WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Luigi Corsetti

Case No. DCO2021-0037

1. The Parties

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

The Respondent is Luigi Corsetti, Italy.

2. The Domain Name and Registrar

The disputed domain name <bulgarireplica.co> is registered with Soluciones Corporativas IP, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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 May 27, 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 on May 28, 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 May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2021.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 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 is an Italian company founded in 1884, operating in the field of luxury goods.

The Complainant’s headquarters are in Rome, Italy. In the 70s the Complainant expanded its presence abroad, in New York, Paris, Geneva, and Montecarlo. Today, the Complainant has more than 230 retail locations worldwide.

Since 2001, the Complainant also operates several hotels, in particular in the major international cities such as London, Dubai, and Shanghai.

The Complainant is the owner of numerous registered trademarks for BULGARI and BVLGARI, among which are the following:

Trademark

Jurisdiction

Registration No.

Registration Date

Classes

BULGARI

Italy

896469

June 11, 2003

11, 14, 20, 21

BULGARI

Italy

1140217

September 22, 2008

11, 20, 21

BVLGARI

United States of America

1694380

June 16, 1992

18

BVLGARI

Canada

TMA312178

March 14, 1986

14, 21, 26

BVLGARI

International

494237

July 5, 1985

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

BVLGARI

European Union

7138101

June 3, 2009

35, 36, 41, 43

The Complainant registered its first domain name <bulgari.com> on February 17, 1998 and has an online presence ever since.

The Respondent is an Italian individual residing in Naples, Italy.

The disputed domain name was registered on January 6, 2021 and leads to a website offering for sale, replicas of the Complainant’s iconic “B.Zero1” ring collection, while using the Complainant’s BULGARI and BVLGARI marks, as well as replicas of third party’s well-known products, such as Rolex watches.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s trademarks as it incorporates the BULGARI trademark followed by the word “replica”. Where the Complainant’s trademark is recognizable within the disputed domain name, the addition of other terms, including descriptive terms, does not prevent a finding of confusing similarity.

According to the Complainant, the Respondent lacks rights or legitimate interest in respect of the disputed domain name. In particular, the Complainant points out that the Respondent does not own any registration or application for the trademarks BULGARI or BVLGARI, nor any unregistered trademark rights over these marks. Moreover, the Complainant did not license its trademarks to the Respondent, nor authorised the Respondent to reflect the BULGARI mark in the disputed domain name. The Respondent has no connections or affiliations with the Complainant and is not commonly known by the name “bulgarireplica”. The disputed domain name is used to advertise counterfeiting goods and this use cannot amount to a bona fide offering of goods or services, or to a noncommercial or fair use of the disputed domain name.

With regard to the registration and use of the disputed domain name in bad faith, the Complainant maintains that the trademark BULGARI enjoys substantial reputation and is univocally associated to the Complainant. The registration of a domain name including this trademark along with the term “replica” shows that the Respondent was clearly aware of the Complainant’s rights when it registered the disputed domain name.

Furthermore, the Respondent has been using the disputed domain name to advertise the sale of counterfeit goods and, before its registration, has registered and used the identical domain name <bulgarireplica.it> to host a website with an identical content. In respect of the registration of this domain name, the Complainant points out that despite the registrant’s name is not that of the Respondent but of a certain “[…]”, it is clear that <bulgarireplica.it> and the disputed domain name are under a common control, due to the fact that the technical contact details are the same and the contents of the respective websites are identical. Furthermore, the disputed domain name was initially used to redirect Internet visitors from the domain name <bulgarireplica.it>. This domain name was reassigned to the Complainant on December 21, 2020, following a “.it” ADR proceeding.

The Complainant also argues that the Respondent ha engaged in a pattern of abusive conduct by registering other domain names including third party’s renowned trademarks, such as ROLEX. Examples of these domain names are <replicarolex.co>, <rolexassemblati.co> and <rolexreplica2u.co>.

In view of the foregoing, the Complainant concludes that the Respondent’s primary intention is that of capitalising on the Complainant’s reputation to derive commercial gain, and that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the Complainant’s BULGARI trademark followed by the term “replica”. Pursuant to section1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[W]here 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”. In the instant case, there are no doubts that the Complainant’s trademark is the dominant element of the disputed domain name, while the term “replica”, which refers to the website contents, does not prevent the Complainant’s trademark from being recognizable in the disputed domain name.

In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BULGARI trademark and that the first element under the Policy is met.

B. Rights or Legitimate Interests

It is a generally established principle that once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleges that it never licensed its trademarks to the Respondent and that it did not authorize the Respondent to incorporate its BULGARI trademark in the disputed domain name. Furthermore, there is no evidence in the file that the Respondent owns any registered or unregistered rights over the trademarks BULGARI or BVLGARI.

The Respondent is using the disputed domain name in connection with the promotion of sale of replicas of the Complainant’s iconic “B.ZERO1” rings, displaying the Complainant’s BULGARI and BVLGARI trademarks and the promotion of sale of ROLEX® watches. The use of a domain name to sell counterfeit goods can never confer rights or legitimate interests on a respondent. This is so irrespective of any disclosure on the relevant website that such infringing goods are replicas of the original goods (see in this respect, section 2.13 of the WIPO Overview 3.0., as well as, by way of example, Saule, LLC, 100% Speedlab, LLC v. Jiang Lihang, WIPO Case No. D2021-1529, <replica100percentsunglasses.com>).

The above-mentioned circumstances are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent failed to present any argument in support of its rights or legitimate interests, the Panel is satisfied that also the second element under the Policy is met.

C. Registered and Used in Bad Faith

The Complainant’s trademarks certainly enjoy extensive reputation, particularly in the jewelry field. The Complainant’s headquarters are located in Italy and the Complainant has registered its BULGARI and BVLGARI trademarks worldwide since at least 30 years. The Respondent is an Italian individual using the disputed domain name to provide access to a website promoting the sale of replicas of well-known Complainant’s jewelry goods displaying the Complainant’s marks at reduced prices. The relevant website also promotes the sale of other counterfeit goods, in particular of replicas of Rolex watches.

Therefore, on the one hand it is clear that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant and of its trademarks; on the other hand, it is also clear that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark.

Furthermore, the Complainant has provided evidence of the fact that the Respondent has targeted the Complainant and its well-known trademarks in other occasions. As already mentioned above, although apparently registered in the name of another individual, it appears that the domain name <bulgarireplica.it> was under the control of the Respondent, because it led to an identical website. In addition, while assessing the merits of this case, the Panel has conducted some limited factual researches as permitted by paragraph 10 of the Rules. In so doing, the Panel has noted that the disputed domain name redirects to a different Internet address, at “www.bulgarireplica.cc”, which is an indication of the fact that the Respondent has also registered the domain name <bulgarireplica.cc> or at least that this domain name is under the Respondent’s control.

Finally, the Panel finds that the Respondent has engaged in a pattern of bad faith registration of domain names similar to the one at issue, being also the registrant of domain names like <replicadirolex.co>, <rolexassemblati.co> and <rolexreplica2u.co>.

For all the reasons mentioned above, the Panel concludes that the disputed domain name has being registered and used in bad faith. Thus, also the third and last element under the Policy is satisfied.

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 disputed domain name <bulgarireplica.co> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: July 26, 2021