WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. 王先锋 (wang xian feng), 吴斌靓 (wu bin jing), 沈晓宇 (chen xiao yu)

Case No. D2021-1005

1. The Parties

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

The Respondents are 王先锋 (wang xian feng), 吴斌靓 (wu bin jing), and 沈晓宇 (chen xiao yu), China.

2. The Domain Names and Registrar

The disputed domain names <bvlgarishwx.com>, <bvlgari-wxd.com> and <bvlgarizxfw.com> (the “Domain Names”) are all registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on April 9, 2021.

On April 7, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 9, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 the Respondent in Chinese and English of the Complaint, and the proceedings commenced on April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 5, 2021.

The Center appointed Karen Fong as the sole panelist in this matter on May 14, 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, its affiliates, subsidiaries and associated companies own the distinctive trade mark BVLGARI. Founded in the year 1884, the Complainant produces and markets jewelry, watches, fragrance and accessories under the BVLGARI trade mark. Since 2001, the Complainant also operates a chain of luxury hotels in many locations worldwide including Milan, London, Bali, Dubai and Beijing.

The “BVLGARI” name derives from the Italianised version of the founders name, “Voulgaris”. The trade mark is written both as “BVLGARI” in the classic Latin alphabet and “BULGARI” in modern alphabet. They are used synonymously with the intention that “BULGARI” is used in relation to the company name and “BVLGARI” in relation to the brand name.

The BVLGARI trade mark is registered worldwide including in the United States of America, the European Union and China where the Respondents are based. The earliest trade mark registration submitted in evidence dates back to July, 5, 1985 (International trade mark registration no. 494237) (the “Trade Mark”). The BVLGARI trade mark is extensively promoted through its official website – “www.bulgari.com” as well as through social media, advertising and other means.

The Complaint involves three Domain Names which are registered to multiple Respondents, based in China, as detailed below:

All three Domain Names resolve to websites which prominently bear the Trade Mark, copyright materials belonging to the Complainant including images of watches bearing the Trade Mark and purport to be authorized service centers of BVLGARI watches (the “Websites”).

A cease and desist letter was sent to the registrant of the Domain Names <bvlgarizxfw.com> and <bvlgari-wxd.com> via online form on February 10 and February 11, 2021, respectively. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrants are related and under management and common control of a single network are as follows:

(i) all the Domain Names are registered with the same Registrar over the period of only ten days with two of the Domain Names registered on the same date, and are hosted on the same IP address;
(ii) all the Domain Names host the Websites which are very similar in style and content;
(iii) the Domain Names all bear the Trade Mark followed by a descriptive or generic term; and
(iv) the contact details of all three Respondents do not point to a verifiable location indicating that all three Domain Names have false contact details.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation of Proceedings

The Complainant has filed a single Complaint in relation to three Domain Names against multiple Respondents. In relation to the position of a complaint being filed against multiple respondents, Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in such cases, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation of multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfil the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.

In the present case, the Complainant submits that the Domain Names are subject to common control for the reasons outlined above.

The evidence submitted points to the fact that the Domain Names are subject of common control by the Respondents. The above pattern evidences common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Mark. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.

The Respondents had the opportunity but did not respond to the Complaint.

Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.

In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.

6.2 Language of the Proceeding

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

(i) the Websites include text in both the Chinese and English language which indicates that the Respondent is able to communicate in English;

(ii) the Respondent has a portfolio of domain names which are connected to third party trade marks which also have English language text, which suggests that the Respondent understands English and therefore would not be in any way prejudiced if the proceeding is conducted in English; and

(iii) the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

6.3 General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i)the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii)the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii)the Domain Names were registered and are being used in bad faith.

6.4 Substantive Analysis

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the BVLGARI trade mark.

The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case, all the Domain Names comprise the well-known BVLGARI trade mark in its entirety together with random letters of the alphabet and in one of the Domain Names, a hyphen - “-wxd”, “shwx” and “zxfw”. None of these additions in any way detract from the fact that the Domain Names are identical or confusingly similar to the Trade Mark.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent does not own any trade marks or trade names that correspond to the Domain Name. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Respondent is not commonly known by the Domain Names. The Respondent purports to be an authorised repair centre of the Complainant’s products and from the Websites, purport to be connected to the Complainant, when it is not the case.

Section 2.8.1 of WIPO Overview 3.0 provides that:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. The Panel finds the Oki Data principles are not satisfied in this case.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

Given that the Respondent is purporting to be an authorised service center of the Complainant’s products, it is clearly inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.

The Panel also concludes that the actual use of the Domain Names is also in bad faith. The use of the dominant element of the Trade Mark as part of the Domain Names followed by letters of the alphabet is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products and services. The Domain Names and the content of the Websites are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Websites and the products or services offered on them were authorised or endorsed by the Complainant. The above is clearly use in bad faith under paragraph 4(a)(iv) of the Policy.

Further, the Respondent is the owner of up to 151 domain names which comprise trade marks owned by different trade mark owners e.g. “BREITLING”, “MONT BLANC” AND “OMEGA”. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“[the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided [the respondent has] engaged in a pattern of such conduct”). This is part of such a pattern of conduct as the Respondent is engaged in a pattern of registration of a series of domain names incorporating well-known trade marks and therefore the Respondent’s use of the Domain Names is in bad faith.

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 Names, <bvlgarishwx.com>, <bvlgari-wxd.com> and <bvlgarizxfw.com>, be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: June 16, 2021