WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta SA v. Oversee Investment Inc.
Case No. D2013-1527
1. The Parties
The Complainant is Bottega Veneta SA of Cadempino, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Oversee Investment Inc. of Cambridge, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bottegavenetaparfums.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2013. On August 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 103, 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 for the disputed domain name. 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 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent was informed that if its response was not received within that period, it would be considered in default and the Center will proceed to appoint an Administrative Panel to review the facts and to decide the case. The Respondent did not submit any response. Accordingly, on September 23, 2013, the Center notified the Respondent’s default.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on October 8, 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
From the Complaint and the various annexure to it, the Panelist has found the following facts:
The Complainant Bottega Veneta was founded in 1960 in Vicenza, Italy. Bottega Veneta means “Venetian atelier”. Initially, the Complainant was producing artisanal leather goods. Subsequently, the Complainant developed a leather-weaving technique called “intrecciato”.
In the 1990s, the Complainant ventured into more trend driven fashion areas, and in 2001, it was purchased by the Gucci Group. In 2004, Gucci Group was acquired by the French multinational group PPR (renamed KERING in June 2013). Earlier, the Complainant was dealing in handbags, shoes, small leather goods, eyewear and luggage. Thereafter, the Complainant has successfully introduced new products, such as, fine jewelry, watches, furniture, home accessories and fragrances.
The Complainant had presented its first women’s ready-to-wear runway show in February 2005 and its first men’s runway show in June 2006. Presently, ready-to-wear and furniture presentations are held in the corporate offices in Milan, Italy.
In the summer of 2006, the Complainant also opened a “Scuola della Pelletteria”, a school to train and support future generations of leather artisans.
The Complainant’s activity under the trademark BOTTEGA VENETA is strongly supported by intensive advertising campaigns worldwide, which involves the collaboration of famous artists, such as Robin Broadbent (Fall-Winter 2002/2003, Spring-Summer 2003, Spring-Summer 2004 and Fall-Winter 2004/2005), Philip-Lorca diCorcia (Spring-Summer 2005 and Fall-Winter 2005/2006), Stephen Shore (Spring-Summer 2006), Lord Snowdon (Fall-Winter 2006/2007), Tina Barney (Spring-Summer 2007), Annie Leibovitz (Fall-Winter 2007/2008), Sam Taylor-Wood (Spring-Summer 2008), Todd Eberle (Cruise 2008/2009), Nick Knight (Fall-Winter 2008-2009), Larry Sultan (Spring-Summer 2009), Steven Meisel (Fall-Winter 2009/2010), Nan Goldin (Spring-Summer 2010), Robert Longo (Fall-Winter 2010/2011) and Alex Prager (Spring-Summer 2011).
Respondent’s Identity and Activities
The Respondent did not file any reply. Hence, the Respondent’s activities are not known.
Disputed Domain Name
The disputed domain name was registered on April 10, 2012.
5. Parties Contentions
The Complainant contends that each of the elements specified in the Policy are applicable to this dispute.
In relation to the first element, the Complainant contends that it is a registered owner of the trademark BOTTEGA VENETA. In the disputed domain name, the entire trademark has been included. The Complainant is also one of the major producers of perfumes. Thus, the addition of the word “parfums” increases the likelyhood of confusion. It induces the Internet users to believe that the said domain name is associated or affiliated with the Complainant.
The trademark of the Complainant is registered in a large number of countries such as, Spain, France, United Kingdom of Great Britain and Northern Ireland, Switzerland, Germany, Greece, Russian Federation, Turkey, Denmark, Sweden, Lithuania, Ukraine, Japan, Republic of Korea, Singapore, Indonesia, Philippines, Thailand, China, Kuwait, India, Malaysia, United Arab Emirates and Saudi Arabia. Further, in most of the countries, BOTTEGA VENETA is registered in various classes, including Class 3, 4, 8, 9, 11, 14, 16, 18, 20, 21, 24 and 25.
The Complainant also owns a large number of domain names with the combination of word BOTTEGA VENETA. Only to illustrate, they are <bottegaveneta.com>; <bottegaveneta.ac>; <bottegaveneta.asia>; <bottegaveneta.ca>; <bottegaveneta.in>; < bottegaveneta.co.at>; <bottegaveneta.net>; <bottegaveneta.org>; etc. A detailed list of such domain names is annexed to the Complaint. Thus, at the time Respondent registered the disputed domain name, BOTTEGA VENETA was well known as trademark and as part of the domain names of the Complainant.
The Complainant states that the Respondent registered the disputed domain name with an intention to trade upon the immense goodwill and reputation enjoyed by the Complainant in the famous trademark BOTTEGA VENETA.
In support of its contentions, the Complainant has relied on the decisions in the cases of Bottega Veneta SA v. Chen Kai a.k.a, Kai Chen/Whols Agent, Domain Whols Protection Service, WIPO Case No. D2013-0436; Guccio Gucci S.p.A. v. Zhao Ke/Yeli/Corporate Domains, Inc. Li Ye, WIPO Case No. D2012-0357; GA Modefine S.A., Giorgio Armani S.p.A. v. Germano Armani, WIPO Case No. D2008-1793; Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170; ZINO Davidoff SA v. Yang Yong, WIPO Case No. D2013-0410; Elizabeth Arden Inc. v. Fundacion Private Whois, WIPO Case No. D2012-1590; Telecom Personal, S.A. v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; and Societe Generale and Fimat International Banque v. Lebanon Index La France DN and Ehe Khouri, WIPO Case No. D2002-6760. In these cases, it has been held that the addition of a term, such as, “group”, “parfum”, sports” etc., in the disputed domain name does nothing to distinguish the domain name from the complainant’s trademark.
In relation to second element, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the mark or name “Bottega Veneta”. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for offering goods and services. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public.
In support of its contentions, the Complainant relies on the decisions in the cases of Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, wherein it has been held that “the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name.” See also National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387; Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728, Reese v. Morgan, NAF Claim No. 917029; Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110, Sampo plc v. Tom Staver WIPO Case No. D2006-1135, Audi AG v. Dr. Alireza Fahimipour WIPO Case No. DIR2006-0003.
Regarding the third element, the Complainant contends that the main object of registering the disputed domain name <www.bottegavenetaparfums.com> by the Respondent is to mislead the general public and the customers of the Complainant.
The Complainant states that the use of a domain name that appropriates a well-known name to promote competing or infringing products or for making profit by offering to sell it cannot be considered a “bona fide offering of goods and services”.
The Complainant has further stated that the “Domain Name has been redirected to web pages displaying several sponsored links to various third party web sites. Among the links featured therein, as highlighted above and shown in Annexes 9, also links relating to the Complainant’s competitors have been featured. As a result, it is apparent that the Respondent is attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site, according to paragraph 4(b)(iv) of the Policy”.
In support of its contentions, the Complainant relies on the decisions in the cases of Bottega Veneta International S.A.R.L. v. Wang Jun, WIPO Case No. D2012-0600; Bottega Veneta International S.A.R.L. v. peng fen, WIPO Case No. D2012-0429 Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671, wherein it has been held that “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. See Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170; Guccio Gucci S.p.A. v. Zhao Ke / Yeli / Corporate Domains, Inc / Li Ye, WIPO Case No. D2012-0357, citing also Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, supra.Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622.
The Complainant also contends that the Respondent has offered for sale the domain name on “www.sedo.co.uk” for an amount of EUR 8,500. Furthermore, as aforementioned, a request of EUR 5,000 was sent to Complainant by Respondent or one of its agents and a similar request of EUR 4,500 was presented by Respondent to Complainant’s representative after receipt of a reminder of the cease and desist letter. The amounts of EUR 8,500, EUR 5,000 and EUR 4,500 are to be considered well in excess of the out-of-pocket costs directly related to the disputed domain name.
Thus, according to paragraph 4(a)(iii) of the Policy, the disputed domain name was registered and is being used in bad faith.
The Respondent did not submit any evidence or argument indicating his relation with the disputed domain name <www.bottegavenetaparfums.com> or any trademark right, domain name right or contractual right.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As per the WhoIs information furnished by the Complainant, the Respondent has created the disputed domain name <www.bottegavenetaparfums.com> on April 10, 2012. The expiration date is April 10, 2014.
The present dispute pertains to the domain name <bottegavenetaparfumes.com>. It consists of a combination of three words, namely, “bottega”, “veneta” and “parfums”. The Complainant is the registered owner of the trademark BOTTEGA VENETA in many countries, as indicated above. Further, the Complainant also owns domain names with the words “bottega” “veneta”. The Respondent has also used the same words. Thus, the Respondent’s domain name is phonetically, visually and conceptually similar to the trademark of the Complainant. The addition of the word “parfums” (French translation of the word “perfumes”) does not affect the confusing similarity. A domain name that wholly incorporates a trademark typically attains confusing similarity with the trademark.
Therefore, the Panel holds that the disputed domain name <www.bottegavenetaparfums.com> is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the disputed domain name by proving any of the following circumstances:
(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) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 Respondent has not filed any response. Based on the evidence provided by the Complainant, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its mark or to apply for or use the disputed domain name incorporating the Complainant’s mark and that, in this Panel’s view, it is unlikely that someone would use the words “bottega veneta” in its domain name unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent’s web site or location or of a product or service on its web site or location.
The use of a domain name that appropriates a third party’s well-known mark to promote competing or infringing products or for making a profit by offering to sell it cannot be considered a bona fide offering of goods and services. Further, the Complainant has furnished evidence that the Respondent has offered the disputed domain name to the Complaint for sale. This shows the registration and use of the disputed domain name in bad faith. This and the written evidence submitted by the Complainant lead to the presumption that the disputed domain name was registered and used by the Respondent in bad faith.
The Panel concludes that the disputed domain name was registered and used in bad faith.
In the light of the foregoing reasons, namely, that the disputed domain name is confusingly similar to the trademark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bottegavenetaparfums.com> be transferred to the Complainant.
Vinod K. Agarwal
Date: October 22, 2013