WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxury Goods International (L.G.I.) SA v. Domain Administrator, See PrivacyGuardian.org / Qiang Da
Case No. D2021-0683
1. The Parties
Complainant is Luxury Goods International (L.G.I.) SA, Switzerland, represented by Studio Barbero, Italy.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Qiang Da, China.
2. The Domain Name and Registrar
The disputed domain name <fakebottegaveneta.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, the Registrar transmitted by email to the Center its verification response 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 Complainant on April 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 12, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 7, 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, Luxury Goods International (L.G.I.), is an apparel and fashion company. Complainant is part of the Kering global luxury group. Complainant is the owner of all rights in the BOTTEGA VENETA mark, a fashion luxury brand known, inter alia, for high end handbags, shoes, ready to wear apparel and various accessories. Complainant owns a number of trademark registrations for the BOTTEGA VENETA mark. These include a European Union Trademark Registration (No. 006809362) which issued to registration on May 31, 2010, International Trademark Registrations (Nos. 420038 and 705303) which issued to registrations on December 16, 1975 and October 8, 1998 respectively, and a United States Registration (No. 1086395) which issued to registration on February 28, 1978.
Complainant also owns and uses the domain name <bottegaveneta.com> to provide consumers with information about Complainant’s BOTTEGA VENETA products and to allow for the purchase of such products online. Complainant also owns and uses the domain name <bottegaveneta.us> to promote and offer for sale its BOTTEGA VENETA products in the United States.
Respondent registered the disputed domain name on January 11, 2021. The disputed domain name has resolved to a website that offers for sale replica or fake BOTTEGA VENETA products at substantially reduced prices.
Complainant sent Respondent demand letters on January 19, 2021 and February 8, 2021. A further demand letter was sent by Complainant’s representative on February 15, 2021 to the entity hosting Respondent’s website. No response to any of Complainant’s demand letters was ever received from Respondent. The disputed domain name does not currently resolve to an active website or web page.
5. Parties’ Contentions
Complainant asserts that its BOTTEGA VENETA mark is a well-known trademark that has been in use since the mid-1960s. Complainant has supplied much evidence in that regard. In addition, Complainant maintains that its rights in BOTTEGA VENETA are strong on account of the many trademark registrations that Complainant has obtained for the BOTTEGA VENETA mark, all of which pre-date Respondent’s registration of the disputed domain name.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark as it fully incorporates that trademark with the non-distinctive descriptive word “fake”.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not a licensee or authorized agent of Complainant, (ii) is not the owner of any rights in the BOTTEGA VENETA mark, (iii) is not commonly known by the disputed domain name or the BOTTEGA VENETA name and mark, and (iv) is using the disputed domain name in connection with a website selling imitation or counterfeit BOTTEGA VENETA products at very low prices.
Lastly, Complainant argues that Respondent has registered and used the disputed domain in bad faith as Respondent was undoubtedly aware of Complainant’s well-known BOTTEGA VENETA mark when Respondent opportunistically registered the disputed domain name to sell imitation or fake copies of Complainant’s BOTTEGA VENETA products. Complainant further contends that Respondent has acted in bad faith by using the disputed domain name to attract consumers to Respondent’s website to sell imitation or counterfeit versions of Complainant’s BOTTEGA VENETA products at a substantially reduced price and in a manner that creates a likelihood of confusion as to source, affiliation, or connection with Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Seesection 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the BOTTEGA VENETA mark in connection with its luxury fashion products and that it owns numerous trademark registrations for the BOTTEGA VENETA mark around the world, including the United States, that issued well before Respondent registered the disputed domain name.
With Complainant’s rights in the BOTTEGA VENETA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the standard of the first element.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark as it fully incorporates the identical BOTTEGA VENETA mark in the disputed domain name. The addition of the descriptive word “fake” at the head of the disputed domain name does not distinguish the disputed domain name from Complainant’s BOTTEGA VENETA mark as that mark is clearly recognizable in the disputed domain name.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s BOTTEGA VENETA mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that offers what appears to be replica or imitations of Complainant’s BOTTEGA VENETA products. Complainant maintains that these are counterfeit products, but Respondent’s website does not appear to claim that the products are genuine BOTTEGA VENETA products but replicas or imitations. Indeed, in the screen shots provided by Complainant a number of the products shown on Respondent’s website include descriptions such as “replica” or “fake”. Whether the products are in fact counterfeit products is not altogether clear as there is no evidence showing that the goods are actually labeled with Complainant’s BOTTEGA VENETA mark, copy the labeling or packaging of Complainant’s products, or are identical in design to Complainant’s products. The Panel notes, however, that the products pictured on Respondent’s website closely resemble those shown on Complainant’s website at “www.bottegaveneta.com” and are being sold at substantially reduced prices through an undisclosed entity. Cumulatively, these facts seem to render Respondent’s activities suspicious, particularly as Respondent did not reply to any demand letters sent by Complainant and chose not to appear in this proceeding to defend its actions or Complainant’s assertion that the goods being sold on Respondent’s website are counterfeit products.
But putting aside whether or not counterfeit products are being sold through Respondent’s website, the website at the disputed domain name contains several features that make it look as though Respondent has expressly sought to position the website as somehow connected to Complainant, or perhaps authorized in some way to provide low cost versions of Complainant’s products. Respondent’s website uses the name “Bag Shop” with a highlighted legend below that reads “Bottega Venetta Store”. The website also features the BOTTEGA VENETA mark standing alone in several places with words or links such as “Shop Now”. Moreover, the website does not contain any disclaimer advising that the website has no connection or authorization from Complainant. Lastly, Respondent’s website contains imagery that is arguably reminiscent of the imagery shown on Complainant’s own website at “www.bottegaveneta.com”.
While the disputed domain name has a communicative aspect by using the word “fake”, its main purpose appears to be to draw consumers to a website that on its face creates a certain amount of potential confusion given the multiple uses and references to BOTTEGA VENETA and imagery that appears therein. Consequently, even if the Panel is to assume the goods are not counterfeits (a determination that the Panel has not made) but merely cheap imitations or knock offs of Complainant’s products, which in and of itself might not be illegal depending on the circumstances involved, it is not legitimate for Respondent to use the disputed domain name in connection with a website that on its face is confusing and suggests some authorization from or connection to Complainant, as though Complainant is somehow endorsing sales of lower priced imitation versions of its products to a lower market segment.
In their totality, Respondent’s actions do not appear to be legitimate. Although the goods in question may in fact be counterfeits, Respondent is clearly attempting to sell its products in a way that purposefully makes it unclear whether the goods are counterfeits or whether they are imitations somehow authorized by Complainant. Simply put, it is not legitimate for Respondent to essentially suggest some form of connection, sponsorship, or endorsement by Complainant for purposes of selling products – even if they are genuine and legal knockoffs or cheap imitations of Complainant’s BOTTEGA VENETA products. Respondent is not connected to Complainant and taking measures that in their totality misleadingly imply some form of affiliation with Complainant is not a legitimate or fair use even under the “Oki Data Test”. WIPO Overview 3.0 at sections 2.5.1 and 2.8.2.
Given that Complainant has established with sufficient evidence that it owns rights in the BOTTEGA VENETA mark, and given Respondent’s above noted actions and lack of Response, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Respondent’s actions, as noted above, including its failure to respond to multiple demand letters and its lack of appearance in this proceeding, make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s BOTTEGA VENETA mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein).
That Respondent registered and used the disputed domain name in bad faith is further confirmed by Respondent’s clear attempt to position the website as somehow connected to or authorized by Complainant as selling lower priced versions of Complainant’s products. The repeated use of Complainant’s BOTTEGA VENETA mark alone or with terms such “store” are, at the very least, confusing particularly when a consumer sees the BOTTEGA VENETA mark alone with a “Shop Now” link along with images that conjure up Complainant’s website, and there is no disclaimer whatsoever anywhere on Respondent’s website making clear its lack of connection to or authorization by Complainant. Moreover, the fact that the product images on Respondent’s website closely resemble Complainant’s products and carefully avoid showing the branding or labeling suggests that Respondent may in fact be selling counterfeits. The cagy nature of the website coupled with the lack of information on the party operating the website underscores that Respondent is acting in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element 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 name <fakebottegaveneta.com> be transferred to Complainant.
Date: May 21, 2021