WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta SA v. ZhaoJiafei
Case No. D2013-1556
1. The Parties
The Complainant is Bottega Veneta SA, of Cadempino, Switzerland, represented by Studio Barbero, Italy.
The Respondent is ZhaoJiafei, of Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <bottega-veneta.info> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2013, the Registrar 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 September 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2013.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 16, 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 Complainant was founded in the mid-1960s in Vicenza, Italy, to produce artisanal leather goods. Over the decades it expanded into other areas such as fine jewelry, watches, furniture, home accessories and fragrances, whilst continuing to offer ready-to-wear, handbags, shoes, small leather goods, eyewear and luggage. It distributes its products through a worldwide network of directly operated stores, exclusive departments and specialty stores encompassing Europe, Asia and North and South America.
The Complainant is the owner of numerous trademark registrations for BOTTEGA VENETA dating from at least as early as 1975. The Complainant has registered over 100 domain names consisting of or comprising the words “Bottega Veneta” under several different generic Top Level Domains (“gTLDs”) including, inter alia, “bottegaveneta.com”, registered on July 10, 1997. The Complainant’s online sales amounted to over EUR 1.7 million in the first six months of 2011.
The disputed domain name was registered on January 3, 2013. Since that time, it has resolved to various web pages featuring sponsored links to third party commercial web sites, including links to pages that refer to competitors of the Complainant and to Chinese companies in the field of handbag manufacturing. In addition, at various times the web pages to which the disputed domain name has resolved have contained the statement, “The domain name bottega-veneta.info is listed for sale. Click here to inquire about this domain name” which, when clicked, takes users to a web page at which users are invited fill out a form with their name, email address and message to inquire about the domain name.
The Complainant became aware of the disputed domain name on April 10, 2013, when it was contacted by an individual, writing from the email address […]@gmail.com, stating: “Dear Mr/Ms, We are the maneger [sic] of international domain:www.bottega-veneta.info If you are interested to buy it,please [sic] let me know. Contact us at […]@hotmail.com or via the whois of domain. Best regards, Manager”.
Several emails were sent between the Complainant and an unidentified individual at the email address given in the initial message concerning the cost of the disputed domain name, which was initially stated to be EUR 1,690 but later reduced to EUR 1,500. In addition, a cease and desist letter was sent by the Complainant to the then registrant of the disputed domain name as listed in the WhoIs records and, later, to other email addresses as listed in the WhoIs records.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to trademarks in which the Complainant has rights because: (i) it incorporates the whole of the Complainant’s BOTTEGA VENETA trademark, with the mere addition of a hyphen between the two words “Bottega” and “Veneta”, which is not a relevant distinguishing feature; and (ii) the suffix “.info” should be disregarded as being merely instrumental to the use of the Internet.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark BOTTEGA VENETA; (ii) the Respondent is not commonly known by the disputed domain name as an individual, business or other organization, and “Bottega Veneta” is not the family name of the Respondent; (iii) the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of this dispute; (iv) the disputed domain name has been used to redirect to web pages displaying several sponsored links, which generate revenues, via the pay-per-click system, to the domain name holder; (v) some of the links published make explicit reference to well-known trademarks of the Complainant’s competitors including Burberry, Hogan and Fendi, and all the links redirect users to third party commercial websites not affiliated to the Complainant; and (vi) the Respondent’s willingness to sell the disputed domain name for more than its out-of-pocket costs.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) in light of the intensive use of the trademark BOTTEGA VENETA since as early as the mid-1960s and the amount of advertising and sales of the Complainant’s products worldwide, including in China (the Respondent’s country of residence), the Respondent could not have possibly ignored the existence of the Complainant’s trademark when registering the disputed domain name; (ii) the disputed domain name has been redirected to web pages displaying several sponsored links relating to the Complainant’s competitors, making it apparent that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and of the websites linked thereto; (iii) the Respondent’s use of the disputed domain name is diverting traffic from the Complainant’s website; (iv) by redirecting the disputed domain name to web pages displaying sponsored links, the Respondent at least earns commission whenever an Internet user visits its website and clicks on one of the links; and (v) the Respondent addressed unsolicited email communications to the Complainant offering the disputed domain name for sale for amounts well in excess of the out-of-pocket costs directly related to the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark BOTTEGA VENETA, with the addition of a hyphen and the gTLD “.info”. The dominant element of the disputed domain name is the Complainant’s trademark BOTTEGA VENETA, and the addition of the hyphen and “.info” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been
authorized by the Complainant to use its BOTTEGA VENETA trademark. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to various websites containing links to other websites, none of which are affiliated with the Complainant and some of which relate to competitors of the Complainant. These links most likely generate pay-per-click revenue for the Respondent. The Respondent has provided no evidence establishing that it has trademark or other rights to the string “bottegaveneta”. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many decades after the Complainant first registered its BOTTEGA VENETA trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its BOTTEGA VENETA trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s BOTTEGA VENETA trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The Complainant has provided evidence that a person claiming to be the registrant of the disputed domain name contacted it with an offer to sell the disputed domain name for EUR 1,690. The Panel is satisfied that this establishes that the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant for a sum significantly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name – which, according to paragraph 4(b)(i) of the Policy, is evidence of registration and use of the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 name <bottega-veneta.info> be transferred to the Complainant.
Andrew F. Christie
Date: October 30, 2013