WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Registration Private, Domains By Proxy, LLC / Nisar Ahmad Zafar
Case No. D2020-3560
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by Studio Barbero S.p.A, Italy.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Nisar Ahmad Zafar, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <bulgari.store> 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 December 31, 2020. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2021, 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 January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on February 26, 2021. 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, Bulgari S.p.A., submits that it is an Italian luxury house and one of the world’s largest jewelry manufacturers. It has been part of the well-known luxury group LVMH Moët Hennessy Louis Vuitton SE Group since 2011.
BULGARI is widely promoted via the Internet and maintains a strong presence on popular social media platforms, including Facebook, Twitter and Instagram. The Complainant has made significant investments in marketing, sales and distribution channels, and has developed a strong client base for its products.
The Complainant has an extensive global trademark portfolio of “BVLGARI” trademarks, which include the following:
- International Trade Mark Registration No. 543321 BVLGARI in Classes 3, 8, 11, 14, 16, 18, 20, 21, 25 and 34, registered on October 11, 1989;
- Saudi Arabia Trade Mark Registration No. 142202613 BVLGARI in Class 41, registered on May 20, 2002;
- Saudi Arabia Trade Mark Registration No. 142202713 BVLGARI in Class 42, registered on April 28, 2002;
- Saudi Arabia Trade Mark Registration No. 15111 BVLGARI in Class 14, registered on May 31, 2005;
- Saudi Arabia Trade Mark Registration No. 15113 BVLGARI in Class 18, registered on May 31, 2005;
- Saudi Arabia Trade Mark Registration No. 15114 BVLGARI in Class 25, registered on May 31, 2005;
- Saudi Arabia Trade Mark Registration No. 1437008493 BVLGARI in Class 35, registered on September 24, 2016.
The disputed domain name was registered on June 14, 2016.
The Complainant asserts that, at the time the Complaint was filed, the disputed domain name resolved to an active website providing information about unrelated third parties (either the Registrar or CentOS-WebPanel).
5. Parties’ Contentions
The Complainant asserts that it has prior rights in the BVLGARI trade marks and that it is a leading player in the luxury goods industry.
The Complainant further notes that the disputed domain name is identical or confusingly similar to the Complainant’s BVLGARI trade marks, and the addition of the Top-Level Domain (“TLD”) “.store” does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
The Complainant asserts that it has not authorized the Respondent to use the BVLGARI mark and/or the BULGARI name, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Indeed, the Complainant asserts that the Respondent is passively holding the disputed domain name and there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name, especially after considering the attendant circumstances, any use of the disputed domain name whatsoever must be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the BVLGARI trade mark in many territories around the world.
Disregarding the “.store” TLD, the disputed domain name incorporates the name BULGARI in its entirety.
BULGARI is not only the name of the Complainant, it is also highly similar to the Complainant’s BVLGARI trademark, differing by only one letter. This does not prevent the Complainant’s trademark from being recognizable within the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the BVLGARI trade mark and in demonstrating that the disputed domain name is identical or confusingly similar to its mark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized the Respondent to use its trade mark, and there is no evidence to suggest that the Respondent has used, or undertaken any preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Thus, the Panel holds that the Complainant has established its prima facie case with sufficient evidence.
The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is evident in this case.
Accordingly, the Panel further finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
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. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name, given the extensive prior use and fame of these marks.
When the Respondent registered the disputed domain name in June 2016, the BVLGARI trade marks had already become widely known and directly associated with the Complainant’s activities.
The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive mark BVLGARI was a mere coincidence.
Ultimately, the Complainant’s registered rights in the BVLGARI trade mark for its signature products and services predate the registration date of the disputed domain name by almost five decades, and simple web search against the terms “bulgari” or “bvlgari” would have revealed that the latter is a world-renowned brand.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trade mark. In doing so, the Respondent has created a likelihood of confusion with the Complainant’s trade mark and potentially deprived the Complainant of the opportunity to offer its products to prospective customers through the disputed domain name.
It is true that at present the disputed domain name does not resolve to an active webpage offering any substantial content; but the consensus view among UDRP panels is that “the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, 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 (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See section 3.3 of the WIPO Overview 3.0. In this case, the overall circumstances strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith.
The Respondent’s repeated acts of registering trade mark-abusive domain names further reinforces the Panel’s view of establishment of bad faith.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <bulgari.store> be transferred to the Complainant.
Date: March 12, 2021