Complainant is Buccellati Holding Italia S.p.A., Italy, represented by SILKA AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0157356544, Canada, / Jeremy Lee, TheBrous01, China.
The disputed domain name <buccelati.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 4, 2020. On July 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 8, 2020.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. On August 4 and August 5, 2020 Respondent sent random emails correspondence to the Center.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 12, 2020. 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.
Complainant Buccellati Holding Italia S.p.A is an Italian jewelry and watch company whose business dates back to the 1920’s. Complainant is known for its textural gold jewelry and silver objects.
Complainant owns registrations for the trademark BUCCELLATI as a word mark in several countries, for example United States Trademark Registration No. 841,635 registered on January 2, 1968 (first use in commerce 1952) and European Union Trademark Registration No. 000319301 registered on July 26, 1996 (collectively, the “BUCCELLATI Mark” or the “Mark”). And Complainant has a significant presence on various social media platforms, such as Facebook, Instagram, Twitter, and Pinterest. Also, Complainant has registered several domain names containing the Mark, including <buccellati.com> (registered 2014), and <buccellati.eu> (registered 2006). Complainant uses those domain names in conjunction with a website through which it informs potential customers about the Mark and its products.
The Domain Name was registered by Respondent on March 29, 2020. It was used in connection with a website that sold shapewear for women and it featured prominently the BUCCELLATI Mark on the landing page spelled correctly and in the same or similar font as Complainant uses on its website.
On April 24, 2020, Complainant’s representative wrote a cease and desist email to an intermediary related to Respondent’s website titled: “BUCCELLATI: Notice of Domain Name Infringement: <buccelati.com>.”
Thereafter, the prominently featured BUCCELLATI Mark was removed from the website. Respondent’s website still sold shapewear for women. It used the following tabs: “Home”, “Corset”, “Shapewear” and “Trainer Shaper.” At the top of one page it stated: “FREE SHIPPING WORLDWIDE & 20% OFF ENTIRE ORDER • MINIMUM QUANTITY OF 3. DISCOUNT CODE: 20OFF”. The webpage associated with the “shapewear” tab, for example, stated: “SHAPE YOUR BODY UP TO 50% OFF” With a link to: SHOP NOW “.
The current website used in conjunction with the Domain Name now features the following three tabs: “Buccelati”, “Home”, and “CATALOG.” The first two tabs are linked to otherwise blank pages that state at the top “Free shipping and returns.” The third tab – CATALOG – is linked to a page with the following black boxes that feature the following links: “aac”, “Best Sellings”, “Corset”, “Home page”, New Arrival”, “Shapewear”, and Trainer Shaper.” Each of those linked page states: “Sorry, there are no products in this collection.” And at the top of each page it states: “Free shipping and returns.” There is also a box called “Catalog” with a photo of a dog playing. This box is linked to a page featuring various items for sale, with a “cart” feature for immediate purchase, including:
- “Buccelati Countertop Machine Stainless Steel Home Pure Purifier Filter 750W Water Distillation Kit with Connection Bottle Food-Grade Outlet Glass Container USD 139.99”;
- Silicone TPR Toilet Brush from USD 34.99;
- Automatic Interactive Dog Tennis Ball Launcher Regular from USD 24.99
- Hip Trainer Muscle Stimulator ABS Fitness Buttocks from USD 29.99
- 2020 Rechargeable Water-Cooled Air Conditioner (Can Be Used Outdoors) Regular from USD 38.53.
The Domain Name is confusingly similar to Complainant’s BUCCELLATI Mark as it incorporates the Mark in its entirety which is instantly recognizable within the Domain Name. This is typosquatting inasmuch as the Domain Name consists of the Mark with the mere deletion of the letter “L”. Adding the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the Domain Name as it is a technical requirement.
There is no bona fide offering of goods or services where the Domain Name incorporates a trademark which is not owned by Respondent, nor is Respondent known by the name “BUCCELATI”. Respondent’s registration of the Domain Name constitutes a classic case of typosquatting. The overwhelming likelihood is that Respondent registered the Domain Name to mislead consumers as to an affiliation with or connection to Complainant, for commercial gain. Before sending the notice letter, Respondent’s website featured Complainant’s logo and had the appearance of an official Buccellati website. The notification was sent out in April 2020. After Respondent was made aware of the notification, he changed its content to a website promoting underwear and training gear and removed the logo. The website content can be altered and changed back to the original content at any time. Such use can only be designed to take unfair advantage of the reputation in Complainant’s rights in the Mark. There is a realistic and serious threat posed by Respondent’s continued ownership of the Domain Name, not least of which is the threat of a diversion of customers and the inevitable damage to Complainant’s reputation in the BUCCELLATI Mark.
BUCCELLATI is a well-known trademark in the luxury accessory industry and Complainant’s trademark registrations predate the registration of the Domain Name. Complainant has conducted thorough searches to try to establish whether Respondent would have any rights in the name “BUCCELATI” in conjunction with similar goods and services that the BUCCELLATI Mark is registered under. Complainant cannot find that Respondent has any registered rights in the name “BUCCELATI” or has become known under the name “BUCCELATI”. The practice of typosquatting (“buccelati” instead of “buccellati”) may in itself be evidence of a bad faith registration of a domain name. It is highly unlikely that Respondent was not aware of Complainant’s rights in the Mark and the value of the Mark when registering the Domain Name because Respondent’s website previously used Complainant’s logo.
Respondent’s use of a privacy service, designed to shield Respondent from its identification in this proceeding, does not alone constitute use in bad faith. However, because Respondent failed to respond to Complainant’s notice letter, use of the privacy service will be another factor which points to Respondent’s bad faith registration and use. Respondent displayed Complainant’s logo before they were put on notice. The Domain Name has no other meaning except for referring to Complainant’s name and trademark and there is no way in which the Domain Name could be used legitimately. Consequently, Respondent registered and is using the Domain Name in bad faith.
Respondent failed to file a Response to the Complaint. Rather, two days after his response was due, on August 4, 2020, Respondent wrote to the Center asking: “Why does my domain name violate the rules?” Then on August 5, 2020, Respondent wrote to the Center stating: “Don’t use the law to intimidate me! ! ! I registered this domain name without infringing on the interests of others, unless you purchase my mailbox.”
There is no dispute over Complainant’s trademark rights in the BUCCELLATI Mark as evidenced by two of Complainant’s registrations mentioned above.
The Panel finds Respondent has engaged in typosquatting by registering the Domain Name <buccelati.com> which consists of a misspelling of the BUCCELLATI Mark – omitting a letter “L”. Otherwise, the Domain Name is virtually identical to the Mark. Because Respondent has committed typosquatting, the Domain Name is, by definition, confusingly similar to the BUCCELLATI Mark. Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.
In addition, the Domain Name <buccelati.com> is both visually and phonetically similar to the BUCCELLATI Mark, further heightening the confusing similarity. See, Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (finding the domain name <expediua.com> confusingly similar to <expedia.com> and noting the visual and phonetic similarity of the two).
Furthermore, using a gTLD such as “.com” is irrelevant as it is well established that it is insufficient to avoid a finding of confusingly similarity. See L’Oréal v Tina Smith, WIPO Case No. D2013-0820.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant asserts that Respondent cannot have any legitimate interests or rights in the Domain Name because Respondent: (1) does not own a BUCCELLATI Mark; (2) is not known by “BUCCELATI” (or the misspelled version); and (3) likely registered the Domain Name to mislead consumers as to an affiliation with or connection to Complainant for commercial gain. Complainant maintains that before sending the notice letter, Respondent’s website featured Complainant’s logo and had the appearance of an official Buccellati website. After Respondent was notified, he changed the content of his website to selling underwear and training gear and removed the logo. Such use can only be designed to take unfair advantage of Complainant’s reputation and its right in the Mark including diverting customers away from Complainant’s website and the inevitable damage to Complainant’s reputation in the BUCCELLATI Mark.
Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Respondent registered the Domain Name on March 29, 2020, many years after Complainant obtained its trademark registrations for the Mark (e.g., U.S. Trademark Registration No. 841,635 registered on January 2, 1968) and began using the Mark in commerce (at least 1952). It is further undisputed Complainant: (1) advertises and sells its jewelry and silver objects on its website accessible through <buccellati.com> (created 2014), and <buccellati.eu> (created 2006); (2) has a significant presence on various social media platforms, such as Facebook, Instagram, Twitter, Pinterest; and (3) has boutiques all over the world including in various locations in China. Moreover, on the landing page of the website associated with the Domain Name, the BUCCELLATI Mark was featured prominently, correctly spelled (no “L” missing as in the Domain Name), and in the same or similar font as Complainant uses on its website, evidencing that Respondent was likely aware of Complainant and its Mark when registering the Domain Name. Given this undisputed evidence, the Panel finds it is more likely than not Respondent was aware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that the Domain Name: (1) was formed by adding the gTLD “.com” to a misspelling of the BUCCELLATI Mark; (2) is confusingly similar to Complainant’s Mark; and (3) is not being legitimately used by Respondent.
With regard to bad faith use, Respondent is using a Domain Name that is confusingly similar to Complainant’s well-known BUCCELLATI Mark to host a site where he has been selling products including: body shaping, home water purification system, toilet brush, dog toy, air conditioner, and body training. In one case he referred to a product as “Buccelati Countertop Machine Stainless Steel Home Pure Purifier Filter 750W Water Distillation Kit with Connection Bottle Food-Grade Outlet Glass Container USD 139.99”.
The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BUCCELLATI Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893. Even if the users who access Respondent’s website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using the Mark to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <buccelati.com> be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: August 18, 2020