WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergejs Grinfelds

Case No. D2021-0425

1. The Parties

Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sergejs Grinfelds, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bulgarihotellondon.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 18, 2021.

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 Respondent of the Complaint, and the proceedings commenced on February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Response was filed with the Center on March 11, 2021.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 23, 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

Complainant is an Italian company founded in 1884 by Sotirios Voulgaris, and operating in the luxury goods and hotel markets. Complainant is known for its high-end jewelry including watches, rings, necklaces and fragrance products. Complainant is headquartered in Rome; it opened its first international locations in New York, Paris, Geneva, and Monte Carlo in the 1970s. Today, Complainant has more than 230 retail locations worldwide.

The Bulgari name derives from the founder’s name, “Voulgaris”. Complainant’s trademark is written as Bvlgari in the classic Latin alphabet and Bulgari in the modern alphabet. Complainant submits that 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, whilst the term Bvlgari relates to the brand name.

Complainant registered the domain name for its official website at “www.bulgari.com” on February 17, 1998, and has had a strong web presence since that date. Complainant’s official website enables users to access all product lines: jewelry, fragrances, leather goods, accessories, watches, and the bridal collection. Internet users are also able to locate Complainant’s stores and authorized retailers worldwide.

Complainant’s store in Rome has become a popular meeting place for movie stars and socialites, amplifying the international fame of the brand. The BVLGARI / BULGARI brand is advertised globally, with promotional videos, billboards and other sources of marketing material. The BVLGARI / BULGARI brand and products have been used by many celebrities at high-profile events such as the Oscars and Premieres. Complainant’s products are renowned for having a distinctive style that celebrates its Roman history. Over the decades, the BVLGARI / BULGARI brand has been recognized for its vibrant color combinations and innovations in regards to jewelry.

Complainant has operated several hotels since 2001, which was the result of a joint venture between Complainant and the Luxury Group, a division of Marriot International that also manages Ritz-Carlton hotels. Complainant’s hotels can be found in locations such as London, Beijing, Milan, Bali, and Dubai, with further hotels scheduled for launch in Paris and Moscow. Complainant uses the domain name <bulgarihotels.com> for its hotels division.

Complainant, its affiliates, subsidiaries and associated companies own trademarks for the terms

BVLGARI and BULGARI in numerous jurisdictions, including:

Complainant has spent a substantial amount of time, money and effort 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. Complainant has also established a social media presence and uses its trademarks BVLGARI / BULGARI to promote its services on the following platforms:

- Facebook: www.facebook.com/Bulgari
- Twitter: “twitter.com/bulgariofficial”
- Instagram: www.instagram.com/bulgari/
- Pinterest: “www.pinterest.com/bulgari/”

The Domain Name was registered on May 30, 2020. It redirects to a website at “www.hempressa.com”, where CBD products are reviewed and third-party websites with CBD products are listed.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

Complainant states it holds numerous trademark registrations for the term BULGARI registered in various jurisdictions, as reflected in its submissions. All trademarks for BULGARI were registered by Complainant since 1984, while Respondent registered the Domain Name on May 30, 2020. Complainant highlights the goodwill and recognition that has been attained under the name Bulgari, which is a distinctive identifier associated with Complainant’s products and services.

Complainant further submits that previous UDRP panels have recognized the value of the BULGARI trademark and its association with Complainant, including the following cases:

- Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2019-1901;
- Bulgari S.p.A. v. 翁如海(Weng Ru Hai), WIPO Case No. D2019-2734;
- Bulgari S.p.A. v. Libin Zhu, WIPO Case No. D2019-2694;
- Bulgari S.p.A. v. Tool Domains Ltd, WIPO Case No. DRO2019-0012;
- Bulgari S.p.A. v. Domain Admin Contact ID 6523464, FBS INC, Whoisprotection biz / Gamze Çali, WIPO Case No. D2019-1671.

Consequently, Complainant contends that it has satisfied the requirement of holding rights in the BULGARI mark.

Complainant further submits that its registered trademark is recognizable within the Domain Name and the Domain Name is confusingly similar to Complainant’s mark. The Domain Name incorporates Complainant’s BULGARI trademark in its entirety, with the addition of descriptive term “hotel” and the geographical indicator “London”. Complainant contends that where the relevant mark is recognizable within the Domain Name, the addition of other terms (whether descriptive, geographical, meaningless or otherwise) does not prevent a finding of confusing similarity. Further, rather than distinguishing the Domain Name, the conjunction of “hotel” and “London” with the BULGARI trademark creates confusion in the mind of Internet users. Complainant submits that users familiar with Complainant’s services will assume the Domain Name is affiliated with Complainant’s hotel in London.

In light of these submissions, Complainant requests that the Panel classify the Domain Name as confusingly similar to Complainant’s mark for the purposes of the paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Complainant submits that Respondent lacks any rights or legitimate interests in the Domain Name. To the best of Complainant’s knowledge, Respondent has not registered any trademarks for the term Bulgari, and there is no evidence that Respondent holds any unregistered right to the term. Moreover, Respondent has not received any license from Complainant to use a domain name that features the BULGARI trademark. All active trademarks for BULGARI are held by Complainant.

Complainant further submits that there is no bona fide offering of goods or services attached to the Domain Name. The Domain Name is used by Respondent to redirect to the website that describes itself as a “CBD Shop Directory”, which offers links to third party websites offering CBD related products for sale. Complainant contends that Respondent is attempting to take unfair commercial advantage of Complainant’s trademark by using the Domain Name, which is so closely similar to Complainant’s trademark, to redirect users – who intend for the services of Complainant – to a website that offers the services of Respondent. Respondent’s use of the Domain Name in this manner does not confer a genuine good faith use. Complainant also contends that the evidence shows Respondent is not making legitimate noncommercial use of the Domain Name. Respondent uses the Domain Name to redirect to its own website and advertise other third-party sites. Complainant states that by redirecting to Respondent’s website there is a high likelihood of commercial gain as unsuspecting Internet users will be offered Respondent’s services and redirections to third-party sites advertised on Respondent’s site. As such, Complainant claims Respondent is directly or indirectly generating commercial gain through use of the Domain Name.

Complainant further states that Respondent is not known, nor has it ever been known, as Bulgari. The BULGARI trademark is distinctive and not used in commerce other than by Complainant. Therefore, there is no plausible reason for the registration of the Domain Name other than to take advantage of the goodwill and valuable reputation attached to the BULGARI brand, as Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the mark in any way. Moreover, the mere ownership of the Domain Name does not confer any right or legitimate interest on Respondent. To rely on this defense, Respondent must show that at the time of registration, Respondent was commonly known by the Domain Name.

(iii) Registered and Used in Bad Faith

Complainant submits that Respondent registered and is using the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Complainant’s earliest BULGARI trademark registration predates the creation date of the Domain Name by at least 41 years. In addition, Complainant has accrued substantial goodwill and recognition since Complainant’s establishment in 1884; the Bulgari name has become synonymous with high-end and stylistically unique luxury accessories. Complainant further submits that anyone who has access to the Internet can find Complainant’s trademarks on public trademark databases. Results on popular search engines such as Google for the term Bulgari list Complainant’s brand and services as the first result.

Complainant explains that a cease and desist letter was sent by Complainant’s representatives on August 28, 2020. This letter was sent to put Respondent on notice of Complainant’s trademarks and with a view to resolving the matter amicably. Respondent was given the opportunity to give evidence of any actual or contemplated good faith use, but chose not to respond. Complainant asserts that previous UDRP panel decisions have stated that a lack of reply to a cease and desist letter prior to commencing the proceedings infers bad faith behavior. Therefore, Complainant submits this is evidence of bad faith.

Complainant asserts that Respondent has used the Domain Name in bad faith prior to notice of the Complaint. Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users by registering a Domain Name that is closely similar to Complainant’s BULGARI mark. Complainant asserts that such is the case here, given that the Domain Name is comprised of Complainant’s fanciful and globally distinctive BULGARI mark. Respondent’s addition of descriptive term “hotel” and geographic indicator “London” confuses Internet users into believing the Domain Name is affiliated with, connected to, or endorsed by Complainant’s London hotel. Complainant contends that it has been accepted in previous UDRP cases that the selection of a domain name, which is so obviously connected to a complainant’s trademark, strongly suggests opportunistic bad faith, particularly where it is used by someone with no affiliation to the complainant. Complainant states that Respondent’s use of the Domain Name to redirect unsuspecting Internet users intending to land on Complainant’s website to another online location as well as to other third-party sites, is a clear attempt to generate commercial profits regardless of whether Respondent itself reaps profits from such services.

In view of the foregoing, Complainant requests the Panel to make a finding of bad faith registration and use under Paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent states that while Complainant implies Respondent registered the Domain Name to take advantage of or abuse the BULGARI trademark, in fact, the Domain Name was previously registered in 2012, as can be seen via the Wayback Machine. Respondent asserts the website at that time was apparently run by Complainant. Respondent contends that he acquired the Domain Name legally on May 30, 2020 by paying the fair market value. Further, if it is established that Complainant had previously acquired this Domain Name, then it can be concluded that Complainant has been negligent and reckless in not renewing it, especially if it has such great value as Complainant maintains in its Complaint.

With regard to Complainant’s arguments that Respondent is attempting to take unfair commercial advantage of Complainant’s BULGARI trademark and that users familiar with Complainant’s services will assume the Domain Name is affiliated with Complainant’s hotel in London, Respondent contends that the Domain Name has absolutely no organic traffic every month, which demonstrates that the Domain Name is not popular and is not visited by any users whatsoever. Respondent claims this shows there is no commercial gain. Further, according to Respondent, this demonstrates that there is no value to be gained from the Domain Name as far as trademark value and visitor traffic is concerned, which negates Complainant’s allegation that Respondent is attempting to take unfair commercial advantage from Complainant’s trademark.

Respondent contends that all of his actions have been completely bona fide. He states he has a legitimate interest in the Domain Name because he acquired it for the purpose of “link building” towards his own website. He states that he purchased the Domain Name and created a permanent redirect to his own site in order to redirect the “authority backlinks” to his site with the view to increasing his search engine rankings. Aside from gaining an authority backlink from the Domain Name, he claims he did not pay any attention to the brand of the Domain Name. Thus, he claims he purchased it for the sole purpose of providing backlinks from another site. Furthermore, since acquiring the Domain Name, he states he has built multiple backlinks to it. Therefore, if the Domain Name ordered to be transferred from Respondent, Complainant will be unjustly enriched at Respondent’s expense.

Respondent further states that he is using the Domain Name for a CBD Shop Directory, which is outside the scope of Complainant’s registered trademarks, as Complainant does not conduct any business in the CBD space. Therefore, there is no nexus between Complainant’s commercial interests and Respondent’s website. Further, Respondent asserts that there is a bona fide offering of goods via the external links on the website to which the Domain Name redirects, at “https://hempressa.com/post/justcbd-review-cbd-gummies-peach-rings-hemp-soap-and-cbd-paingel”. Respondent states the purpose of the website to which the Domain Name is linked is to provide the general public with a trusted list of CBD shops.

Finally, Respondent denies all allegations by Complainant. Respondent claims that Complainant is exercising its financial dominance to exert undue pressure and conceal Complainant’s incompetence by its failure to renew the Domain Name. Respondent states the Domain Name has absolutely no value in terms of goodwill and traffic, and Complainant has exaggerated the situation. Respondent claims he acquired the Domain Name as a bona fide purchaser without notice and for consideration. He further claims he has demonstrated a legitimate interest in the Domain Name, as he is using it for backlink building purposes, which has no relationship with the goodwill or reputation of Complainant’s trademark. Respondent concludes that the reality is that the Domain Name is defunct and was abandoned by Complainant, and Respondent has rightfully acquired it. Respondent requests that the Panel dismiss the Complaint as frivolous and unfounded.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has well-established rights in its BULGARI and BVLGARI trademarks, through extensive registration and widespread use. The Panel finds that the Domain Name incorporates the BULGARI mark in its entirety, while adding the term “hotel” and the geographic indicator “London”. This combination in the Domain Name creates a confusing similarity with Complainant’s BULGARI mark. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, e.g., Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795); see also section 1.7 of the WIPO Overview 3.0, which states, “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to rebut adequately Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s BULGARI / BVLGARI trademarks; that Respondent is not commonly known by the Domain Name or the name “Bulgari”; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name effectively impersonates or suggests sponsorship or endorsement by Complainant, by including the entirety of Complainant’s well-known BULGARI trademark as the dominant element in the Domain Name, along with the term “hotel” and the geographic indicator “London”. Respondent has not justified why he chose to register the Domain Name, which directly targets Complainant’s distinctive BULGARI / BVLGARI marks. Further, as acknowledged by Respondent, the Domain Name redirects to Respondent’s own website, which provides a listing of CBD shops. This use of the Domain Name has nothing to do with hotels or London, and further indicates that Respondent targeted Complainant’s BULGARI / BVLGARI trademarks when registering the Domain Name. Respondent’s misleading use of Complainant’s BULGARI / BVLGARI marks to redirect users to his own site, or to improve Respondent’s search engine rankings by “link building”, does not support a claim to rights or legitimate interests in the Domain Name. See WIPO Overview 3.0, section 2.5.3; Charles Schwab & Co, Inc. v Polanski, WIPO Case No. D2001-0959 (use of a domain name confusingly similar to a trademark, with a view to directing Internet traffic to websites in which the respondent has a financial interest and which has no connection to the trademark owner, cannot constitute a bona fide offering of goods or services or legitimate non-commercial or fair use of the domain name). Further, while Respondent has argued that a prior registration of the Domain Name had lapsed by the time Respondent registered it in May 2020, this information, even if accurate, does not justify Respondent’s registration of the Domain Name that incorporates the entirety of Complainant’s BULGARI trademark.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been sufficiently rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Although Respondent claims he acquired the Domain Name as a bona fide purchaser without notice, based on the evidence, there is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its BULGARI / BVLGARI marks, and intentionally targeted those marks, when registering the Domain Name. Complainant’s earliest trademark registration predates registration of the Domain Name by more than 40 years, and the BULGARI / BVLGARI marks are distinctive and well known. Respondent’s addition of the term “hotel” and the geographic indicator “London” does not avoid potential confusion among Internet users, especially as Complainant operates a hotel in London using its BVLGARI brand. See WIPO Overview 3.0, section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”). Thus, given the distinctiveness of Complainant’s BULGARI / BVLGARI marks, the timing of the registration of the Domain Name many years after Complainant had establish rights in its marks, and the fact that the Domain Name is so obviously connected with Complainant’s marks, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered).

This point is further confirmed by Respondent’s use of the Domain Name. As acknowledged by Respondent, the Domain Name redirects to Respondent’s own website, which provides a directory of shops offering CBD products. The Panel determines that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark. Factors that support this conclusion include the nature of the Domain Name itself, which incorporates Complainant’s distinctive BULGARI mark in its entirety, plus the additional term “hotel” and the geographic indicator “London”; the lack of Respondent’s own rights to or legitimate interests in the Domain Name; redirecting the Domain Name to Respondent’s own website, where unrelated content is presented; and the absence of any conceivable good faith use of the Domain Name by Respondent. See e.g., Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011 (respondent registered and used a domain name that incorporated the complainant’s well-known trademark, with the mere addition of two generic words; the domain name was used to resolve to a website where financial services were offered, without respondent having rights or legitimate interests in the domain name). Respondent has emphasized that the Domain Name has not generated user traffic and thus there is no commercial gain; however, this point is of no moment – as indicated by section 3.1.4 of WIPO Overview 3.0, in this case where Complainant’s mark is well-known and distinctive, the Panel determines that “seeking to cause confusion…for the respondent’s commercial benefit, even if unsuccessful” demonstrates bad faith.

In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bulgarihotellondon.com> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: April 21, 2021