The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
The disputed domain name <cheapbulgari.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On August 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 23, 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.
The Complainant is an Italian company founded in 1884, operating in the luxury goods and hotel markets under the name “Bvlgari” in the classic Latin alphabet and “Bulgari” in the modern alphabet, which derive from the founder’s name “Voulgaris”. The Complainant is well known for its high-end jewelry, including but not limited to watches, rings, necklaces and fragrance products. Today, the Complainant has more than 230 retail locations worldwide.
The Complainant owns a portfolio of registered trademarks consisting of BVLGARI or BULGARI including, inter alia, the following registrations:
- United States of America trademark, BVLGARI, No.1694380, registered on June 16, 1992, designating international class 18;
- International trademark BVLGARI, No.494237, registered on July 5 , 1985, designating international classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34;
- Italian trademark BVLGARI, No. 0000984147, registered on November 18, 2005, designating international classes 25, 34, 38, and 41;
- European Union trademark BVLGARI, No. 007138101, registered on June 3, 2009, designating international classes 35, 36, 41, and 43;
- Italian trademark BULGARI, No. 0001140217, registered on September 22, 2008, designating international classes 11, 20, and 21;
- European Union trademark BULGARI, No. 003749496, registered on August 23, 2005, designating international classes 3, 9, 16, 18, 25, 37, and 38.
The Complainant also registered the domain name of its official website on February 17, 1998, i.e. <bulgari.com>.
The disputed domain name <cheapbulgari.com> was registered on April 12, 2021, under anonymity by Whois Privacy Corp located in the Bahamas.
The disputed domain name was active and resolving to third-party websites. The disputed domain name is now inactive.
(i) The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s earlier trademarks in that it incorporates BULGARI in its entirety whereas the addition of the descriptive term “cheap” is not sufficient to prevent a finding of similarity under the first element of the Policy.
The Complainant further specifies that the generic Top-Level Domain (“gTLD”) extension “.com” is not relevant and shall not be taken into account when considering the similarity.
(ii) The Complainant then contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since to its best knowledge, the Respondent is not known under this name, has not registered any trademarks for the term “Bulgari” and has never obtained any license from the Complainant for the use of the “Bulgari” or “Bvlgari” trademarks.
The Complainant further contends that there is no indication of a bona fide offering of goods or services in connection with the disputed domain name.
(iii) The Complainant finally contends that the disputed domain name was registered in bad faith since the Respondent cannot ignore the well-known nature of the Complainant’s earlier trademarks at the time of the registration.
In addition, the Complainant finally contends that the use of the disputed domain name by the Respondent is also in bad faith. In fact, the disputed domain name was not being used for a long time. Only after the Complainant’s cease and desist letter, the Respondent started to make use on the disputed domain name by providing automatic redirections to third-party websites, which may allow it to attract commercial gain through redirecting traffic. In this regard, the Complainant indicates that before the filing of the Complaint, it has sent a cease and desist letter, by email, to the Respondent at the time of which the disputed domain name was inactive. However, at the time of the filing of the Complaint, the disputed domain name was active and resolving to third-party websites, in particular websites imitating BBC news page and advertising cryptocurrency schemes. The Respondent did not reply to the cease and desist letter.
The Complainant thus contends that the lack of response to the Complainant’s cease and desist letter is also an indication of the Respondent’s bad faith.
(iv) The Complainant therefore requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The disputed domain name is identical or confusingly similar to a trademark or 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 are being used in bad faith.
These elements will be examined in turn below.
The Complainant has provided evidence to establish its earlier trademark rights in BULGARI that is incorporated in its entirety in the disputed domain name. Such reproduction is typically considered sufficient to satisfy the requirements of the first element.
The addition of the term “cheap” associated with the Complainant’s trademark does not prevent a finding of confusing similarity.
Furthermore, the gTLD does not affect the identity between the disputed domain names and the earlier trademarks. Indeed, according to well-established consensus among UDRP panels, the addition of a gTLD such as “.com” is not to be taken into consideration when examining the identity or confusing similarity between a complainant’s trademarks and the disputed domain names. See Esselunga S.P.A.. v. Wang Lian Feng, WIPO Case No. D2018-0967; Volkswagen AG v. Wang Lian Feng, WIPO Case No. D2018-0881.
Consequently, the Panel finds that the disputed domain name to be confusingly similar to the Complainant’s trademarks. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.
In this case, the Complainant brings forward the following elements:
- The Respondent is not known under the disputed domain name, nor does it have any trademark rights on such name;
- No license or authorization has been granted by the Complainant to the Respondent;
- The Complainant has no relationship whatsoever with the Respondent.
In addition, the Panel notes that the disputed domain name was either inactive or being used to redirect to other third-party websites, which does not suggest a bona fide offering of goods or services or legitimate noncommercial or fair use.
Furthermore, when the disputed domain name was active it redirected to third-party website such as a site imitating BBC news page and a site advertising cryptocurrency schemes.
When considering the construction of the disputed domain name, panels have found that a domain name consisting of a trademark plus an additional term cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Accordingly, the Panel finds that the disputed domain name is such to carry a risk of implied affiliation.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not proved otherwise, since it did not file any response.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
The Complainant’s earlier trademarks have been recognized as well known by previous UDRP panels. Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the BULGARI trademarks. See Bulgari S.p.A. v. Wang Xian Feng, Wu Bin Jing, Chen Xiao Yu, WIPO Case No. D2021-1005; Bulgari S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergejs Grinfelds, WIPO Case No. D2021-0425; Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2019-1901; Bulgari S.p.A. v. Weng Ru Hai, WIPO Case No. D2019-2734; Bulgari S.p.A. v. Libin Zhu, WIPO Case No. D2019-2694; Bulgari S.p.A. v. Domain Admin Contact ID 6523464, FBS INC, Whoisprotection biz / Gamze Çali, WIPO Case No. D2019-1671. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated enetity can by itself create a presumption of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.
Also, the lack of reply to a cease and desist letter of the Respondent prior to the proceedings is an indication of bad faith. See Facebook, Inc. and Instagram, LLC v. C W / c w, c w, WIPO Case No. D2018-1159.
Furthermore, the Panel finds that the Respondent’s efforts to conceal its identity through a privacy proxy service can be construed as further evidence that the disputed domain name was registered in bad faith. See TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725.
Moreover, the addition of the prefix “cheap” to the well-known luxury trademark BULGARI” is another element demonstrating, per se, the Respondent’s bad faith, seeing as the term could be considered descriptive of the retail industry in which the Complainant operates and suggestive of the Respondent’s intention to target the Complainant’s reputation and lure unsuspecting Internet users to its website.
As to the use of the disputed domain name in bad faith, the Complainant has provided evidence that the disputed domain name was either inactive or being used to resolve to third-party websites that do not suggest any bona fide offering of goods and services.
Prior panels have found that a domain name’s inactive status does not prevent a finding of bad faith in certain circumstances. See section 3.3 of the WIPO Overview 3.0. Considering the Complainant’s
widely-known trademark, the disputed domain name’s incorporation of the trademark entirely with a descriptive term, and the Respondent’s lack of response, the Panel similarly finds that the inactive status of the disputed domain name supports an inference of bad faith.
In the present case, the Respondent did not submit any response, so it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
Consequently, the Panel finds that the disputed domain name was registered and used in bad faith, so that the third and final element of the Policy is met.
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, <cheapbulgari.com>, be transferred to the Complainant.
Isabelle Leroux
Sole Panelist
Date: October 7, 2021