WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. shen xiao heng
Case No. D2021-3456
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is shen xiao heng, China.
2. The Domain Name and Registrar
The disputed domain name <bvlgarinewbag.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 the Complainant on October 20, 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 October 21, 2021.
On October 20, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 of the Complaint, and the proceeding commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any substantive response except that on November 24, 2021, December 2, 2021, and December 4, 2021, respectively, the Respondent sent four emails to the Center claiming that the disputed domain name is not owned by the Respondent. On November 24, 2021, the Center notified the Parties that it would proceed to the panel appointment process.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 8, 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 a company incorporated in Italy and established in 1884. The Complainant operates in the luxury goods and hotel markets, and is particularly known for its high-end jewellery and related luxury goods, marketed and sold under the trade mark BVLGARI (the “Trade Mark”) in more than 230 retail locations worldwide (including in China). The Complainant is the owner of numerous registrations for the Trade Mark in jurisdictions worldwide, including International registration No. 494237 (designating China), with a registration date of July 5, 1985.
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on July 12, 2021.
D. Use of the Disputed Domain Name
The disputed domain name previously resolved to a Chinese language website containing news articles and commercial links unrelated to the Complainant’s business and Trade Mark (the “Website”). As at the date of this Decision, the disputed domain name no longer resolves to any active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not substantively reply to the Complainant’s contentions, however, in his four email communications sent to the Center, the Respondent claimed not to be the registrant of the disputed domain name. The Respondent has not however submitted evidence in support of his claim. The Panel accordingly considers the Respondent to be the registrant of the disputed domain name as confirmed by the Registrar (i.e. “shen xiao heng”). The Panel also notes that, even if there were any evidence to support the Respondent’s claim, this would not prevent the Panel’s findings under the below three elements of paragraph 4(a) of the Policy.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
The Complainant requested that the language of the proceeding be English, for the following reasons:
(i) neither the Complainant nor its representatives are familiar with the Chinese language;
(ii) the Respondent is the holder of the disputed domain name which comprises the common English language words “new” and “bag”, as well many other domain names featuring English words;
(iii) the Respondent failed to respond to the Complainant’s English language cease and desist correspondence to convey that he does not understand English or would like to receive correspondence in another language;
(iv) the Complainant’s representatives are based in the United Kingdom and requiring a translation would result in the incurrence of additional expense and unnecessary delay.
The Panel would have accepted a response in Chinese, but the Respondent did not file a response. In his four emails transmitted to the Center, the Respondent did not comment on the language of the proceeding.
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.
Although there is insufficient evidence before the Panel to support a conclusion that the Respondent is conversant in English, the Panel notes that the Respondent has not commented on the language of the proceedings nor filed any substantive response; and that all of the Center’s communications with the Parties have been sent in English and Chinese.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) followed by the words “new” and “bag” (which words are descriptive of the products marketed and sold by the Complainant under the Trade Mark).
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name was previously used for commercial gain in respect of the Website, which contained sponsored links to websites unrelated to the Complainant and its goods marketed and sold under the Trade Mark; and it is presently not being used for an active website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given (i) the notoriety of the Complainant and of its Trade Mark in the high-end jewellery and luxury goods field (including in China, where the Respondent is based); (ii) the distinctiveness of the Trade Mark; (iii) the fact the Trade Mark has no meaning in the Chinese language; (iv) the fact the disputed domain name is confusingly similar to the Trade Mark; (v) the Respondent’s prior use of the disputed domain name, for commercial gain, in respect of the Website; (vi) the Respondent’s act of taking down the Website at some time following the filing of the Complaint; and (vii) the lack of any substantiated credible explanation from the Respondent, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time he registered the disputed domain name. Furthermore, the Respondent’s present non-use or passive holding of the disputed domain name would not prevent a finding of bad faith under the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and that the Complainant has satisfied paragraph 4(a)(iii) 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 <bvlgarinewbag.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: December 22, 2021