WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi
Case No. D2019-1901
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“US”) / Yong Sik Choi, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bvlgari.blog> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2019. On August 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2019, the Registrar transmitted by email to the Center its verification 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 the Complainant on August 7, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 8, 2019.
The Center verified that the Complaint, together with the amended 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 August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2019.
On the same day, the Respondent sent an informal email. On September 3, 2019, the Center acknowledged receipt of the Respondent’s email and notified the Parties of the possibility to suspend the proceedings to pursue settlement negotiations. On September 5, 2019, the Complainant informed the Center that in the absence of a response from the Respondent there will be no request for suspension of the proceedings.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 9, 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 an Italian private company founded in 1884 by Sotirio Voulgaris which 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.
It opened its first international stores in New York City, Paris, Geneva, and Monte Carlo in the 1970s and has more than 230 retail locations worldwide.
The Complainant has also operated several hotels since 2001, which was the result of a joint venture between Bulgari S.p.A. and the Luxury Group, a division of Marriott International that also manages Ritz-Carlton hotels. It already has hotels in London, Bali, Milan, Beijing, and Dubai.
The Complainant owns trademarks, such as:
- Italian trademark BVLGARI registration No 984147 registered on November 18, 2005, in classes 25, 34, 38, and 41;
- Italian trademark BULGARI registration No 896469 registered on November 6, 2003, in classes 11, 14, 20, and 21;
- European Union trademark BVLGARI registration No 007138101 registered on June 3, 2009, in classes 35, 36, 41, and 43;
- US trademark BVLGARI registration No 2954459 registered on May 24, 2005, in class 25;
- International registration BVLGARI registration No 494237 registered on July 5, 1985, in classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34;
- International registration BULGARI registration No 543321 registered on October 11, 1989, in classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34.
The Complainant has registered several trademarks for the “bvlgari” and “bulgari” terms, which all pre-date the registration of the disputed domain name registered on June 22, 2019. It gives access to a page automatically generated by the Registrar.
The Complainant registered the domain names <bulgari.com> on February 17, 1998, and <bulgarihotels.com> on December 13, 2000. The website “www.bulgari.com” enables users to access all product lines: jewellery, high jewellery, fragrances, leather goods, accessories, watches, and the bridal collection. Internet users are also able to locate the Complainant’s stores and authorized retailers worldwide.
The website “www.bulgarihotels.com” enables users to see the different “Bvlgari” and “Bulgari” hotels and facilities around the world. A search on popular search engines like “www.google.com” for the terms “bulgari” and “bvlgari” ranks the Complainant as the first hit.
5. Parties’ Contentions
The BVLGARI / BULGARI trademarks are distinctive and exclusively refer to the Complainant’s goods and services. The words “bvlgari” and “bulgari” derive from the Complainant’s founder’s surname, Sotirio Voulgaris; the word “bvlgari” is simply the phonetic version of this surname. The Complainant’s trademark is both written BVLGARI in the classical Latin alphabet and BULGARI in the modern alphabet.
The terms “bulgari” and “bvlgari” are often used synonymously, but are traditionally intended for the following purposes: “Bulgari” is used in relation to the company name (Bulgari S.p.A), whilst the term “Bvlgari” relates to the brand name.
The Complainant has spent a substantial amount of time, money, and effort in promoting, marketing, and using the BVLGARI / BULGARI trademarks to identify and distinguish its services domestically and internationally. Consequently, the BVLGARI / BULGARI trademarks have acquired distinctiveness in the market worldwide and have customers who rely on the brand’s name and quality.
As a further indication of the Complainant’s success, many celebrities at high-profile events such as Oscars and Premieres wear “Bvlgari” or “Bulgari” branded goods.
The BVLGARI and BULGARI trademarks are also well advertised globally, with promotional videos, billboards, and other sources of marketing material exposed in the public domain, as well as online on social media.
Identical or Confusingly Similar
The Complainant relies on prior UDRP decisions that recognized the value of the BVLGARI / BULGARI trademarks, namely:
Bulgari S.p.A. v. Haseeb Rahman, WIPO Case No. D2017-1310; Bulgari S.p.A. v. yang yi, WIPO Case No. D2014-2141; Bulgari S.p.A v. Terry Romaro / Ship Agencies Australia Pty Ltd., WIPO Case No. D2014-2089; BULGARI S.p.A. 诉 sun shou bo. 案件编号, WIPO Case No. D2014-1646; BULGARI S.p.A. v. Liu Xiao Qian, WIPO Case No. D2014-1529.
The disputed domain name is identical to the BVLGARI trademark. According to prior UDRP decisions, the Panel should disregard the extension “.blog”.
Therefore, the disputed domain name is respectively identical and confusingly similar to the BVLGARI / BULGARI trademarks.
Rights or Legitimate Interests
The Complainant submits that the Respondent does not hold any rights or legitimate interests by way of trademarks or common law rights in and to the terms “bvlgari” or “bulgari”.
The disputed domain name <bvlgari.blog> does not resolve to any active content.
The Complainant argues that UDRP panels have held in numerous cases that a Respondent’s failure to use a domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use further demonstrates lack of rights or legitimate interests in the domain name.
The Complainant submits that the Respondent has never been commonly known by the disputed domain name and has neither registered the disputed domain name as a trademark or acquired common law rights by way of widespread use over the years.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The fact that the disputed domain name does not resolve to any active content allows the Complainant to show that the Respondent is not making a fair use of the disputed domain name. The Complainant submitted that UDRP panels have found that if a domain name does not resolve to active content, it is undisputed that this does not constitute a legitimate noncommercial or fair use of the domain name under the Policy.
The only conceivable reason as to why the Respondent has created the disputed domain name in such manner is with the intention of causing customer confusion, or to withhold it from the Complainant.
Therefore, the Complainant argues that the Respondent does not have rights or legitimate interests in the disputed domain name <bvlgari.blog>.
Registered and Used in Bad Faith
The disputed domain name post-dates the registration of the Complainant’s BVLGARI / BULGARI trademarks.
Due to the acclaimed reputation of the Complainant’s BVLGARI / BULGARI trademarks, the Respondent would have known or would have at least been aware of the Complainant’s pre-existing rights to these terms at the time the disputed domain name was registered.
The Complainant relies on the UDRP case All Saints Retail Limited v. Wang Ya Ya., WIPO Case No. D2016-1809: “In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. A cursory Internet search would have disclosed the ALL SAINTS trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name.”
The BVLGARI / BULGARI trademarks have been active for almost 40 years and any average Internet user can have access to those trademark registrations on public trademark databases. It is difficult to conclude any plausible reason for the registration of the disputed domain name, other than to take advantage of the brand value of the BVLGARI / BULGARI trademarks.
A cease and desist letter was sent to the Registrar on the July 2, 2019, and remained unanswered.
The Complainant explains that this is further evidence that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant submits that the Respondent is passively holding the disputed domain name since its registration, which constitutes bad faith use. It therefore relies on the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant’s trademarks have a strong reputation and are widely known, there is no evidence of actual or contemplated good faith use by the Respondent, the Respondent has taken active steps to conceal its true identity by operating under a name that is not a registered business name, and the Respondent has actively provided and failed to correct false contact details in breach of its registration agreement.
Given this situation, the Complainant contends that burden shall shift to the Respondent to put forward evidence that they do have rights or legitimate interests in the Disputed Domain Name.
Finally, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off site, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Therefore, the Complainant requests the Panel to make a finding of bad faith registration and use under paragraph (4)(a) (iii), which satisfies the three requirements of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph (4)(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its registered BVLGARI / BULGARI trademarks in the US, in the European Union, and as an international registration.
The disputed domain name <bvlgari.blog> contains in its entirety the BVLGARI trademark.
The only difference with the BULGARI trademark is the use of “v” instead of “u”, which are visually very similar.
The Panel shall disregard the generic Top-Level Domain (“gTLD”) “.blog”.
The Panel finds that the disputed domain name is identical to the BVLGARI trademark and confusingly similar to the BULGARI trademark.
The condition of paragraph (4)(a)(i) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph (4)(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or 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 has been commonly known by the domain name, even if it has acquired no 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 Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name <bvlgari.blog>.
The Respondent is not known under the disputed domain name and has not been licensed or authorized to use the BVLGARI / BULGARI trademarks or to register the disputed domain name <bvlgari.blog>.
It does not make a fair or noncommercial use of the disputed domain name.
The disputed domain name <bvlgari.blog> resolves to an automatically generated page in the name of the Registrar.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The conditions of paragraph (4)(a)(ii) of the Policy have therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph (4)(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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 the respondent’s website or location.”
Given the well-known character of the BVLGARI / BULGARI trademarks on a worldwide basis, the Respondent was well aware of the rights of the Complainant on its BVLGARI / BULGARI trademarks when it registered the disputed domain name.
After the Respondent received notice of its default to respond to the complaint, the Respondent sent an email to the Center to offer to transfer the disputed domain name, if the Respondent were to get a “reward” of USD 1,000.
The absence of any reaction to the Cease & Disease letter establishes a prima facie case of bad faith registration and use.
The Panel finds that the disputed domain name was registered in bad faith.
With regard to the bad faith use, the fact that the disputed domain name is not used actively does not prevent a finding of bad faith.
There is a consensus among UDRP panelists that a panel has to look at the totality of the circumstances of the case to determine whether the Respondent acted in bad faith.
Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put.
The Complainant satisfies all these requirements.
For all the above reasons, the Panel is of the opinion that the circumstances surrounding the registration and use of disputed domain name satisfy the requirement of paragraph (4)(a)(iii) and that the disputed domain name is registered and is being used in bad faith by the Respondent.
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 <bvlgari.blog> be transferred to the Complainant.
Date: September 26, 2019