WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Oren Kovner, Maxima Watch Company
Case No. D2019-1377
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Oren Kovner, Maxima Watch Company, Panama.
2. The Domain Name and Registrar
The disputed domain name <bulgaripanama.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 14, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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 June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 16, 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-established private Italian company that operates an international business in the luxury sector, in particular for the sale and distribution of high-end jewelry and watches as well as other luxury products. The Complainant operates stores and showrooms in many cities and resorts around the world. The Complainant has, on October 11, 1989, registered the trademark BULGARI before the World Intellectual Property Organization (WIPO) with registration No: 543321, as well as in the European Union, and the United States of America; these trademarks are for the name BULGARI as well as BVLGARI (a Romanized version of the Bulgari name employed by the Complainant commercially), these registrations have been in numerous classes.
The Complainant is also active in promoting its goods on the Internet, notably through the website “www.bulgari.com”, which the Complainant states it established in 1998, as well as on social media.
Little is known about the Respondent, who appears to be an individual residing or operating a company in Panama.
The disputed domain name was registered on November 26, 2018, and does not resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that the registration of the disputed domain name is abusive within the meaning of the UDRP, notably that the Respondent is abusively making use of the Complainant’s renown and goodwill by means of the disputed domain name.
More specifically, the Complainant asserts that the disputed domain name is clearly confusingly similar to its trademarks, notably as it includes the entirety of its trademarked name; that the Respondent has no legitimate rights in the disputed domain name, and is using it without any permission or other right; and that the registration of the disputed domain name and passive use are in bad faith as defined by the Policy and pertinent cases interpreting it.
In addition the Complainant submits that the fact that the Respondent has not responded to two cease and desist letters is further evidence of its bad faith.
Thereupon the Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name begins with and recites the entirety of the Complainant’s well-known company name and trademark. The addition of the suffix “panama” does not prevent a finding of confusing similarity between the disputed domain name and the trademark BULGARI. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8.
It follows that first element of paragraph 4(a) of the Policy is proven.
B. Rights or Legitimate Interests
The Complaint clearly emphasizes that the Complainant knows of no rights of the Respondent in the disputed domain name, or of any permission or right of the Respondent to use the Complainant’s trademark, in the disputed domain name, or otherwise. It is equally clear that the Respondent is not known as “Bulgaripanama”. There is, furthermore, no indication that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services.
UDRP case law and jurisprudence establish that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
As the Complainant has here established at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it, the Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered long after the Complainant’s name and trademarks were very well known internationally and on the Internet. It is not plausible to conceive that the Respondent stumbled on the trademarked names BULGARI/BVLGARI by serendipity. Moreover, the addition of the geographical term “Panama” to the disputed domain name gives the incorrect appearance that the Respondent is an authorized branch or representative of the Complainant in that country. See Lloyds Bank Plc v. Marc Wiese, WIPO Case No. D2015-0914. No good faith explanation for the Respondent’s registration of the disputed domain name can be realistically conceived; it appears evident that the Respondent registered the disputed domain name in an effort improperly to take advantage of the renown and good will of the Complainant’s brand and trademarks.
It is equally implausible to see how the disputed domain name could be used by the Respondent other than in bad faith. In this connection it should, however, be noted that the disputed domain name has not, based on the evidence in the case, thus far been actively used. The Complainant here submits that the disputed domain name is being passively held by the Respondent within the meaning of the doctrine established by the well-known Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003decision and its progeny. The Panel agrees that this is an appropriate case for the application of this doctrine; viewing the case and its evidence as a whole there does not appear any good faith explanation for the Respondent’s registration and passive use of the disputed domain name. See WIPO Overview 3.0 at section 3.3.
The Respondent’s failure to answer cease and desist letters, or otherwise to assert any rights or explanation for its conduct is further indication of bad faith.
For all the foregoing reasons the Panel determines that the Complainant has met its burden of proof under 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 <bulgaripanama.com> be transferred to the Complainant.
Date: July 30, 2019