The Complainant is BULGARI S.p.A. of Rome, Italy, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Liu Xiao Qian of Guangzhou, Guangdong, China.
The disputed domain name <bvlgari.wang> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 9, 2014, 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.
On September 7, 2014, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 24, 2014. 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 in the business of designing, manufacturing and retailing jewelry and luxury goods, as well as running hotels and resorts, under the trademark BVLGARI. The Complainant group of companies operates in 24 countries supported by almost 4,000 employees and has a distribution network of 295 stores.
The BVLGARI trademark has been featured in press journals, newspapers and online news carriers, including Bloomberg, Financial Times, Forbes, Reuters, The New York Times, The Wall Street Journal, Vanity Fair and Vogue.
The Complainant has registered the BVLGARI trademark in various countries, including the following:
Jurisdiction | Trademark No | Registration Date |
|
United States |
1694038 |
June 16, 1992 |
|
United States |
3663077 |
August 4, 2009 |
|
CTM |
001510866 |
June 20, 2002 |
|
CTM |
008926941 |
July 27, 2010 |
|
Australia |
416890 |
October 17, 1984 |
|
Canada |
TMA312178 |
March 14, 1986 |
|
Canada |
TMA786824 |
January 10, 2011 |
|
China |
334356 |
February 10, 1988 |
|
China |
334038 |
February 10, 1988 |
|
WIPO |
494237 |
July 5, 1985 |
|
WIPO |
556039 |
June 11, 1990 |
The Complainant has also registered many domain names incorporating the word “Bvlgari” under numerous generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”), including <bvlgari.com> which resolves to the Complainant’s primary website.
As the Respondent did not file a response, little is known about the Respondent beyond that found in the WhoIs record of the Disputed Domain Name. The Disputed Domain Name was registered on June 30, 2014 and did not appear to resolve to any website at or before the time of the Complaint. The Respondent’s name was also associated with 1,106 registrations under the new gTLD statistics list published online by “www.ntldstats.com” as of August 29, 2014. On the same day, reverse WhoIs searches on the Respondent’s name and email address highlighted 140 and 70 domain names respectively, including <chaoji.wang>, <doritosmax.com>, <dushi.wang>, <duveticaonlinefr.com>, <lancome.wang> and <homart.net> which respectively incorporate CTM trademark registrations 011259058, 002036317, 004653515, 003077278, 005007091, and US registration 1987423.
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark BVLGARI. It is made up of the BVLGARI trademark in its entirety. The “.wang” gTLD has no bearing on the mark whatsoever as it is a generic and technical requirement of the domain name system;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As the Disputed Domain Name is under the newly established “.wang” gTLD, the Respondent would have received a Trademark Clearing House notification of the Complainant’s trademark rights at the time of registering the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name. The Respondent has not registered the Disputed Domain Name as a trademark or acquired common law trade mark rights through continuous use. The Complainant has not found any registered trademarks associated with the Respondent. The Complainant has not given any license or authorization to the Respondent to use the trademark BVLGARI. The Respondent has not been authorized or licensed to use the Complainant’s trademarks and does not have any relationship which would give rise to such permission; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent is a sophisticated domainer who registered vast quantities of domain names including some which clearly take advantage of already established rights. The Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting their mark in a corresponding domain name and has a pattern of such conduct. The trademark BVLGARI is widely known across the globe and the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s trademark BVLGARI. The Respondent’s intention was to take unfair advantage of the Complainant’s goodwill and established rights to seek to divert customers and to attract Internet users to the Respondent’s website by way of likelihood of confusion or association. The Respondent had provided false or unreliable information in its WhoIs contact details for the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreement for the Disputed Domain Name is Chinese and the default language of the proceedings should accordingly be Chinese. The Complainant has requested that English be adopted as the language of the proceedings instead. The Panel is entitled to determine the language of the proceedings having regard to the circumstances pursuant to paragraph 11(a) of the Rules. Having done so, the Panel determines that the language of the proceedings shall be English in this particular case for the following reasons:
a) The Respondent has not participated in the proceedings by filing a response;
b) The Respondent did not object to the Complainant’s language request;
c) Requiring the Complaint to be translated into Chinese will lead to additional burden on the Complainant and also delay the proceedings unnecessarily; and
d) No procedural benefit will be gained by insisting that the language of the proceedings remains as Chinese.
The Complainant has the responsibility in this proceeding to show that all three limbs of paragraph 4(a) of the Policy are met on the evidence, namely:
a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name has been registered and is being used in bad faith.
The trademark BVLGARI is registered in many countries by the Complainant. The Complainant clearly owns rights therein. The Disputed Domain Name incorporates the trademark BVLGARI in its entirety. The gTLD “.wang” is a transliteration of the Chinese character “网” (which translates loosely to “net”, “network” or “website”) and only serves a generic classification function for domain name registration just like the traditional gTLDs like “.com” and “.net”. It is a consensus of past UDRP panels that gTLDs should be ignored when comparing a disputed domain name with a complainant’s trademark and the Panel does not see any ground for departing from the same in relation to “.wang” which shares the same purpose and character as traditional gTLDs. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark BVLGARI and the Complainant has met the requirements of the first limb of paragraph 4(a) of the Policy.
There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name or that the Respondent holds any trademark rights in the same. The Complainant has also alleged that it has not given any license or authorization to the Respondent to use the trademark BVLGARI, which the Respondent has not refuted. There is also no evidence in the proceedings which indicate that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. In the circumstances, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent has chosen not to respond, the Panel hereby draws an adverse inference that the Respondent has no answer to this. In the circumstances, the Panel holds that the second limb of paragraph 4(a) of the Policy is also established.
Paragraph 4(b)(iv) of the Policy describes the following situation as an example of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Based on the evidence provided, the Panel is satisfied that the trademark BVLGARI is well known. The Respondent must have been aware of the trademark BVLGARI at the time of registering the Disputed Domain Name. The Panel cannot conceive of any explanation for the Respondent’s incorporation of the trademark BVLGARI into the Disputed Domain Name other than for the purpose of creating a likelihood of confusion with the trademark BVLGARI as to the source, sponsorship, affiliation, or endorsement of the website which can be resolved from the Disputed Domain Name or the products offered on the website. Without the benefit of a cogent explanation which the Respondent has chosen not to provide, the Panel holds that the Respondent has exhibited the bad faith registration and use described in paragraph 4(b)(iv) of the Policy.
The Panel also notes the many domain names registered by the Respondent, a good number of which incorporate trademarks registered in favour of other parties. Faced with the weight of evidence, the Panel cannot avoid agreeing with the Complainant that the Respondent has engaged in a pattern of conduct in registering domain names in order to prevent the owner of a trademark from reflecting the mark in the corresponding domain names. Such circumstances also reflect the form of bad faith registration and use described in paragraph 4(b)(ii) of the Policy.
In view of the above, the Panel finds that the third limb of paragraph 4(a) has been established.
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.wang> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: November 20, 2014