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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Girish Akolkar

Case No. D2019-1296

1. The Parties

The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.

The Respondent is Girish Akolkar, India.

2. The Domain Name and Registrar

The disputed domain name, <bulgariofficial.com>, is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, 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 June 14, 2019. In accordance with the Rules, paragraph 5, the due date for a Response was July 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 9, 2019.

The Center appointed Dennis A. Foster as the sole panelist in this matter on July 17, 2019. 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 a well-known Italian company which operates worldwide primarily in the fields of high-end jewelry and other luxury products. The Complainant conducts business under its BULGARI trademark, which has been registered with the appropriate trademark authority in Italy (e.g., Registration No. 2000900811998; registered on June 11, 2003), among other trademark authorities around the world.

The Respondent is the registrant of the disputed domain name, and the date of creation for the disputed domain name is December 22, 2018. The disputed domain name resolves currently to no active website.

5. Parties’ Contentions

A. Complainant

- The Complainant, Bulgari S.p.A., is an Italian company that was founded in 1884. It specializes in the production and sale of luxury goods, including jewelry items. Today, the Complainant has more than 230 retail outlets worldwide.

- The Complainant operates under its BULGARI trademark, which has been registered in many jurisdictions, including Italy and the United States. It has also conducted business through the domain name <bulgari.com> since 1998.

- The disputed domain name, <bulgariofficial.com>, is confusingly similar to the BULGARI trademark. The additions of the term “official” and the generic Top-Level Domain (“gTLD”) “.com” do not effectively distinguish the disputed domain name from that mark.

- The Respondent has no rights or legitimate interests in the disputed domain name. There is no reason to believe that the Respondent is commonly known by the disputed domain name. Moreover, as there is no active website attached to the disputed domain name, it is not being used in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner.

- The disputed domain name was registered and is being used in bad faith. Due to the acclaimed reputation of the Complainant and its trademark, the Respondent must have been aware of both when registering the disputed domain name. Furthermore, under the circumstances, the Respondent’s passive holding of the disputed domain name is indicative of bad faith registration and use. Also, the Respondent’s bad faith is demonstrated by the Respondent’s failure to respond to a cease-and-desist letter sent to him by the Complainant on April 18, 2019.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may rule in favor of the Complainant and order a transfer of the disputed domain name, <bulgariofficial.com>, if the Complainant proves that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s registration of its BULGARI trademark in Italy, as well as with other trademark authorities, convinces the Panel that the Complainant has the necessary rights in that mark to satisfy the requirements of Policy paragraph 4(a)(i). See Bulgari S.p.A. v. yang yi, WIPO Case No. D2014-2141; and Intesa Sanpaolo S.p.A. v. Lazlo Tokies, WIPO Case No. D2007-1870 (“The Complainant has provided the registration documents for its various BANCA INTESA marks registered in Italy, the European Union, and elsewhere. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).”).

The disputed domain name, <bulgariofficial.com>, incorporates fully the Complainant’s BULGARI trademark. The term “official” and the gTLD “.com”, are added. The former is simply a descriptive term that could relate easily to the Complainant’s business. Where the relevant trademark is recognisable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The addition of the gTLD is not relevant in considering whether the disputed domain name, if not identical to the trademark, is at least confusingly similar to that mark. As a result, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s BULGARI trademark. See, Montblanc-Simplo G.m.b.H v. Lin Mingshun, WIPO Case No. D2013-0855 (finding <officialmontblanc.com> to be confusingly similar to the MONTBLANC marks); Vibram S.p.A. v. Huang Xiaoming, WIPO Case No. D2010-1310 (finding <vibramofficial.com> to be confusingly similar to the VIBRAM mark); and G4S Plc v. Noman Burki, WIPO Case No. D2016-1383 (“[...] the top-level suffix in the Domain Name (‘.com’) should be disregarded since it is a technical requirement of registration of the Domain Name and does not serve to distinguish the Domain Name from other domain names.”).

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As noted in prior UDRP cases, a complainant bears the ultimate burden of proof and must first make a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name in order to shift the burden onto the respondent to produce evidence that it does possess those rights or interests. See, WIPO Overview 3.0, section 2.1; and Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

Complainant has established to the Panel’s satisfaction that the disputed domain name is confusingly similar to the Complainant’s BULGARI trademark. Moreover, the Panel accepts the Complainant’s contention that there is no evidence suggesting that the Respondent, Girish Akolkar, is commonly known as the disputed domain name, <bulgariofficial.com>, possibly supporting a claim that the Respondent has rights or legitimate interests in the disputed domain name per Policy paragraph 4(c)(ii). Given these circumstances, a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name has been sustained, which requires a rebuttal from the Respondent.

Since the Respondent has submitted no Response, the Panel will determine whether a reasonable rebuttal to the Complainant’s case exists based upon the reasonable contentions found in the Complaint, drawing such inferences as are pertinent and appropriate. See, Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (“[...] asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant.”); and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“[...] the Panel’s decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).

The Panel accepts the Complainant’s reasonable contention, supported by submitted evidence, that the disputed domain name resolves to no active website. In the Panel’s view, that inactivity fails to comport with use of the disputed domain name in connection with either “a bona fide offering of goods or services” per Policy paragraph 4(c)(i) or “a legitimate noncommercial or fair use“ per Policy paragraph 4(c)(iii). See, Montres Breguet SA and Blancpain SA v. Privacydotlink Customer 3450653 / Privacydotlink Customer 3450628 / George Friar, WIPO Case No. D2018-1966 (“ [...] the disputed domain names do not and have never resolved to a website. Such passive use cannot be considered as a bone fide offering of goods or services, neither as a legitimate noncommercial or fair use [...]”); and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 (“The Panel further finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the [disputed] Domain Name as the [disputed] Domain Name is not resolving to an active website.“).

Therefore, as Policy paragraph 4(c) cannot be used by the Respondent to support a claim to rights or legitimate interests in the disputed domain name, and the Panel fails to find in the record other evidence favoring the Respondent in this regard, the Panel concludes that the Complainant’s prima facie case prevails with respect to this issue.

Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(b) specifies four circumstances that may lead a panel to find that a disputed domain name has been registered and used in bad faith. In this case, none of those circumstances would apply because the disputed domain name is not attached to a functioning website at all. However, many prior UDRP panels have held that findings of bad faith are not limited to the occurrence of the circumstances listed in paragraph 4(b). See, WIPO Overview 3.0, section 3.1 (“[...] the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative [...]”); and Michael Patrick Lynch v. Steve Nicol (Stephen Joel Nicol), WIPO Case No. D2015-0933 (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”)

Prior UDRP panels have also held that, given the appropriate circumstances, passive holding of a disputed domain name may constitute bad faith. See, WIPO Overview 3.0, section 3.3 (“From the inception of the UDRP, panelists have found that the non-use of a domain name [...] would not prevent a finding of bad faith under the doctrine of passive holding.”); and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the present case, the Panel believes that the Complainant’s BULGARI trademark is both very distinctive and well known internationally. Moreover, the Respondent has failed to file a Response, providing the Panel no basis upon which to infer a potential legitimate use to which the disputed domain name might adhere. Also, the Respondent failed to respond to the Complainant’s cease-and-desist letter, again passing on an opportunity to clarify the possibly legitimate registration and use intended for the disputed domain name. Taking all of these circumstances into account, the Panel cannot imagine that the disputed domain name could be used by the Respondent in a legitimate fashion, and thus concludes that the disputed domain name was registered and is being used in bad faith. See, for example, Sanofi v. VistaPrint Technologies Ltd, WIPO Case No. D2018-1397; Compagnie Générale des Etablissements Michelin v. Vasilii Polkover / Privacy Protection, WIPO Case No. D2017-0057; and Kaufland Warenhandel GmbH & Co. KG v. Zhao Kun, WIPO Case No. D2015-2281.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith.

7. Decision

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, <bulgariofficial.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: July 31, 2019

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