WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A v. PrivacyProtect.org / Domain Admin Private Registrations Aktien Gesellschaft
Case No. D2014-0987
1. The Parties
The Complainant is Bulgari S.p.A of Rome, Italy, represented by SIPI - IP, India.
The Respondent is PrivacyProtect.org of Nobby Beach, Australia / Domain Admin Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent And The Grenadines.
2. The Domain Name and Registrar
The disputed domain name <bulgarihotel.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a first amended Complaint and a subsequent second amended Complaint both on June 20, 2014.
The Center verified that the Complaint together with the amended Complaints 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 June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2014.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 23, 2014. 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 the proprietor of the trademark BULGARI, registered in various countries and jurisdictions around the world. For example, the mark is registered as Community Trade Mark No. 001510866, with priority from February 16, 2000. The disputed domain name was registered on January 28, 2006.
5. Parties’ Contentions
The Complainant produces luxury goods and operates hotels under the trademark BULGARI. The trademark BULGARI has been used by the Complainant since 1905. The Complainant’s goods and services are sold in 113 countries. In 2001 the Complainant entered into the luxury hotel segment through a joint venture with Marriot International, and in 2004 its first hotel was established in Milan, Italy.
The Complainant also owns and operates a website under the domain name <bulgarihotel.com>. The disputed domain name consists of the words “bulgari” and “hotel” and is therefore confusingly similar to the Complainant’s trademark.
The Complainant has not authorized the Respondent to use the Complainant’s trademark or register the disputed domain name. The Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name, because it resolves to a website displaying links to competing hotel offerings.
The Respondent has used a privacy protection services to conceal its identity, which is evidence of bad faith. Furthermore, the disputed domain name is for sale for USD 826. The disputed domain name is used to display pay-per-click advertising links thus taking advantage of the Complainant’s mark for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name combines the Complainant’s trademark BULGARI with the common English word “hotel”. The Complainant has shown that it offers hotel services under the trademark BULGARI. The word “hotel” is a generic and descriptive word for hotel services.
The mere addition of a generic or descriptive word to a trademark within a domain name does not typically avoid confusing similarity between that domain name and an earlier trademark (see inter alia, Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com, WIPO Case No. D2004-0463; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066; International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338).
If anything, for this Panel such a combination enhances the association between the disputed domain name and the Complainant’s trademark when the Complainant is offering goods or services denoted by the generic or descriptive word.
The generic Top-Level Domain (gTLD) “.net” would typically be disregarded under the confusing similarity test.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Complainant has shown that its trademark is widely recognized and well-known and has been used for over one hundred years. It is therefore unlikely that the Respondent was not aware of the Complainant’s trademark when registering the disputed domain name.
The Panel finds that using the disputed domain name for a pay-per-click website directing Internet users to competing service offerings means that the Respondent is using the Complainant’s trademark to create confusion among Internet users to attract visitors to the Respondent’s website for commercial gain.
The Complainant has also contended that the use of a privacy service is evidence that the Respondent is acting in bad faith. Taking into account all the facts of the case, the Panel finds that the Respondent has used the privacy service to conceal its identity and that this suggests bad faith registration and use.
The Panel finds that the disputed domain name was 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 <bulgarihotel.net> be transferred to the Complainant.
Date: August 6, 2014