WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. Wang Zhi Chao
Case No. D2021-3488
1. The Parties
The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Wang Zhi Chao, China.
2. The Domain Name and Registrar
The disputed domain name <bvlgari-brandjapan.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 22, 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 25, 2021.
On October 22, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 25, 2021. 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 in English and Chinese of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on November 29, 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
Founded in 1884 by Sotirious Voulgaris, the Complainant is an Italian company operating in the luxury goods and hotel industry, particularly know for high-end jewellery. Headquartered in Rome, Italy, the Complainant has more than 230 retail locations worldwide. The company name “Bulgari” is derived from the Italianized version of the founder’s surname and the classic Latin alphabet version “Bvlgari” as the brand name. The terms “Bulgari” and “Bvlgari” are often used synonymously.
The Complainant is the owner of a range of trade mark registrations for the BVLGARI mark. For example, United States of America Registration No. 1694380 in class 18 registered on June 16, 1992, International Registration No. 494237, designating, inter alia, Japan, China and Singapore, registered on July 5, 1985; and European Union Registration No. 007138101 in classes 35, 36, 41 and 43 registered on June 3, 2009.
The Complainant is also the owner of the domain name <bulgari.com> registered on February 17, 1998, which is its official website address.
The Respondent is Wang Zhi Chao, China.
The disputed domain name was registered on July 17, 2021. According to the evidence provided by the Complainant, the disputed domain name previously redirected Internet users to <winner57.com> which hosts gambling-related content. At the time of this decision, the disputed domain name does not resolve to an active website because the website server is down.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered BVLGARI mark, the value of which has been recognized in previous panel decisions. The Complainant’s registered mark is recognizable within the disputed domain name and the additional terms would not prevent a finding of confusingly similarity. The extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s marks and the disputed domain name.
The Complainant further alleges that the Respondent does not hold registered or unregistered rights to “Bvlgari”, nor is the Respondent known by the term. The Respondent has not received a license from the Complainant to use a domain name which features the BVLGARI mark. The disputed domain name redirects to another website hosting gambling-related content. It is clear from the use of the disputed domain name that the Respondent intends to divert Internet users looking for the Complainant’s brand to a website offering unrelated content. This does not constitute an offering of goods and services in good faith.
The Complainant finally asserts that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. The Complainant’s earliest BVLGARI trade mark registration predates the creation date of the disputed domain name by 36 years. The Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark by registering and using the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the registration agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) the disputed domain name comprises common English language words, such as “brand” and “Japan”;
(b) the disputed domain name redirects to a website which comprises English words and also has the function to change the language to English;
(c) the Respondent failed to respond to the Complainant’s English language cease and desist correspondence to convey that he does not understand English;
(d) the Complainant’s representatives are based in the United Kingdom and requiring a translation would result in additional expense and unnecessary delay.
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 Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) the Complainant is a company based in Italy with representatives in the United Kingdom. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request;
(d) the Respondent has failed to participate in the proceeding even though the Center sent the notification in English and Chinese of the Complaint, and has been notified of its default; and
(e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this Decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the BVGLARI mark.
The Panel notes that the BVGLARI mark is wholly encompassed within the disputed domain name. The positioning of the BVGLARI mark before the words “brand” and “japan” separated by a hyphen makes it instantly recognisable as the most distinctive element of the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, or 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. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the finding of confusing similarity of the disputed domain name from the trade mark under the first element of the Policy. Accordingly, the additional descriptive words “brand” and country name “japan”, which are closely related to the Complainant’s luxury retail and hotel businesses, do not affect the confusing similarity between the disputed domain name and the Complainant’s mark. See section 1.8 of the WIPO Overview 3.0.
Lastly, it is permissible for the Panel to ignore the Top Level Domain (“TLD”), in this case “.com”, under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BVGLARI mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the BVLGARI mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
There is no indication to show that the Respondent is commonly known by the disputed domain name, owns trade mark registrations, or otherwise has rights or legitimate interests in the BVLGARI mark. Further, the Complainant has not granted the Respondent any license or authorization to use the BVLGARI mark or register the disputed domain name. In addition, the Complainant submitted exhibits showing that the disputed domain name redirected to a website hosting gambling-related content. On the other hand, the Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “bvlgari” in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s BVLGARI mark has been widely registered around the world. The disputed domain name was registered long after the registration of the Complainant’s BVLGARI mark. Through extensive use and advertising, the Complainant’s BVLGARI mark is known throughout the world. Search results using the key word “bvlgari” on popular Internet search engines direct Internet users to the Complainant and its business, which indicates that an exclusive connection between the BVLGARI mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s BVLGARI mark when registering the disputed domain name, and has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “[…] 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 trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name is confusingly similar to the widely known BVLGARI mark coupled with the descriptive terms “brand” and “japan”, and was registered by the Respondent who has no relationship with the Complainant, which means that a presumption of bad faith can be created.
The Panel notes that the disputed domain name was previously used by the Respondent to redirect to a website featuring online gambling content, which demonstrates the Respondent’s intention to make commercial gain from the website by creating a likelihood of confusion with the Complainant’s mark and attracting Internet users. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(iv) of the Policy.
In addition, the Panel finds although the disputed domain name does not resolve to any website, the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considers the degree of distinctiveness and reputation of the Complainant’s BVLGARI mark, as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0.
Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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, <bvlgari-brandjapan.com>, be transferred to the Complainant.
Date: December 13, 2021