WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta SA v. Demp Cross
Case No. D2013-1534
1. The Parties
The Complainant is Bottega Veneta SA of Cadempino, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Demp Cross of Granite City, Illinois, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bottegavenetaeoutlet.com>, <bottegavenetaeshop.com>, <bottegavenetaestore.com> and <bottegavenetashops.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2013. On September 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2013. On September 21, 2013, an individual named D[…] Cross sent an email communication to the Center, stating that it had received the notice from the Center but has no connection with the disputed domain names. No further communications were filed with the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 3, 2013.
The Center appointed Andrew F. Christie 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
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 TLDs 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 names were registered on February 18, 2013. They resolve to websites displaying the words “Bottega Veneta” on the top left hand corner of each web page and advertising for sale products under that name. The prices advertised are significantly lower than those of the genuine BOTTEGA VENETA leather goods sold by the Complainant through the website “www.bottegaveneta.com”.
The Complainant sent a cease and desist letter to the Respondent concerning the disputed domain name <bottegavenetaeoutlet.com> on April 4, 2013. The letter sent by registered mail remained unclaimed and the Complainant’s representative did not receive any delivery failure receipt of the communication addressed by email. As there was no reply, the Complainant sent a reminder to the Respondent on May 20, 2013, to which it did not receive a reply.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights because: (i) they incorporate the whole of the Complainant’s BOTTEGA VENETA trademark; (ii) the fact that they include the non-distinctive elements “e”, “outlet”, “shop/s” and “store” does not affect the confusing similarity and, in fact, increases the likelihood of confusion and induces Internet users to believe there is an association or affiliation with the Complainant; and (iii) the suffix “.com” 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 names 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 names 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 names in connection with a bona fide offering of goods or services before any notice of this dispute; (iv) as the disputed domain names have been used to redirect to commercial websites offering for sale “Bottega Veneta” branded products that are prima facie counterfeit, it is clear the Respondent’s use of them cannot be considered a legitimate noncommercial or fair use without intent for commercial gain because it has undoubtedly been gaining from the sales of the products advertised on those websites; (v) the websites to which the disputed domain names resolve are presented as if they are official websites of the Complainant and are thus designed to reinforce the Internet user’s impression that they belong to the Complainant; and (vi) irrespective of the nature of the products offered for sale on the Respondent’s websites, no fair use according to the Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) could be invoked since the Respondent has failed to accurately and prominently disclose its relationship with the trademark holder, thus generating a clear likelihood of confusion for Internet users.
The Complainant contends that the disputed domain names were registered and are 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, the Respondent could not have possibly ignored the existence of the Complainant’s trademark when registering the disputed domain names; (ii) the actual knowledge of the BOTTEGA VENETA trademark by the Respondent is clearly demonstrated by the fact that the websites to which the disputed domain names resolve imitate the look, feel and layout of the Complainant’s website “www.bottegaveneta.com”, in which products are advertised for sale under the BOTTEGA VENETA trademark; (iii) the Respondent intentionally attracted Internet users for commercial gain to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its own websites; and (iv) the Respondent is free-riding on the goodwill of the Complainant’s mark for commercial gain and using the disputed domain names to resolve to websites that offer for sale prima facie counterfeit BOTTEGA VENETA products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names incorporate the whole of the Complainant’s registered trademark BOTTEGA VENETA, with the addition of the letter “e” after “veneta” in three of the four disputed domain names, and the descriptive words “outlet”, “shop/s” and “store” that reference indirectly the Complainant’s business of selling its range of products. The dominant element of each of the disputed domain names is the Complainant’s trademark BOTTEGA VENETA. The Panel finds that the addition of the descriptive words and/or characters does not lessen the inevitable confusion of the disputed domain names with the Complainant’s trademark. This is especially so given that most of the additional words relate, in some form or another, to the Complainant’s particular business of selling a range of goods. Accordingly, the Panel finds that each of the disputed domain names 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 names have been used to resolve to websites offering goods that purport to be the Complainant’s goods but are most likely counterfeits of the Complainant’s goods, and that do so without accurately and prominently disclosing the Respondent’s relationship with the Complainant. The Respondent has provided no evidence establishing that the goods being offered for sale at the websites to which the disputed domain names resolve genuinely bear the BOTTEGA VENETA trademark, or that it has trademark or other rights to the string “bottegaveneta”. According to the present record, therefore, the disputed domain names are 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 names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names were 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 names were 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 names. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used those disputed domain names to attract, or to attempt to attract, for commercial gain, Internet users to various websites by creating confusion with the Complainant’s trademark as to the affiliation of those websites. For all these reasons, the Panel is satisfied that each of the disputed domain names 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 names <bottegavenetaeoutlet.com>, <bottegavenetaeshop.com>, <bottegavenetaestore.com> and <bottegavenetashops.com> be transferred to the Complainant.
Andrew F. Christie
Date: October 20, 2013