WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A v. 谢绮雯

Case No. DCN2019-0012

1. The Parties

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

The Respondent is 谢绮雯, China.

2. The Domain Name and Registrar

The disputed domain name <bulgaribeijing.cn> is registered with 成都西维数码科技有限公司 (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on November 12, 2019. In accordance with the Rules, Articles 17 and 49, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Sok Ling MOI as the sole panelist in this matter on December 10, 2019. 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, Article 29.

4. Factual Background

The Complainant is an Italian company founded in 1884, operating in the luxury goods and hotels markets. The Complainant’s luxury goods (such as rings, watches, necklaces and fragrance products) are sold in more than 230 retail locations worldwide. Since 2001, the Complainant owns several hotels in various locations including in London, Bali, Beijing, and Milan, with more to be launched in Shanghai, Dubai, and Moscow.

The Complainant uses the names BVLGARI and BULGARI synonymously for their business, but specifically, BVLGARI (which is in classical Latin alphabet) is used as a trade mark and brand for its goods and services while BULGARI (which is in the modern alphabet) is used to refer to the company name. The names BVLGARI and BULGARI, derived from the Complainant’s founder’s name, are highly distinctive and used extensively to identify the Complainant’s goods and services and business.

The Complainant owns trade mark registrations for BVLGARI and BULGARI in several jurisdictions in connection with its luxury goods and hotel services, including the following trade mark registrations:

Mark

Country

Class

Registration Number

Registration Date

BVLGARI

International Registration designating China

9, 35, 38, 42

1290822

December 23, 2015

BVLGARI

International registration designating China

3, 8, 11, 14, 16, 18, 20, 21, 25, 34

543321

October 11, 1989

BVLGARI

Italy

25, 34, 38, 41

0000984147

November 18, 2005

BULGARI

Italy

11, 14, 20, 21

0000896469

June 11, 2003

BVLGARI

European Union

35, 36, 41, 43

007138101

June 3, 2009

BVLGARI

United States of America

25

2954459

May 24, 2005

The Complainant also owns the domain names <bulgari.com> (registered on February 17, 1998) and <bulgarihotels.com> (registered on December 13, 2000), and operates websites linked to these domain names to provide information about its luxury goods and hotels respectively.

The disputed domain name <bulgaribeijing.cn> was registered on July 13, 2019. It currently resolves to a website which shows the BVLGARI and BULGARI trade marks and purports to offer for reservation rooms at the Complainant’s hotel in Beijing. There are also links to third party hotels at the bottom of the website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its BVLGARI and BULGARI trade marks, the Respondent has no rights or legitimate interests in respect to the disputed domain name or major part of it, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to Article 6 of the Policy and Article 8 of the Rules, unless otherwise agreed by the Parties, or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese. The Panel may order that any documents submitted in languages other than Chinese be accompanied by a translation in whole or in part into Chinese.

From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Complainant contends that the Respondent can read and understand English as the Respondent’s website carries contents in English. Furthermore, the Complainant submits that the Respondent has a portfolio of over 500 domain names, many of which feature English words (such as <anybayhotel.cn>, <birdshotel.cn>, and <fairytalehotel.cn>). The Complainant further contends that requiring it to translate the Complaint and supporting documents into Chinese will lead to undue delay and impose substantial cost burden on the Complainant.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the website to which the disputed domain name resolves offers the language choice between Chinese and English, and the contents of the English version are almost entirely in English; and

(c) the Respondent has registered several other domain names which incorporate English words.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Article 31 of the Rules requires the Panel, inter alia, to “ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case” and to “ensure that the proceedings take place with due expedition”.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Article 8 of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(a) the disputed domain name is identical with or confusingly similar to a name or mark in which the Complainant has civil rights or interests;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; and

(c) the Respondent has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy states that the complainant and the respondent shall bear the burden of proof for their own claims.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical with or Confusingly Similar to the Complainant’s name or mark in which the Complainant has civil rights or interests

The Panel accepts that the Complainant has rights in the BVLGARI and BULGARI trade marks by virtue of use and registration. The BVLGARI and BULGARI trade marks have been registered worldwide and in China, and enjoy a strong reputation as being associated with the Complainant.

The disputed domain name is confusingly similar to the BVLGARI and BULGARI trade marks because it incorporates the BULGARI trade mark in its entirety and the BVLGARI trade mark with the letter “v” replaced by “u”. The Panel finds that the inclusion of the geographical term “Beijing” does not prevent a finding of confusing similarity, as the BVLGARI and BULGARI trade marks are recognizable in the disputed domain name. The addition of the country code Top-Level Domain (“ccTLD”) “.cn” does not detract from the confusing similarity and is usually disregarded in the analysis.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the BVLGARI and BULGARI trade marks in which the Complainant has civil rights, or interests.

Accordingly, the Complainant has satisfied the condition under Article 8(a) of the Policy.

B. Rights or Legitimate Interests

Under Article 10 of the Policy, the Respondent may establish its rights to and legitimate interests in the disputed domain name by demonstrating any of the following before receiving the Complaint:

(a) The Respondent uses of 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

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

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

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BVLGARI or BULGARI trade marks or to seek registration of any domain name incorporating the trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that it has any rights or legitimate interests in the name “bulgari”.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website that offers for reservation rooms at the Complainant’s BULGARI hotel in Beijing, referenced by photographs of the said hotel. Further, the said website claims to be “the Bulgari Hotel Beijing official site”. Such use is misleading and is disruptive to the Complainant’s business, and cannot be considered bona fide, or a legitimate noncommercial or fair use of the disputed domain name.

Given the long standing use and reputation of the Complainant’s trade marks, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.bulgaribeijing.cn” is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s goods or hotel services to the Respondent’s website. The said website offers hotel room booking services, which may lead to Internet users disclosing confidential credit card information and other personal data to the Respondent. Such activities are not considered a bona fide offering of services. Moreover, there are links to third party hotels at the bottom of the website at the disputed domain name.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name or the major part of the disputed domain name.

Accordingly, the Complainant has satisfied the condition under Article 8(b) of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy provides certain examples of circumstances which, may be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) the purpose for registering or acquiring the disputed domain name is to sell, rent, or otherwise transfer the disputed domain name registration to the Complainant who is the owner of the name or mark or to a competitor of that Complainant, and to obtain unjustified benefits; or

(b) the Respondent registers the disputed domain name in order to prevent owners of the names or marks from reflecting the names or marks in corresponding domain names; or

(c) the Respondent has registered or acquired the disputed domain name for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating confusion with the Complainant’s name or mark so as to mislead the public; or

(d) Other circumstances which may prove the bad faith.

The Panel finds that the Respondent has registered the disputed domain name in bad faith. The Complainant enjoys a strong reputation in its distinctive BVLGARI and BULGARI trade marks in connection with its luxury goods and hotel services. The Respondent was clearly aware of the Complainant and of its BVLGARI and BULGARI trade marks and hotels when it registered the disputed domain name. The fact that the Respondent purports to offer valid room reservation services at the Complainant’s “Bulgari Hotel Beijing”, and that its website publishes photos of the Complainant’s hotel, augments this conclusion.

The Panel agrees with the Complainant’s assertion that the Respondent is using the disputed domain name to take advantage of the similarity with the Complainant’s BVLGARI and BULGARI trade marks, to unfairly attract customers to its website. Further, by purporting to offer valid room reservation services at the Complainant’s “Bulgari Hotel Beijing” despite the lack of affiliation or association with the Complainant, it is clear that the Respondent has intent to mislead consumers and Internet users into believing that its website “www.bulgaribeijing.cn” is owned by or somehow connected with the Complainant. There is also a likelihood that the said website could be used to phish for credit card and financial information as well as other personal data, if users do attempt to book hotel rooms through the website. Moreover, there are links to third party hotels at the bottom of the website at the disputed domain name.

Furthermore, efforts to send the Written Notice to the Respondent at the physical address provided by the Respondent to the Registrar (and in turn to the Center) failed, which suggests that the Respondent had provided false contact details.

The Panel is therefore satisfied that the Respondent is using the disputed domain name to create confusion with the Complainant’s trade marks so as to mislead the public, as well as to obtain illegitimate financial gain. The circumstances referred to in Articles 9(c) and (d) of the Policy are applicable to the present case.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain name or the major part of the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the condition under Article 8(c) of the Policy.

7. Decision

For the foregoing reasons, in accordance with Article 14 of the Policy and Article 40 of the Rules, the Panel orders that the disputed domain names <bulgaribeijing.cn> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: January 9, 2020