WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Borbonese S.p.A v. Qing Xia Huang

Case No. D2018-1651

1. The Parties

The Complainant is Borbonese S.p.A of Milan, Italy, represented by Laura Turini, Italy.

The Respondent is Qing Xia Huang of Putian, China.

2. The Domain Name and Registrar

The disputed domain name <negozioborbonese.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2018.

The Center appointed David Stone as the sole panelist in this matter on September 4, 2018. 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 a company incorporated in Italy. Founded in 1910 as a bag, jewellery and accessories label, the Complainant is a historic Made-in-Italy brand and prides itself on producing products expressing both class and elegance.

The Complainant is the registered owner of a number of active International trade marks comprising the word “Borbonese” (the “BORBONESE Marks”). These include the following trademarks, all of which designate China:

- BORBONESE: international registration number 639614, registered on July 4, 1995 for Nice classes 3, 18 and 25;

- BORBONESE: international registration number 786357, registered on July 12, 2002 in Nice classes 3, 9, 14, 18 and 25; and

- BORBONESE: international registration number 859144, registered on July 13, 2005 for Nice classes 8, 20, 21, 24 and 27.

The Complainant also holds two Chinese trade marks:

- BORBONESE (in Chinese characters): registration number 16698466, registered on June 7, 2016 for class 18; and

- BORBONESE (in Chinese characters): registration number 16698666, registered on June 7, 2016 for class 25.

The Complainant is also the registered holder of a number of domain names containing the word “Borbonese”. These include the following:

- <borbonese.eu>: registered on April 7, 2012;

- <borbonese.com>: registered on June 26, 2014;

- <borbonese.store>: registered on July 28, 2016; and

- <borbonese.shop>: registered on October 24, 2016.

The disputed domain name was registered on February 2, 2018 and resolves to a commercial website resembling that of the Complainant’s.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

First, the Complainant contends that the disputed domain name is confusingly similar to the BORBONESE Marks, because it incorporates “Borbonese” in full and the addition of the generic and common Italian word “negozio” (meaning “shop”) does not sufficiently distinguish the disputed domain name from the BORBONESE Marks. The disputed domain name is also highly similar to the Complainant’s domain names created prior to its registration and to the Complainant’s company name. The Complainant contends that the Respondent’s use of “Borbonese” in the disputed domain name is a form of typosquatting and therefore provides prima facie evidence of confusion. When considered together, the Complainant contends that these circumstances suggest the idea that the website to which the disputed domain name resolves is the Complainant’s official website and that the registration and use of the disputed domain name is authorised by the Complainant.

Second, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorised, licensed or otherwise allowed to use the BORBONESE Marks, nor to use any domain name incorporating these. The Respondent is not commonly known by the disputed domain name and has not acquired any legitimate rights in it, or any name corresponding to it. The Complainant notes that the website to which the disputed domain name resolves includes unauthorized reproductions of the BORBONESE Marks, promotes and sells goods and services and seems to clone the Complainant’s website “www.borbonese.com”, despite the Respondent not being one of the Complainant’s official outsourcing factories or retailers. The Complainant asserts that the Respondent is intentionally using the disputed domain name to mislead and divert consumers.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent had made no effort to identify any third party rights in the disputed domain name and was in fact aware of the Complainant’s registered trade marks and their associated reputation and commercial value. The Complainant reiterates that the Respondent deliberately included the BORBONESE Marks together with the common Italian word “negozio” in the disputed domain name to create a likelihood of confusion and false impression of association with the Complainant or its products and services. Such likelihood was increased by the unauthorized use of the Complainant’s trade marks and purported sale of the Complainant’s goods on the Respondent’s website, and had the sole aim of diverting consumers for the Respondent’s own commercial advantage. The Complainant also asserts that the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its trade marks in a corresponding domain name incorporating the generic Top-Level Domain (“gTLD”) “.com”, further evidencing the Respondent’s bad faith in using the disputed domain name. Separately, the Complainant notes that the Respondent’s practice of typosquatting is in itself evidence of bad faith registration.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns rights in the BORBONESE Marks. The disputed domain name incorporates the BORBONESE Marks in their entirety, rendering the two confusingly similar. The addition of the Italian descriptive word “negozio” does not prevent a finding of confusing similarity (see Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd., WIPO Case No. D2018-1359). See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel therefore finds that the condition in paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Respondent was commonly known by the disputed domain name or that the Respondent was making a legitimate noncommercial or fair use of the disputed domain name. The website to which the disputed domain name resolves has a similar look and feel to the Complainant’s website “www.borbonese.com” including because of the Respondent’s use of the BORBONESE Marks and product images copied from the Complainant’s website. The Panel accepts that the Complainant has not authorised the Respondent to make any use of the BORBONESE Marks, or any domain name incorporating these, and so the Respondent cannot be seen as using the disputed domain name to make a bona fide offering of goods, or for any legitimate noncommercial or fair use.

The Complainant has provided prima facie evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent’s lack of response to the Complaint indicates a failure to rebut this prima facie case (see Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, WIPO Case No. 2016-0524).

The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith can be defined as the intention to register and use a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

The unauthorized use of the Complainant’s BORBONESE Marks is clearly designed to disrupt the Complainant’s business and to mislead and divert Internet traffic for commercial gain. The addition of the descriptive Italian word “negozio” (meaning “shop”) in the disputed domain name, rather than being a distinguishing feature, creates a specific link to the business of the Complainant and is also highly similar to other domain names held by the Complainant, such as <borbonese.shop> and <borbonese.store>. This increases the likelihood of confusion that the website at the disputed domain name is associated with or sponsored by the Complainant. The disputed domain name clearly diverts Internet traffic for commercial gain.

Based on the above, the Panel concludes that the Complainant has satisfied the condition 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 name <negozioborbonese.com> be transferred to the Complainant.

David Stone
Sole Panelist
Date: September 13, 2018