WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bottega Veneta SA v. WhoisGuard Protected, WhoisGuard, Inc. / Wei Zhang
Case No. D2017-1836
1. The Parties
Complainant is Bottega Veneta SA, of Cadempino, Switzerland, represented by Studio Barbero, Italy.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Los Angeles, California, United States of America ("United States) / Wei Zhang of Henan, China.
2. The Domain Name and Registrar
The disputed domain name <bottegavenetaoutlets.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2017, 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 Complainant on September 26, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 28, 2017.
The Center verified that the Complaint together with the amendment to the Complaint (hereafter referred to as 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 30, 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
Complainant was founded in the mid-1960s in Vicenza, Italy. The designs created by Complainant became quite well-known, and in 2001, the company was purchased by the Gucci Group. Today, Complainant sells a variety of high fashion and designs through directly operated boutiques and department stores. Complainant owns several registrations for the mark BOTTEGA VENETA including European Union Registration No. 3899184 (Registered 2005); European Union Registration No. 6809362 (Registered 2010); United States Registration No. 1086395 (Registered 1978); International Registration No. 705303 (Registered 1998); Hong Kong Registration No. 199082704 (1987); and Hong Kong Registration No. 199707468 (Registered 1996).
Complainant owns the registration for the domain name <bottegaveneta.com> (registered July 10, 1997). Complainant also owns over 400 other domain name registrations which incorporate the BOTTEGA VENETA mark, or variations thereof. Several of these include the mark along with generic terms or even the word "outlet," such as <bottegavenetacheapsales.com>, <bottegavenetaofficialstore.com>, and <bottegavenetahandbagsoutletsale.com>.
The disputed domain name <bottegavenetaoutlets.com> was registered on July 21, 2017. Respondent uses the disputed domain name to connect to a URL which, at least for certain web users, offers a website featuring what appear to be counterfeit goods that display Complainant's BOTTEGA VENETA mark, but are offered at a significantly lower price and apparently lower quality. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties' Contentions
Complainant contends that; (i) <bottegavenetaoutlets.com> is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and, (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the well-known BOTTEGA VENETA mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name and merely added the descriptive term "outlets", which refers to a shopping experience, whereby consumers would expect to be offered goods under Complainant's mark and likely offered by Complainant or its distributors. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, by offering a commercial website that trades on the goodwill of Complainant's trade marks, but is instead offering counterfeit goods of poor quality.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <bottegavenetaoutlets.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, BOTTEGA VENETA, and combines it with the term "outlets" which is descriptive of a place where consumers can shop for brand name items, often at a discount. Since Complainant offers much of its merchandise through directly owned boutiques, the Panel finds that consumers will likely assume that "bottegavenetaoutlets" refers to a service provided by Complainant.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name "any less" identical or confusingly similar for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "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".
No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Furthermore, Respondent appears to be selling counterfeit goods (of low quality). See Bottega Veneta S.A. v. Demp Cross, WIPO Case No. D2013-1534 (transferring <bottegavenetaoutlet.com> et. al.); Lily ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (transferring <cialis-drug-online-buying-guide.com>); Cartier Int'l B.V. and Cartier Int'l N.V. v. David Lee, WIPO Case No. 2009-1758 (transferring <cartierlovejewelry.com>).
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] 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 [respondent's] website or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, Respondent is using a website associated with the disputed domain name to offer counterfeit goods. Respondent is thus trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. This evidences bad faith by Respondent.
Given the manner in which the disputed domain name is being used, as well as the high level of exposure of Complainant's marks around the world, the Panel finds that Respondent must have been aware of Complainant's rights at the time of registration and continuing use of the disputed domain name. See also Bottega Veneta S.A. v. Hon Lo Lee, WIPO Case No. D2016-0225 (transferring <bottegavenetasingapore.com> and finding Complainant's marks to be "distinctive and famous"); Bottega Veneta S.A. v. Chen Kai aka Kai Chen, WhoIs Agent, Domain WhoIs Protection Service, WIPO Case No. D2013-0436 (transferring <borsabottegaveneta.com> et. al. and finding Complainant's marks to be "well- known"); Bottega Veneta S.A.R.L. v. PrivacyProtect.org/henli, luo xiaojie, WIPO Case No. D2012-0715 (transferring <bottegavenetaoutlet.net> and finding Complainant's marks "renown and fame reached the whole world over").
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) 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 name, <bottegavenetaoutlets.com>, be transferred.
Date: November 8, 2017