WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Bai He
Case No. D2019-2758
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Bai He, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <bulgaribj.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 November 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 27, 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 company, active in the fashion and luxury industry, and has global operations, with over 230 retail locations worldwide. The Complainant also operates a number of luxury hotels since 2001, which can be found in major cities across the globe such as London, Beijing, Milan, Bali, and Dubai, with further hotels planned in Paris and Moscow. The Complainant owns a portfolio of trademark registrations for BULGARI, registered in a number of countries around the world, including Italian trademark registration number 2000900811998, registered on June 11, 2003 and international trademark registration number 543321, registered on October 11, 1989, and indicating, amongst other jurisdictions, the Respondent’s home jurisdiction China. The disputed domain name was registered on July 9, 2019. The disputed domain name directs to an active webpage in Chinese and English, which presents itself as being the official website for the Complainant’s hotel in Beijing, China.
The Complainant provides evidence that it has first sought to settle this matter amicably through a cease‑and-desist letter sent to the Respondent on September 4, 2019, to which it received no answer.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is identical to its trademarks for BULGARI, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive, well known and used intensively, and that there are no justifications for the use of its trademarks in the disputed domain name. The Complainant submits a number of prior UDPR decisions which confirm that its trademarks for BULGARI are well known (e.g. Bulgari S.p.A. v. Stefan Paraniac, WIPO Case No. D2019-2018; and Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2019-1901). The Complainant contends that the Respondent is using the disputed domain name to mislead Internet users into thinking that it is the official website for the Complainant’s hotel in Beijing, China, and essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark BULGARI based on its registration and use of the same as trademarks in a large number of countries throughout the world.
Moreover, as to identity or confusing similarity, the disputed domain name consists of two elements, being the BULGARI trademark of the Complainant and the suffix “bj”, which is a common abbreviation for the city of Beijing, China, where the Complainant operates one of its major hotels. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, which provides: “Where the relevant trademark is recognizable 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”. The Panel finds that the geographical abbreviation “bj” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, which is reproduced in its entirety in the disputed domain name, and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant has therefore satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent is not (and has never been) an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. To the contrary, the Respondent is actively using the disputed domain name, which is confusingly similar to the Complainant’s trademarks, to mislead Internet users into visiting the website linked to the disputed domain name, which presents itself as being the official website for the Complainant’s hotel in Beijing, China. This shows the Respondent’s intention to divert consumers to the disputed domain name for commercial gain, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for BULGARI. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name, and the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided sufficient evidence that its trademarks are famous and enjoy a strong reputation, including in the Respondent’s home jurisdiction, China. The registration of the disputed domain name, which is confusingly similar to the Complainant’ trademarks and which took place years after the first registration and use of the Complainant’s trademarks for BULGARI, is therefore clearly intended to profit from, or exploit the Complainant’ trademarks and mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns trademarks in BULGARI and uses them extensively. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the disputed domain name links to an active website, which presents itself as being the official website for the Complainant’s hotel in Beijing, China, prominently featuring the Complainant’s logo, images of the Complainant’s hotel and fonts in a style identical to the style used on the Complainant’s official website. The Panel concludes that, by utilizing the Complainant’s trademark, images, logos and similar website layout, the Respondent is intentionally attempting to create a false impression of association with the Complainant for commercial gain. The Panel rules that this is obvious bad faith use of the disputed domain name. Moreover, the Respondent also chose to ignore the cease-and-desist letter sent by the Complainant. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any evidence, to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <bulgaribj.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: January 10, 2020