WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Stefan Paraniac

Case No. D2019-2018

1. The Parties

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

The Respondent is Stefan Paraniac, Italy.

2. The Domain Name and Registrar

The disputed domain name <hotelbulgari.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 sent an email communication to the parties on August 20, 2019 regarding the language of the proceeding, as the Complaint has been submitted in Italian and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a translated Complaint in English on August 20, 2019.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 20, 2019.

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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 24, 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, Bulgari S.p.A. is a private Italian company founded in 1884 by Sotirio Voulgaris. The Complainant operates its business in the luxury goods industry, and is particularly known for its high-end jewelry. The Complainant opened its first international stores in New York City, Paris, Geneva and Monte Carlo in the 1970s. Today Bulgari has more than 230 retail locations worldwide.

The Complainant has also operated several hotels since 2001, which was the result of a joint venture between Bulgari S.p.A. and the Luxury Group, a division of Marriott International that also manages Ritz-Carlton hotels. The Complainant’s hotels can be found in places such as London, Bali, Milan, Beijing and Dubai, with further hotels scheduled for launch in Paris and Moscow.

The Complainant also use their trademarks BVLGARI’/’BULGARI to establish a social media presence and, in turn, promote their products and hotels under this name on the following social media homepages:

On Facebook “www.facebook.com/Bulgari”;
On Twitter “www.twitter.com/bulgariofficial”;
On Instagram “www.instagram.com/bulgariofficial”; and
On Pinterest “www.pinterest.com/bulgari”.

The Complainant registered the domain names <bulgari.com> and <bulgarihotels.com> respectively on February 17, 1998 and on December 13, 2000, and has had a strong web presence since then.

The strength and renown of the Complainant’s BULGARI trademark has already been recognized by previous UDRP panels.

The Complainant has proven to be the owner of the BVLGARI and BULGARI trademarks, which enjoy protection through numerous registrations worldwide.

The Complainant is, inter alia, the owner of:

- European Union Trade Mark BVLGARI number 007138101, registered on June 3, 2009;
- United States trademark BVLGARI number 2954459, registered on May 24, 2005;
- International trademark BVLGARI number 494237, registered on July 5, 1985;
- International trademark BULGARI number 543321, registered on October 11, 1989.

The disputed domain name <hotelbulgari.com> was registered on November 3, 2018 and currently redirects to the website “www.hotelbulgari.net”, whereas on August 16, 2019 it redirected to the Complainant’s official website, “www.bulgarihotels.com”.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has also underlined the fact that this same Respondent has been involved in a previous domain name dispute for having registered the domain names <bulgarihotels.it>, <bulgarihotel.it> and <hotelbulgari.it>, and that the Respondent has engaged in a pattern of abusive conduct by registering several domain names which target third-party renowned marks.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy require that the Complainant must demonstrate to the Panel that:

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

The Complainant has established rights in the BULGARI and BVLGARI trademarks.

The disputed domain name <hotelbulgari.com>consists of the BULGARI trademark with the addition of the dictionary term “hotel”.

This Panel agrees with the previous UDRP decisions, namely that confusing similarity is generally established when the domain name incorporates the complainant’s trademark in its entirety, and the addition of dictionary prefixes and suffixes does not avoid confusing similarity.

Indeed, this Panel agrees with the Complainant’s assertion that the addition of the term “hotel” in the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s BULGARI trademark and the disputed domain name. The term “hotel”, which exactly describes one of the services of the Complainant does not prevent a finding of confusing similarity.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the BULGARI trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “Bulgari” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears from the documents available, that the disputed domain name was used for a certain period to redirect Internet users to the Complainant’s official website “www.bulgarihotels.com”, and at present it redirects to the website “www.hotelbulgari.net”. Finally, the Respondent has not replied to the Complainant’s contentions, made by the Complainant claiming any rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the BULGARI and BVLGARI marks when the Respondent registered the disputed domain name.

In fact, the Complainant’s trademarks are renowned particularly in Italy where the Respondent resides. They have been registered and used for many years and thus they long predate the disputed domain name’s registration. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name.

Moreover, the Panel notes the following:

The Respondent has never replied to the Complainant’s cease-and-desist letter. Indeed, owing to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name the Respondent would have responded.

This same Respondent was the losing party in a previous domain name dispute for having abusively registered the domain names <bulgarihotels.it>, <bulgarihotel.it> and <hotelbulgari.it>.

The Respondent inactively used the disputed domain name from its registration in November 2018 until August 2, 2019, when the Respondent set up a redirection of the domain name to the Complainant’s official website “www.bulgarihotels.com”, and was then changed again to redirect to the website “www.hotelbulgari.net”. The Panel finds that this use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy.

In addition, the Respondent has engaged in a pattern of abusive conduct, by registering four domain names which include the Complainant’s trademarks, as well as having registered several domain names which target third-party marks.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied 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 <hotelbulgari.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: October 3, 2019