WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. 翁如海 (Weng Ru Hai)
Case No. D2019-2734
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is 翁如海 (Weng Ru Hai), China.
2. The Domain Names and Registrar
The disputed domain names <bvlgari.我爱你> (<bvlgari.xn--6qq986b3xl>), <bvlgari.fun>, <bvlgari.site>, <bvlgari.tech>, and <bvlgari.wiki> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all the disputed domain names and providing the contact details.
On November 20, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant reiterated its request that English be the language of the proceeding on November 21, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 17, 2020. 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 company founded in 1884 by Sotirios Voulgaris, operating in the luxury goods and hotel markets. Its products include jewellery, bags and fragrances. It has more than 230 retail locations worldwide. The Complainant uses the mark BVLGARI with its goods, which derives from the Italianised version of its founder’s surname, with the “U” transcribed in the classical Latin alphabet as a “V”. The Complainant is the holder of various trademark registrations for BVLGARI, including international trademark registration number 494237, registered on July 5, 1985, designating multiple jurisdictions including China, and specifying a wide range of goods in classes 3, 8, 11, 14, 16, 18, 20, 21, 25 and 34. That trademark registration remains current. The Complainant has also registered the domain name <bulgari.com> that it uses in connection with its official website where it offers for sale its products and provides information about its stores and authorized retailers.
The Respondent is an individual resident in China. Besides the disputed domain name, she has registered other domain names including <bottegaveneta.wiki>, <pagani.fun>, <prada.ink> and <versace.ink>.
The disputed domain names <bvlgari.我爱你>, <bvlgari.site> and <bvlgari.wiki> were created on November 8, 2018. The disputed domain names <bvlgari.fun> and <bvlgari.tech> were created on July 30, 2019. None of the disputed domain names resolves to an active website; rather, each of them is passively held.
5. Parties’ Contentions
The disputed domain names are identical to the Complainant’s BVLGARI trademark.
The Respondent lacks a right or legitimate interest in respect of the disputed domain names. The Respondent has no trademark rights in BVLGARI. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the term “Bvlgari” nor is offering any goods or service by the term “Bvlgari”.
The Respondent registered and is using the disputed domain names in bad faith. The Complainant’s earliest trademark registration predates the creation date of the disputed domain names by at least 33 years. The results of a search for BVLGARI on popular Internet search engines such as Google and Baidu list the Complainant’s brand and services as the first result. The Complainant has a strong global reputation in the BVLGARI mark. There is no evidence of any actual or contemplated good faith use of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain names is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that there is evidence that the Respondent understands English, given that her domain name portfolio features many domain names containing English words such as <vacationrentals.wang>, <taxfree.pub>, <population.site> and <i-love-you.biz>; the Rules require that parties are treated equally and given a fair opportunity to present their case; and the Rules preserve the time span of the process.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this dispute was filed in English. According to evidence provided by the Complainant, the Respondent has registered various domain names that are made up of English words, from which it can be inferred that the Respondent is familiar with that language. Moreover, despite the Center having sent the Written Notice of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not expressed any interest in responding to the Complaint, commenting on the language of the proceeding or otherwise participating in this proceeding, In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the BVLGARI mark.
All the disputed domain names wholly incorporate the BVLGARI mark in its entirety as their respective initial element. The only additional element in each disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, variously “.我爱你” (meaning “I love you” in Chinese), “.fun”, “.site”, “.tech” or “.wiki”. As a technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case with any of the disputed domain names in this case.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain names do not resolve to any active website. That is not a use of the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s verification email as “翁如海”(Weng Ru Hai), not the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because she did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the disputed domain names were registered in 2018 and 2019, many years after the registration of the Complainant’s BVLGARI trademark, including in China where the Respondent is resident. Besides the gTLD suffixes, the disputed domain names consist of the exact trademark BVLGARI, which is a fanciful term coined by the Complainant that, as far as the Panel is aware, has no meaning other than as a trademark. The Complainant has acquired a considerable reputation in its BVLGARI mark through its use and promotion of that mark. The Complainant is the top result of a search for “Bvlgari” in the Baidu search engine. Accordingly, the Panel does not consider it a coincidence that the disputed domain names wholly incorporate that mark. Rather, the Panel considers it likely that the Respondent knew of the Complainant’s mark at the time of registration of the disputed domain names and that she registered the disputed domain names in bad faith.
With respect to use, the Respondent currently makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain names wholly incorporate the BVLGARI trademark, with no additional element besides a gTLD suffix. The Complainant has acquired a considerable reputation in its BVLGARI mark through its use and promotion of that mark. The Respondent has registered other domain names that, like the disputed domain names, consist of an Italian luxury brand with a gTLD suffix. The Respondent provides no explanation of any potential use of the disputed domain names. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain names in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <bvlgari.我爱你> (<bvlgari.xn--6qq986b3xl>), <bvlgari.fun>, <bvlgari.site>, <bvlgari.tech>, and <bvlgari.wiki> be transferred to the Complainant.
Date: January 28, 2020