WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Tool Domains Ltd

Case No. DRO2019-0012

1. The Parties

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

The Respondent is Tool Domains Ltd, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <bvlgari.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 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 November 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 6, 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, paragraph 7.

4. Factual Background

The Complainant is an Italian company founded in 1884 that operates in the luxury industry, selling products such as rings, watches, necklaces and perfumes. The Complainants counts more than 230 retailers worldwide. Since 2001, the Complainant also holds hotels as a result of a joint venture between itself and Luxury Group, a division of Marriott International. The Complainant’s hotels are located in major cities such as London, Beijing, Milan, Bali, and Dubai.

The Complainant holds numerous trademarks on a worldwide basis consisting of the term “bvlgari”, such as:

- International trademark TM 494237, registered on July 5, 1985 in classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34;
- European Union trademark 007138101 registered on June 3, 2009 in classes 35, 36, 41, and 43.

The Complainant holds several domain names to carry out its online activities. It notably registered <bulgari.com> on February 17, 1998, and owns several social media accounts on Facebook, Twitter, Instagram, and Pinterest.

The Respondent registered <bvlgari.ro> on August 30, 2018. The disputed domain name relates to a website merely stating “No Sponsors – Bvlgari.ro currently does not have any sponsors for you”.

The Respondent further owns several domain names consisting of well-known brands, such as: <amstel.ro>, <giorgioarmani.ro>, <logitech.uk>, and <oakleysunglasses.org.uk>.

On August 2, 2019, the Complainant sent a cease and desist letter to the Respondent, in which it drew the Respondent’s attention upon its rights, inviting him to transfer the disputed domain name in its favor. The letter was also sent by email to the Respondent on September 2, 2019.

On September 2, 2019, the Respondent responded by email to the Complainant, asking for an amount of EUR 250 in consideration for such transfer, further stating in a further email of September 10, 2019:

“Hi, we have registered 600 000 domains in the past 3 years and been through hundreds of disputes. […].

We do not give away domains for free and if you continue to waste my time with pointless letters we’ll register 100 domains for each brand you protect (of which it’s super easy to get a list because we have reverse engineered zone files for all TLDs and you as registrar are visible on all your client domains just for fun”.

The disputed domain name is currently offered for sale on Afternic.

5. Parties’ Contentions

A. Complainant

The Complainant first argues that disputed domain name is confusingly similar to its BVLGARI trademark as it entirely incorporates its trademark.

The Complainant then affirms that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not known by the term “bvlgari”, does not hold any trademark rights in such designation, and has not been authorized to use it by the Complainant in any way.

The Complainant finally considers that the disputed domain name has been registered and is being used in bad faith. Considering the strong reputation and distinctiveness enjoyed by the trademark BVLGARI, the Complainant considers that the Respondent was perfectly aware of its existence when it registered the disputed domain name <bvlgari.com>. In the Complainant’s view, the disputed domain name was clearly registered by the Respondent in order to try and sell it, ideally to the Complainant but potentially also to third parties considering its offer to sell it to the Complainant for EUR 250 and its listing on the Afternic website. The passive holding by the Respondent of several domain names consisting of well-known brands further tends to demonstrates that the Respondent is engaged in a pattern of conduct to register such brands, a behavior that amounts to a usage in bad faith of the related domain names.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds numerous trademarks throughout the world consisting of the term “BVLGARI”.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000‑0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002‑0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007‑1629). Such is the case here, where users are likely to believe that the disputed domain name <bvlgari.ro> is the Complainant’s official domain name in Romania.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Complainant is the owner of the BVLGARI trademark that enjoys a significant reputation. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not object to these assertions. To the contrary, the Respondent expressly acknowledges that it has registered over 600,000 domain names over the last years and been involved in hundreds of disputes; these assertions, coupled with its offer to sell the disputed domain name to the Complainant in consideration for EUR 250 and its registration of further well-known trademarks belonging to third parties as domain names, blatantly demonstrate its lack of legitimate interest in the disputed domain name.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s “BVULGARI” trademarks enjoy a strong reputation. Considering this strong reputation, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name.

The use of the disputed domain name further clearly reflects a use in bad faith on several accounts: first, the disputed domain name has been offered for sale to the Complainant for EUR 250, an amount in excess of the out-of-pocket costs resulting from such registration. Second, the Respondent acknowledges to have been engaged in hundreds of disputes and currently holds other domain names consisting of third parties well-known trademarks such as <amstel.ro>, <giorgioarmani.ro>, <logitech.uk> and <oakleysunglasses.org.uk>. Finally, considering the strong reputation enjoyed by the Complainant’s BVULGARI trademark, one cannot contemplate any legitimate and good faith used that could be made by a third party.

Consequently, the Panel is of the opinion that the disputed domain name <bvulgari.ro> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.

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 <bvlgari.ro> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: December 13, 2019