annex 11 to the Complaint provided by the Complainant), the registrant of the Disputed Domain Name <borsebottegavenetas.com> was altered to the Respondent WhoIs Agent, Domain WhoIs Protection Service.

(ii) The Registrar in its email dated March 5, 2013 to the Center indicates that the registrant of the Disputed Domain Name <borsebottegavenetas.com> is the Respondent Chen Kai.

(iii) Both of the Disputed Domain Names incorporate the Complainant’s well-known BOTTEGA VENETA trademark in its entirety, and the Disputed Domain Names have been used in an identical manner with substantially identical content to attract Internet visitors to websites imitating the look and feel of the Complainant’s official one and offering sales of purported BOTTEGA VENETA products.

(iv) Both of the websites to which the Disputed Domain Names resolve have remained unvaried after the registrant of the Disputed Domain Name <borsebottegavenetas.com> was altered to the Respondent WhoIs Agent, Domain WhoIs Protection Service.

In addition, the Panel further notes that the Complainant's claims respecting each of the Disputed Domain Names involve common questions of law and fact.

In considerations of these facts, the Panel finds that consolidation of the Disputed Domain Names involving the multiple Respondents would be procedurally efficient while unnecessary duplication of time, effort and expense are avoided, thus further the fundamental objectives of the Policy.

Accordingly, the Panel concludes that the consolidation of multiple Disputed Domain Names and the multiple Respondents in this single administrative proceeding be appropriate under paragraph 3(c) or 10(e) of the Rules. The Panel will proceed to a decision on the merits of these Disputed Domain Names.

7. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it is the proprietor of the BOTTEGA VENETA trademark, which has been registered, inter alia, as Community Trademark since October 4, 2005 and as International Trademark since December 16, 1975.

It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the top-level domain (for example, “.com” and “.net”) should be disregarded. (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS) WIPO Case No. D2009-1194)

In the present case, both of the Disputed Domain Names incorporate the Complainant’s distinctive trademark BOTTEGA VENETA in its entirety, while adding only the non-distinctive descriptive element of “borsa” (“bag” in Italian) and “borse” (“bags” in Italian) as prefixes to the Disputed Domain Names <borsabottegaveneta.com> and <borsebottegavenetas.com> respectively, and the “s” as suftfix to the Disputed Domain Name <borsebottegavenetas.com>. The addition of these non-distinctive, descriptive elements are insufficient to effectively differentiate the disputed domain names from the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondents have rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondents] of the dispute, [the Respondents’] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondents] (as an individual, business, or other organization) have been commonly known by the [disputed] domain name, even if [the Respondents have] acquired no trademark or service mark rights; or

(iii) [the Respondents] are 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 trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:

“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

In the present case, the Complainant has established that it is the owner of the BOTTEGA VENETA trademark which enjoys a worldwide reputation, and that the Complainant has used its trademarks on the Internet through its website “www.bottegaveneta.com” from which it sells and delivers bags and ready-to-wear garments. The Complainant states that the Respondents have never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Names.

There is no evidence in the record to suggest that before any notice to the Respondents, the Respondents’ use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. On the contrary, the websites to which the Disputed Domain Names resolve imitate the look and feel of the Complainant’s official one and offer purported BOTTEGA VENETA bags and ready-to-wear garments with the intention of misappropriate the Complainant’s well-known trademark for achieving commercial advantages, which cannot be regarded as a bona fide offering of goods or services.

Furthermore, the Panel notes that the registrants of the Disputed Domain Names are “Chen Kai” or “Kai Chen” and “WhoIs Agent, Domain WhoIs Protection Service”, and there is no evidence in the record to suggest that the Respondents might be commonly known by a name similar to the Disputed Domain Names. There is no evidence that the Respondents have any trademark or service mark rights in the Disputed Domain Names.

Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names. Thus, the burden of production shifts to the Respondents to provide allegations or evidences demonstrating rights or legitimate interests in the Disputed Domain Names. The Respondents did not respond to the Complaint or give any explanation as to why the Disputed Domain Names were chosen and registered.

Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondents, the Panel finds it is reasonable to conclude that the Respondents deliberately chose to include the Complainant’s BOTTEGA VENETA trademark in the Disputed Domain Names for the purpose of achieving commercial advantage by misleadingly diverting consumers to the websites at the Disputed Domain Names and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, [the Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [the Respondents’] website[s] or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondents’] website[s] or location or of a product or service on [the Respondents’] website[s] or location.

In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its BOTTEGA VENETA trademark has been registered, inter alia, as Community Trademark since October 4, 2005 and as an International Trademark since December 16, 1975, and has acquired an international reputation prior to the date the Disputed Domain Names were registered. (The Disputed Domain Names <borsabottegaveneta.com> and <borsebottegavenetas.com> were registered on March 22, 2012 and September 19, 2012, respectively). The Respondents’ choice to incorporate the identical “bottega veneta” element as the primary distinctive element of both of the Disputed Domain Names suggests that the Disputed Domain Names were registered in bad faith. In addition, the fact that the Respondents imitate the look and feel of the Complainant’s official website in the websites to which the Disputed Domain Names resolve strongly suggests that the Respondents registered the Disputed Domain Names not only with the knowledge of existence and reputation of the Complainant’s trademark but also with the intention of misappropriation of the Complainant’s well-known trademark to gain the commercial advantages. The Respondents did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Names were registered in bad faith.

In relation to use in bad faith, the evidence of the content available on the websites to which the Disputed Domain Names resolve (as shown on the screen shot provided by the Complainant in Annex 8.1, 8.2.1 and 8.2.2 to the Complaint), clearly shows that the websites imitate the look and feel of the Complainant’s official website with reproductions of images taken from the Complainant’s advertising campaigns and fashion shows and as well as with a copyright notice referring to the Complainant’s trademark BOTTEGA VENETA. The websites to which the Disputed Domain Names resolve offer for sale purported BOTTEGA VENETA bags and ready-to-wear garments without any disclaimers. Even after a cease and desist letter from the Complainant’s representative to the Respondent Chen Kai, the websites to which the Disputed Domain Names resolve continue to copy the look and feel of the Complainant’s website, reproduce images taken from the Complainant’s advertising and fashion shows, and provide copyright notices that refer to the Complainant’s BOTTEGA VENETA trademark. Based on these facts in the record, the Panel finds that the Respondents are intentionally attempting to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademark. Thus, the Panel finds that the Respondents are using the Disputed Domain Names in bad faith.

In addition, while the conduct of changing the registrant of the Disputed Domain Name <borsebottegavenetas.com> from the Respondent Chen Kai to the Respondent WhoIs Agent, Domain WhoIs Protection Service after receipt of the Complainant’s cease and desist letter dated November 26, 2012 (see Annexes 11 to the Complaint provided by the Complainant) and before the commencement of the proceedings (March 19, 2013) may not technically violate paragraph 8(a) of the Policy (which prohibits disputed domain names from being transferred during a pending administrative proceeding), it is a strong indication of bad-faith registration and use under paragraph 4(b) of the Policy (See Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683).

Based on the above findings, the Panel finds that the Respondents have registered and are using the Disputed Domain Names in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

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, <borsabottegaveneta.com> and <borsebottegavenetas.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 26, 2013