WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A v. Terry Romaro / Ship Agencies Australia Pty Ltd
Case No. D2014-2089
1. The Parties
Complainant is Bulgari S.p.A of Rome, Italy, represented by SafeNames Ltd, United Kingdom of Great Britain and Northern Ireland.
Respondent is Terry Romaro / Ship Agencies Australia Pty Ltd of Fremantle, Australia.1
2. The Domain Names and Registrar
The disputed domain names <bulgari.tokyo> and <bvlgari.tokyo> are registered with Instra Corporation Pty Ltd. (the “Registrar” or “Instra”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2014. On November 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2014. The Respondent communicated with the Center on December 14 and December 16, 2014, and January 6, 2015.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 16, 2015. 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
Complainant Bulgari S.p.A. is a world renowned manufacturer of luxury goods, including precious stones, jewelry, watches, fragrances and skincare products. The company was founded in 1884 in Rome, Italy by Sotirio Bulgari. Complainant’s flagship store is located on the Via dei Condotti in Rome. In 1934, following the renovation of the flagship store, Complainant engraved the name “BVLGARI”, using the Latin “V” epigraphy of the family name, above the store as a reflection of its ancient Roman past.
Complainant owns a number of trademark registrations for the BULGARI and BVLGARI marks around the world, including in Australia (e.g., Nos. 416890, 422603), the United States of America (Nos. 1694038, 1184684), Canada (No. TMA607485), and Mexico (No. 503494). Complainant also owns the domain name <bulgari.com>.
The disputed domain names were registered on August 17, 2014, and resolve to a parking page which is split into two iframes. One iframe across the top is used as a banner which contains Instra’s logo and the title “Domain Parked with Instra”. Below it is another iframe which displays Instra’s website.
The year 2014 marks the 130th anniversary of the launch of the BULGARI brand, which fact Complainant has highly publicized on its social media pages.
5. Parties’ Contentions
Complainant notes that it is the owner of a number of trademark registrations for the BULGARI and BVLGARI marks and contends that the disputed domain names are identical to such marks. According to Complainant, the disputed domain names “are exact phonetic and visual representations of the trade mark.”
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant indicates that Respondent has not been authorized, licensed or otherwise permitted to the use the marks BULGARI or BVLGARI as a domain name or in any other manner, nor is Respondent commonly known by either of the disputed domain names. Complainant contends that while it is not clear whether Respondent is receiving financial benefit from click-throughs by Internet users on the various links found on the parking page, “it is clear that the Respondent has not made use of, or demonstrable preparations to use the domain name[s] in connection with a bona fide offering of goods or services.” Noting that its BULGARI and BVLGARI marks have attained distinctiveness, Complainant maintains that “[i]t is well established that where a domain name makes use of a distinctive trade mark for the purposes of a [pay per click] page it cannot be a bona fide offering or fair use.” Complainant indicates that it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the disputed domain names, especially given that such names do not relate to any of the industries in which Respondent operates. Complainant notes that Respondent Terry Romaro’s primary business appears to be Respondent organization, Ship Agencies Australia Pty, which operates in the fishing industry as an agent for Japanese companies.2
With respect to the issue of bad faith registration and use, Complainant asserts that the use of the top-level extension “.tokyo” implies a connection between BULGARI/BVLGARI and Tokyo, where Complainant has a substantial reputation. Complainant points out that Japan is the second largest luxury goods market in the world. Complainant asserts that “Internet users in Japan looking for the Complainant’s goods are likely to make the assumption that the Complainant will have registered the [disputed domain names] in order for future use. By using these domains to redirect users to the Instra website Respondent creates a false association between the Complainant and Instra’s services, suggesting their endorsement or sponsorship of the same. Whether the revenue derived is received by the Respondent or Instra is of no consequence. This use is strictly prohibited under [p]aragraph 4(b)(iv) of the Policy.”
Complainant also points out that Respondent has registered a number of domain names incorporating other well-known marks, such as BURBERRY, FCUK, PRADA, and HARRY WINSTON, along with the “.tokyo” top-level extension. “From this it can be inferred that the Respondent has purposefully chosen to register domains which either incorporate or are a variation of well known trade marks in an effort to seek to gain profit from the future resale of the same. The registration of multiple domain names consisting of third party trade marks forms a pattern of conduct as per [p]aragraph 4(b)(ii) of the Policy, whereby the registration prevents the owner of the mark from reflecting [its] mark in a corresponding domain name. Complainant asserts that this infers that the Respondent is nothing more than an opportunistic cyber squatter who has registered these domains for profit.”
Complainant further notes that it sent “cease and desist” letters to Respondent on October 28, 2014 and November 11, 2014. No response was received to either communication.
Respondent did not formally reply to Complainant’s contentions.3
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that each of the disputed domain names is confusingly similar to the BULGARI and BVLGARI marks. As noted by Complainant, each of the disputed domain names is visually and phonetically similar to the marks. The substitution of the letter “U” for the Roman letter “V” does not impact the pronunciation of the marks. The addition of the top-level domain suffix “.tokyo” does not detract from the confusingly similar nature of the disputed domain names, given the geographic and, thus, descriptive, nature of such top-level domain suffix.
The evidence further establishes that Complainant owns a number of trademark registrations for the BULGARI and BVLGARI marks and, thus, that Complainant has rights in such marks.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names.
As contended by Complainant, the use of a confusingly similar domain name in connection with a parking page website from which Respondent may be receiving financial benefit from click-throughs by Internet users on the various links, in the absence of evidence to the contrary, may not be considered to be use in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Moreover, there is no evidence that Respondent is commonly known by either of the disputed domain names or that it is making a legitimate noncommercial or fair use of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel rules that Respondent registered and is using the disputed domain names in bad faith. In view of the Panel’s determination that the disputed domain names are confusingly similar to the BULGARI and BVLGARI marks and are used in connection with a parking page where pay-per-click (PPC) revenue is apparently generated, as well as the fact that Complainant’s marks are widely promoted in Tokyo and elsewhere in Japan4 , the Panel concludes that the circumstances spelled out in paragraph 4(b)(iv) of the Policy are satisfied. That is, the evidence establishes that, by using the disputed domain names, Respondent intentionally attempted to attract for commercial gain, Internet users to its sites or other on-line locations by creating a likelihood of confusion with Complainant’s BULGARI and BVLGARI marks as to the source, sponsorship, affiliation, or endorsement of such sites. Internet users are likely to mistakenly believe that the domain names are owned and used by Complainant to promote its goods among those who live in Tokyo.
Further, regardless of whether the website at the disputed domain name (described in the Factual Background) is in fact a PPC page or is more appropriately understood as a case of “passive holding”, the Panel finds that in the circumstances of this case this use of the disputed domain name can be considered use in bad faith.
The evidence further indicates that Respondent has engaged in a pattern of registering domain names in order to prevent trademark owners, including Complainant, from using their marks in corresponding domain names, within the meaning of paragraph 4(b)(ii) of the Policy.
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 <bulgari.tokyo> and <bvlgari.tokyo> be transferred to Complainant. 5
Jeffrey M. Samuels
Date: January 27, 2015
1 In an email dated January 6, 2015, Terry Romaro asserted to the Center that his company does not own the disputed domain names and that the instant matter should be discontinued. The Center, in its reply email of January 6, 2015, noted that the named Respondent was confirmed by the concerned Registrar as the registrant of the disputed domain names and, thus, that it would treat this entity as Respondent, and noted that any final determination of Respondent identity would be for the Panel to determine. The Panel agrees with the Center.
2 According to Complainant, Respondent Romaro was granted the Medal of the Order of Australia through his fishing work.
3 While Respondent did not file a formal Response, in an email dated November 30, 2014, Respondent Romero wrote to Complainant’s counsel indicating that: (1) the owner of the disputed domain names intended to use the name “bulgari” in connection with a security and safety industry trade show in Tokyo; (2) the owner of the disputed domain names settled on the name “bulgari” as it is a combination of his company names and that the website and brand will not be in competition with Complainant or will cause any confusion; (3) the term “bulgari” is a generic term; and (4) he has suggested to the owner of the disputed domain names that it attempt to settle the matter amicably and that the owner would be willing to transfer the disputed domain names to Complainant for USD 5,770 to cover the acquisition costs and the costs of returning the disputed domain names to Complainant. The Panel declines to consider any of these arguments inasmuch as they were not advanced in a formal Response.
4 The evidence indicates that the BULGARI mark is used in connection with hotels and restaurants in Tokyo and that 13% of Complainant’s revenue comes from Japan.
5 Subsequent to submission of the Panel’s decision, Respondent Romaro indicated to the Center that he had convinced his client that “it is not worth the trouble of contesting the complaint”, and that his client “is prepared to accept this advice and also payment from [Complainant’s representative] for the [disputed domain names] and outgoings.”