WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Haseeb Rahman
Case No. D2017-1310
1. The Parties
The Complainant is Bulgari S.p.A. of Rome, Italy, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Haseeb Rahman of Dubai, United Arab Emirates.
2. The Domain Names and Registrar
The disputed domain names <bulgarihotelresidences.com>, <bulgarihotelsresidences.com>, <bulgariresidence.com> and <bulgariresortresidences.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 July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on August 9, 2017. 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 an Italian private company founded in 1884 by Sotirio Bulgari. The Complainant operates its business in the luxury goods industry, and is particularly known for its high-end jewellery including, but not limited to watches, rings, necklaces and fragrance products. The Complainant opened its first international locations in New York, Paris, Geneva and Monte Carlo in the 1970s. For many years the company maintained a showroom in New York’s The Pierre Hotel. Today the Complainant has more than 230 retail locations worldwide.
The Complainant also has owned several hotels since 2001, as the result of a joint venture between the Complainant and the Luxury Group, a division of Marriott International that also manages Ritz-Carlton hotels. The Complainant’s hotels can be found in places such as London, Bali and Milan and are soon to launch new hotels in Shanghai, Beijing, Dubai and Moscow.
The Complainant has registered marks for BVLGARI and BULGARI. The word “bvlgari”/”bulgari” derives from its founder’s surname, Sotirio “Voulgaris”. “bvlgari” is the phonetic version of this surname.
The mark BVLGARI is written in the classical Latin alphabet and BULGARI in the modern alphabet. The Complainant provided examples of its trademark registrations in various jurisdictions, including marks registered as early as 1981 (Swedish trademark no. 177937 registered on August 28, 1981).
The Complainant registered the domain names <bulgari.com> on February 17, 1998 and <bulgarihotels.com> on December 13, 2000.
The Complainant’s mark has been the subject of a number of previous proceedings under the Policy. These include cases which also involve the word “hotel” attached to the Complainant’s mark: see Bulgari S.p.A v. PrivacyProtect.org / Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2014-0987.
The Respondent registered the disputed domain names <bulgariresortresidences.com> and <bulgariresidence.com> on December 18, 2016. The Respondent registered the disputed domain names <bulgarihotelsresidences.com> and <bulgarihotelresidences.com> on January 2, 2017.
As evidenced in the Complaint, all of the disputed domain names redirected to the same website at “www.bulgariresortresidences.com”. That website included the banner “BULGARI HOSPITALITY MANAGEMENT Pvt.”, a contact phone number immediately below that banner. The website homepage features a photograph of a laptop and hand holding a phone as a background, over which appears the statement “Cooming Soon Hotels & Resorts”, a contact phone number and email, and an apparent button which the statement “CLICK TO BEGIN”.
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant says that its marks have acquired distinctiveness as a result of the substantial time, money and effort that the Complainant has spent promoting it. The Complainant provides evidence of various uses and promotions of its marks. On this basis, the Complainant says that it has common law rights in addition to its registered rights.
The Complainant says that the disputed domain names are all confusingly similar to its marks. The addition of the generic words “residence”, “resorts” and “hotels” does not substantially alter the overall impression of the disputed domain names. The Complainant further comments that the addition of these words merely reinforces the association with the Complainant’s mark.
The Complainant, secondly, says that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant says that the terms “bvlgari” and “bulgari” are solely associated with the Complainant’s services on search engines, such as Google. To the best of the Complainant’s knowledge, the Respondent does not hold any rights in the terms “bvlgari” and “bulgari”.
The Complainant points out that that the disputed domain names all resolve to a website at “www.bulgariresortresidences.com”, which features the following tag: “Cooming Soon Hotels & Resorts” and further, has a title at the top of the page which reads: “BULGARI HOSPITALITY MANAGEMENT Pvt”. From this, the Complainant submits that the Respondent is attempting to create the impression that the disputed domain names are going to be used for a legitimate business venture relating to hospitality management. The Complainant submits that this proposed use is not a bona fide offering of goods and/or services. The Complainant also claims that the Respondent is not otherwise known by the disputed domain names, and the Respondent has never been given permission by the Complainant to use its marks in a domain name. Neither is there evidence of a noncommercial or fair use of the disputed domain names.
The Complainant, thirdly, says that the disputed domain names were registered and have been used in bad faith. All of the disputed domain name registrations post-date the registration of many of the Complainant’s trademarks. Due to the reputation of the Complainant’s marks, the Complainant says that the Respondent would have known of the Complainant’s trademarks at the time of the registration of the disputed domain names. In addition, the Complainant has several stores in Dubai, where the Respondent has his address, as well as a new luxury hotel on Jumeira Bay Island, due to open this year. Due to the proximity of its stores and new hotel, it is highly unlikely that the Respondent registered the disputed domain names without having actual, or at the very least, constructive knowledge of the Complainant’s brand. The use of the terms “residence”, “resorts” and “hotels” at the end of the disputed domain names further reinforces the Respondent’s knowledge and constitute evidence of bad faith.
On March 6, 2017, the Complainant sent a cease-and-desist letter to the Respondent. After the date of that letter, the Respondent attempted to host the disputed domain names with the Complainant’s registrar, Safenames Ltd, as indicated in copies of emails the Complainant provided between the Respondent and the Registrar. That attempt was denied by the Registrar. Also in response to that letter, the Complainant received a letter dated March 13, 2017 from a representative of the Respondent. The letter stated, among other things, that “We keenly observed that the language of E-mails + letter is not legal, but my client bonafidely purchased websites through all legal means. But in the Third Page at the Fifth paragraph of your letter, your are showing willingness that ‘we are in a position to resolve this through legal means’. Therefore, your client Bulgari S.P.A., will arrange meeting in the UK on their own cost / expenses and send two return tickets +hotel booking and Visit Visa arrangements for my client (Haseeb Rahman and his Lawyer), if they are willing to resolve / purchase / merge the business of both parties in dispute.”
The Complainant highlighted the last sentence of this letter, and says that it demonstrates that the Respondent is seeking extort the Complainant, as the demands of the Respondent are in excess of its out of pocket costs. The Complainant refers to a prior panel case which it says supports this approach: Metallica v. Josh Schneider, NAF Claim No. 9000095636.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in its marks for BVLGARI and BULGARI, as well as providing evidence of its related marketing, websites, social media, promotions, and use of its marks in connection with hotels over a number of years prior to the registration of the disputed domain names. For the purpose of this dispute, the Panel considers that it is sufficient for the Complainant to rely on its rights in its mark for BULGARI, which is the mark incorporated in each of the disputed domain names.
While the Complainant’s mark originally traces its origins to the name of its founder, the Complainant has registered rights for that mark, and is fully entitled to rely on those registrations. As mentioned above, the Complainant’s rights in its marks, and the fame of those marks, have been recognized in previous decisions under the Policy.
The Complainant’s BULGARI mark is entirely incorporated, as the first appearing element, in each of the four disputed domain names. Each disputed domain name adds the terms “hotel”, “residence” and “resort” (some in the plural form, and in different combinations). It is well established that the entire incorporation in a domain name of a well-known mark is sufficient for a finding of confusing similarity, and the addition of only descriptive or dictionary terms does not negate this finding: see, e.g., TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and the cases cited in that one.
There are a number of reasons for this. As the Complainant’s mark is well-known it conditions the descriptive terms that follow it. That is, the terms “hotel”, “resort” and “residence” will be seen by Internet users as having meaning in specific relation to the Complainant’s mark. The natural impression this creates is that the terms are a reference to hotels, resorts, or residences operated by the Complainant. This is likely to be the case even if a particular Internet user was otherwise unaware that the Complainant operates hotels, resorts or residences. The effect of the disputed domain names themselves is to suggest to an Internet user that the Complainant does indeed operate those businesses. In this way, the addition of these terms can only serve to reinforce confusion (at the least, in the form of a mistaken impression) about the association between the Complainant’s mark and the disputed domain names. In this case however, the Complainant does in fact own hotels, and this factual circumstance can only further increase the confusing similarity.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by evidence of any of the following, non-exclusive, circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has established a prima facie case against the Respondent having any rights or leigitmate interests. The Complainant goes through each of these circumstances in paragraph 4(c) and argues that there is no evidence to support any of them. The Respondent himself has not come forward with any such evidence. Neither does the remainder of the case file reveal any evidence that might suggest the Respondent has rights or legitimate interests in the disputed domain names.
Given the fame of the Complainant’s mark, and in the absence of any evidence to the contrary, the Panel cannot conceive of any rights or legitimate interests that the Respondent might otherwise have in the disputed domain names.
For these reasons, the Panel finds that the Respondent has not established rights or legitimate interests in the disputed domain names, to rebut the prima facie case against him. As such, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(i) of the Policy, one circumstance of the registration or use of a domain name in bad faith involves evidence that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The Complainant argues that this is what the Respondent has done. However, the Panel considers that the evidence is equivocal on this point. It is notable that paragraph 4(b)(i) provides that the sale or transfer of the domain name should be the primary purpose of a respondent. The evidence does not clearly indicate that this was the primary purpose of the Respondent at the time he registered the disputed domain names. Rather, the Respondent’s offer to the Complainant appears to have been opportunistically motivated by the terms of the cease-and-desist letter.
Paragraph 4(b) of the Policy sets out other illustrative circumstances of bad faith. These include the circumstances set out in paragraph 4(b)(iv) which are: circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The Panel considers that the evidence of more suggestive of bad faith of this kind. This is for the following reasons:
Firstly, the Panel considers there is a strong inference that the Respondent was aware of the Complainant’s trademark when he registered and used the disputed domain names. As the Complainant points out, its trademark is well known and was registered many years before the registration of the disputed domain names. The Complainant also has a strong commercial presence on the Internet and in Dubai, where the Respondent has his address. It is not likely to be an accident that the Respondent registered a series of domain names which all include the Complainant’s mark as the first appearing element, together with terms that are related to the Complainant’s business. Such a finding is also consistent with previous UDRP cases involving the Complainant’s mark. As the Panel noted in Bulgari S.p.A v. PrivacyProtect.org / Domain Admin Private Registrations Aktien Gesellschaft, supra: “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.”
Secondly, the nature of the Respondent’s websites are strongly suggestive of some commercial motive arising from the deliberate confusion with the Complainant’s mark. The Respondent’s websites all suggest that they are related to the business of “hospitality management” under the claimed company name of “Bulgari Hospitality Management Pvt.” The Respondent however provided no evidence to support having a genuine connection with the term “bulgari”. There is otherwise no evidence that the Respondent has rights or legitimate interests in the disputed domain names.
Thirdly, as noted above, the disputed domain names are all confusingly similar to the Complainant’s marks. The disputed domain names were all registered within about two weeks of each other. Those disputed domain names all follow a similar pattern of including the term “bulgari” as the first appearing element, along with terms that are associated with the Complainant’s business. This appears to the Panel to reflect a deliberate pattern of conduct to create confusion with the Complainant’s mark.
Accordingly, the Panel finds that the disputed domain names were registered and are being used intentionally by the Respondent to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark so as to amount to bad faith under paragraph 4(b)(iv) 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, <bulgarihotelresidences.com>, <bulgarihotelsresidences.com>, <bulgariresidence.com> and <bulgariresortresidences.com> be transferred to the Complainant.
James A. Barker
Date: August 23, 2017