WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. gaorun xian and qizhao wang
Case No. D2021-2930
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondents are gaorun xian and qizhao wang, China (the “Respondent”).
2. The Domain Names and Registrar
The disputed domain names <bvlgaritw.com> and <tw-bvlgari.com> (the “Domain Names”) are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 7, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2021 providing the registrant and contact information of nominally multiple underlying registrants disclosed by the Registrar, and inviting the Complainant (i) to submit an amendment to the Complaint demonstrating that the underlying registrants are in fact under common control, or the same entity, or (ii) to submit a separate complaint for each Domain Name. The Complainant filed an amended Complaint on September 14, 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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 13, 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 is an Italian company that operates in the luxury goods and hotel markets. The Complainant is particularly known for its high-end jewelry. The Complainant, together with its affiliates, subsidiaries and associated companies, owns numerous trademark registrations for the well-known mark BVLGARI, such as:
- United States registration No. 1694380 for the mark BVLGARI, registered on June 16, 1992;
- Canadian registration No. TMA312178 for the mark BVLGARI, registered on March 14, 1986;
- International registration No. 494237 for the mark BVLGARI, registered on July 5, 1985.
The Respondent registered the Domain Name <bvlgaritw.com> on April 9, 2021 and the Domain Name
<tw-bvlgari.com> on May 6, 2021. Currently, the Domain Names do not resolve to any active websites. At the time the Complaint was filed, the Domain Names used to direct to websites featuring adult content and online betting content.
On May 18, 2021, the Complainant’s representative sent the Respondent a cease-and-desist letter, advising the Respondent about its unauthorized use of the BVLGARI trademark, but received no response from the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it is an Italian company that operates in the luxury goods and hotel markets. The Complainant contends that it is particularly known for its high-end jewelry. The Complainant alleges that it, together with its affiliates, subsidiaries and associated companies, owns trademark registrations for the well-known mark BVLGARI within numerous jurisdictions. The Complainant claims that the Domain Names are confusingly similar to its trademark because the BVLGARI trademark is recognizable within the Domain Names. The Complainant argues that because both Domain Names incorporate the BVLGARI trademark in its entirety, the addition of the letters “tw” in both Domain Names, is not sufficient to prevent a finding of confusing similarity. The Complainant requests that the generic Top-Level Domain (“gTLD”) “.com” in the Domain Names is disregarded under the confusing similarity test as a standard registration requirement.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the Domain Names for the following reasons: (i) the Respondent has not registered any trademarks for the term BVLGARI; (ii) the Respondent has not received any license from the Complainant to use the BVLGARI trademark in the Domain Names; (iii) The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services because the Domain Names are used by the Respondent to host websites unrelated to the Complainant. The Domain Name <bvlgaritw.com> is used to host a website that displays pornographic content. The Domain Name <tw-bvlgari.com> is used to advertise online betting, gambling websites as well as adult content; (iv) the Respondent has never been known as BVLGARI.
The Complainant contends that the Respondent both registered and is using the Domain Names in bad faith. The Complainant alleges that its earliest BVLGARI trademark registration predates the creation dates of the Domain Names by 36 years. The Complainant argues that its trademark is well-known, so the Respondent registered the Domain Names to intentionally target the Complainant’s brand. The Complainant claims that on May 18, 2021, it sent a trademark infringement notice to the Respondent via the Registrar’s online form, but the Respondent did not reply to it. The Complainant asserts that prior to notice of the Complaint, the Respondent used the Domain Names in bad faith. The Complainant asserts that the Respondent’s use of the Domain Names to advertise links that redirect unsuspecting Internet users intending to land on the Complainant’s website to other third-party websites, is an attempt to generate commercial profits.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issue – Consolidation of the Parties
The Complainant was originally submitted against “N/A” located in Shan Dong, China, and “N/A” located in Guang Dong, China. Upon receiving different underlying registrant details from the concerned Registrar, the Complainant submitted a request for consolidation of the Respondents gaorun xian and qizhao wang in the same proceeding. The Respondent did not object to the consolidation.
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”1
It is well-established that a single consolidated complaint may be brought against multiple respondents where “(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.” 2 The following factors, which have been found to warrant consolidation are: “similarities in or relevant aspects of […] (ii) the registrants’ contact information including email address(es)[…] (iii) relevant Internet Protocol (‘IP’) addresses […] (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>) […] (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s).” 3
It is likely that in this case, the Domain Names are under the common control for the following reasons:
(i) Both named Respondents are based in China and use the Domain Names to host similar content.
(ii) Composition of both Domain Names is similar. Both Domain Names incorporate the Complainant’s BVLGARI trademark, with the addition of the letters “tw” as the prefix in one of the Domain Names and as the suffix in the other.
(iii) It is not very likely that separate registrants, having no connection with each other, would register domain names targeting the same trademark in an identical manner hosting similar content.
(iv) The Domain Names were registered with the same Registrar and within one month of each other: on April 9, 2021 and May 6, 2021 respectively.
(v) The Domain Names have the same Name Servers.
The Panel finds that taken together, the circumstances of this case indicate that the Domain Names are subject to common control. Absent any objection from the Respondent, the consolidation is fair and equitable to all of the parties.
6.2. Substantive Issues
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to each of the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark 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 have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns several trademark registrations for the BVLGARI trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
“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.”4 It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.5
The Domain Names consist of the Complainant’s BVLGARI trademark, the letters “tw” preceding or following the Complainant’s mark, a hyphen and the gTLD “.com”. Because the Complainant’s BVLGARI trademark is recognizable within the Domain Names, neither the addition of the letters “tw”, nor the addition of a hyphen prevents a finding of confusing similarity. The gTLD “.com” is disregarded as a standard registration requirement. Therefore, the Domain Names are confusingly similar to the Complainant’s BVLGARI trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.6
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark 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 or to tarnish the trademark or service mark at issue.
The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s BVLGARI trademark in domain names, or for any other purpose. There is no evidence that the Respondent has ever been commonly known by the Domain Names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services because the Domain Names are used by the Respondent to host websites unrelated to the Complainant. The Respondent used to use the Domain Name <bvlgaritw.com> to host a website that displays pornographic content. The Respondent used the Domain Name <tw-bvlgari.com> to advertise online betting, gambling websites as well as adult content. Even assuming that the Respondent had been engaged in legitimate business activities related to the marketing and promotion of lawful adult content, there is no apparent or legitimate reason for the Respondent’s selection of a domain name comprised of the BVLGARI trademark for Chinese websites advertising pornographic and gambling content.
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Names has shifted to the Respondent. Since the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Names were registered and are being used in bad faith.
The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the respondent’s website or location. See Policy, paragraph 4(b)(iv).
The Domain Names used to direct websites featuring a variety of sexually explicit images with links to pornographic video. Therefore, it is likely, that the Respondent used the Domain Names to intentionally attract, for commercial gain, Internet users to its websites, by creating likelihood of confusion with the Complainant’s mark. See Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639 (finding the respondent’s use of the domain for a pornographic website constituted “a strong indication of bad faith registration and use,” because it showed respondent’s main purpose was “to create a likelihood of confusion among customers and/or to tarnish the Complainant’s RED BULL trademark for commercial gain or any other illegitimate benefit”); Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 (finding bad faith where the domain resolved to a website “at which adult content and links to websites at which pornographic contact [was] being offered, tarnishing Complainant and its trademark, and for which Respondent [was] likely receiving commercial gain”).
Currently, the Domain Named do not point to websites. It is well-established that non-use of a domain name does not prevent finding of bad faith.7 “[P]anelists have found 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”. In similar situations, UDRP panelists look into the totality of circumstances in a specific case, including the following: “(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.”8
The following circumstances further support finding of the Domain Names’ bad faith registration and use: 1) the Complainant’s trademark is well-known and the Complainant’s trademark registrations for the BVLGARI Marks predate the Domain Names’ registration by the Respondent by 36 years; 2) the Respondent’s failure to respond to the Complainant’s cease and desist letter; 3) the Respondent’s failure to submit a response in this case or to provide any evidence of good faith registration and use; and 3) The Respondent’s prior use of the Domain Names for Chinese websites featuring gambling related and adult content, which has no connection to the composition of the Domain Names, which makes any good faith use of the Domain Names implausible.
Based on the above, the Complainant has satisfied the third element of the UDRP.
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, <bvlgaritw.com> and <tw-bvlgari.com>, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: November 25, 2021
1 Section 4.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”.
2 Section 4.11.2, WIPO Overview 3.0.
3 Id.
4 Section 1.8., WIPO Overview 3.0.
5 Section 1.11.1, WIPO Overview 3.0.
6 Section 2.1, WIPO Overview 3.0.
7 Section 3.3, WIPO Overview 3.0.
8 Id.