The Complainant is Bottega Veneta SA of Cadempino, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Hon LO, Lee of Hong Kong, China.
The disputed domain name <bottegavenetasingapore.com> 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 February 5, 2016. On February 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2016, 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 February 9, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On February 9, 2016, the Respondent inquired as to who brought this Complaint and indicated that he has been using the disputed domain name up to now. On February 11, 2016, the Respondent indicated that he is a Chinese and registered the disputed domain name in Chinese. He could provide proof of the identity of the registrant of the disputed domain name and of the bank transaction in relation to the purchase of the disputed domain name.
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 in both Chinese and English, and the proceeding commenced on February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. Except for the emails referenced above, there was no formal Response filed by the specified due date. On March 9, 2016, the Center informed the parties that it would proceed with panel appointment.
On March 12, 2016, the Respondent indicated that he did not understand what the Complainant wanted since the documents were all in English, and requested that the Complainant communicate with him in Chinese. The Respondent indicated that if there was any question or problem in relation to the disputed domain name, he can take it back.
The Center appointed Francine Tan as the sole panelist in this matter on March 14, 2016. 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 the owner of many trademark registrations for the BOTTEGA VENETA trade mark, including Community Trademark Registration No. 3899184, filed on June 24, 2004 and registered on October 4, 2005, in Classes 4, 8 and 21; Community Trademark Registration No. 6809362, filed on April 4, 2008 and registered on May 31, 2010, in Classes 3, 9, 11, 14, 16, 18, 20, 24 and 25; International Trademark Registration No. 705303, registered on October 8, 1998, in Classes 3, 9, 14, 18 and 25; International Trademark Registration No. 835291, registered on August 4, 2004, in Classes 4, 8 and 21; and International Trademark Registration No. 947399, registered on November 27, 2007, in Class 43. China is designated in the said International registrations.
The disputed domain name was registered on November 29, 2014.
A cease and desist letter was sent on February 5, 2015 to the Respondent’s email and postal address indicated in the WhoIs records. The Complainant requested that the Respondent cease use of, and transfer, the disputed domain name to the Complainant. A reminder was sent on February 12, 2015. The Respondent did not reply. The cease and desist letter could not be delivered to the Respondent’s postal address for the reason that the address was, according to the postal service, incomplete.
The Complainant was founded in the mid-1960’s in Vicenza, Italy. The name “Bottega Veneta” means “Venetian atelier” and reflects the Complainant’s production of artisanal leather goods. In particular, the Complainant’s artisans developed a leather-weaving technique, called “intrecciato”, which has become a signature of the BOTTEGA VENETA brand.
In 2001, the Gucci Group purchased the BOTTEGA VENETA business. Since 2004, when the Gucci Group was acquired by the French multinational group, PPR (renamed Kering in June 2013), the Complainant’s Bottega Veneta product range has extended to include fine jewelry, watches, furniture, home accessories and fragrances, while continuing to offer ready-to-wear, handbags, shoes, small leather goods, eyewear and luggage. The Complainant states that over time, its reputation grew significantly and BOTTEGA VENETA has become one of the world’s premier luxury brands, known for its outstanding craftsmanship, innovative design, contemporary functionality, and the highest quality materials.
The Complainant distributes its BOTTEGA VENETA products through a worldwide network of directly-operated stores, department and specialty stores. Wholesale distribution in select specialty and department stores is complemented by a growing number of Bottega Veneta-owned boutiques, located in, inter alia, Italy, the United States of America, the United Kingdom of Great Britain and Northern Ireland, Switzerland, France, Germany, China, Hong Kong, China, Japan, the Republic of Korea, Singapore, Indonesia, Malaysia, Thailand, India, the Philippines, the Russian Federation, Turkey, Denmark, Sweden, Kuwait, the United Arab Emirates and Saudi Arabia.
The Complainant engages in intensive advertising campaigns worldwide, which involves the collaboration of many famous artists. The Complainant’s advertisements of its BOTTEGA VENETA brand have been featured in international fashion magazines such as Elle, Monocle, Vogue and Vanity Fair. The Complainant’s sales revenues were 1.016 million Euros in 2013 and 1.131 million Euros in 2014. In 2014, for the second time, BOTTEGA VENETA was recognized as the “Best International Luxury Brand” during the Walpole British Luxury Awards, “for being the brand with the greatest impact in terms of sales in the UK and abroad, through innovation, business, strategy and media exposure”.
The Complainant has over 280 domain names incorporating the BOTTEGA VENETA trade mark (or variations thereof) under several different Top-Level Domains (“TLDs”) including the domain name <bottegaveneta.com>, which was registered on July 10, 1997. The Complainant’s main website is “www.bottegaveneta.com”.
The disputed domain name was registered without the authorization of the Complainant and redirects to a website where, without any disclaimer of non-affiliation, purported Bottega Veneta products are offered for sale.
The Complainant asserts, in relation to paragraph 4(a) of the Policy, as follows:
(1) The disputed domain name is confusingly similar to the trade mark BOTTEGA VENETA in which the Complainant has rights. The disputed domain name entirely reproduces the Complainant’s trade mark BOTTEGA VENETA, with the mere addition of the geographical term “Singapore” and the generic TLD (“gTLD”) “.com”, which is to be disregarded in the assessment of identity or confusing similarity, being a mere technical requirement of registration. The specific reference to the geographic indication of “Singapore” cannot be considered sufficient to distinguish the disputed domain name from the Complainant’s BOTTEGA VENETA trade mark; it is in fact apt to increase the likelihood of confusion among Internet users as to the affiliation of the disputed domain name and corresponding website as well as the source and origin of the products offered for sale therefrom.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. He is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trade mark BOTTEGA VENETA. The Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and “Bottega Veneta” is not the family name of the Respondent. The Respondent has not provided any evidence of his use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The disputed domain name resolves to a website where purported Bottega Veneta products are offered for sale at discounted prices and where links redirecting Internet users to other websites selling the products of the Complainant’s competitors (e.g., Tod’s and Salvatore Ferragamo), are published. Such use by the Respondent cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent has undoubtedly attempted to gain from the sales of the products advertised on his website, free-riding on the well-known nature of the Complainant’s BOTTEGA VENETA trade mark.
The websites to which the disputed domain name resolves imitate the “look and feel” of the Complainant’s official website and offers purported Bottega Veneta bags and ready-to-wear garments at very low prices. The Respondent’s intention is to misappropriate the Complainant’s well-known trade mark for commercial advantage. This cannot be regarded as a bona fide offering of goods or services. The lack of information and contact details of the entity operating the website to which the disputed domain name resolves suggests that products offered for sale are counterfeit.
(3) The disputed domain name was registered and is being used in bad faith.
The BOTTEGA VENETA mark has been recognized to be well-known mark in several prior UDRP panel decisions (e.g., Bottega Veneta SA v. Oversee Investment Inc., WIPO Case No. D2013-1527; Bottega Veneta SA v. Chen Kai a.k.a. Kai Chen/ WhoIs Agent, Domain WhoIs Protection Service, WIPO Case No. D2013-0436; Bottega Veneta International S.A.R.L. v. Domain Administrator, WIPO Case No. D2012-0876; and Bottega Veneta International S.A.R.L. v. PrivacyProtect.org and henli, luo xiaojie, WIPO Case No. D2012-0715). The Respondent could not have possibly been ignorant of the existence of the Complainant’s well-known BOTTEGA VENETA trade mark when he registered the disputed domain name. The circumstances of this case suggest that the Respondent’s purpose in registering the disputed domain name, which incorporates the Complainant’s BOTTEGA VENETA mark in its entirety, was to capitalize on the reputation of the Complainant’s mark by diverting Internet users seeking products under the BOTTEGA VENETA mark to his own website and to the other linked websites. Moreover, the pictures of the Bottega Veneta goods featured on the Respondent’s website appear to have been copied from a past version of the Complainant’s official website and/or the Complainant’s social media accounts. It is therefore very likely that Internet users could be misled into believing that the Respondent’s website is affiliated with the Complainant and that the products promoted are genuine products and which offered for sale by the Respondent with the Complainant’s consent. The Respondent’s use of false contact information and failure to reply to the Complainant’s cease and desist letter are also an indication of bad faith.
Except for the emails referenced above, there was no formal Response filed by the Respondent.
The Registration Agreement is in Chinese but the Complaint was filed in English. The Complainant requested that the language of the proceeding be English for the reasons that follow:
(i) the Complainant communicates in English;
(ii) requiring the Complainant to translate the Complaint and all documents into Chinese would cause delay in contravention to paragraph 10(c) of the Rules;
(iii) the Respondent has demonstrated that he understands English since the disputed domain name redirects users to a website published entirely in English. The disputed domain name itself is made up of letters which are pronounced in English; and
(iv) there was nothing which demonstrates that the Respondent cannot communicate in English.
Paragraph 11(a) of the Rules stipulates that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Respondent stated in his email of March 12, 2016 that he did not understand what the Complainant was seeking to do as the documents were all in English. In his email of February 11, 2016, he said that he is Chinese and since the disputed domain name was registered using Chinese, he considers that accordingly the proceeding should follow Chinese regulations. The Panel infers from this submission that the Respondent would like the proceeding to take place in Chinese. In an earlier email of February 9, 2016 to the Center, the Respondent wrote both in English and Chinese. The English text read as follows:
“Hello there
I use a domain name to the present, do not know who the complaint. I can provide all the information domain, if there is need, please contact me. Thank you
sales team
Sincere greetings”
The Panel has to exercise its discretion “judicially in the spirit of fairness and justice to both parties taking into consideration matters such as the command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.” (Guccio Gucci S.p.A. v. Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506.)
The Panel finds it appropriate in this case to hold that English shall be the language of the administrative proceeding. The language of the Respondent’s website (entirely in English) and the Respondent’s email of February 9, 2016 demonstrate that the Respondent understands English. The disputed domain name comprises letters in Latin script which can be pronounced in English, and is a combination of the Complainant’s widely known brand and the geographical term “Singapore”. The apparent intention of the Respondent is to target the English-speaking Internet community. The Respondent received communications from the Center in both English and Chinese and was therefore in a position to understand the nature of the administrative proceeding and to respond. On the other hand, if the Complainant were required to have the Complaint and all the documents translated into Chinese, it would unduly delay the proceeding.
Considering the circumstances of the case, the Panel determines that the choice of English as the language of the proceeding is fair to both parties and believes the Respondent would not be prejudiced thereby.
The Complainant has shown it is the owner of the BOTTEGA VENETA trade mark. The disputed domain name contains the trade mark in combination with the geographical term “singapore”. It is well established in previous UDRP decisions that the addition of descriptive, generic or even geographical terms to a domain name does not remove the confusing similarity with the Complainant’s trade mark. It is also a well-established principle that the addition of the gTLD (in this case, “.com”) is irrelevant when assessing whether or not a domain name is identical or confusingly similar to a mark as it is an inherent feature of every domain name.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been established.
The Complainant has, in the Panel’s view, established a prima facie case in support of its allegations that the Respondent does not have rights or legitimate interests in the disputed domain name. Having done so, the burden of production shifts to the Respondent to show that he does have rights or legitimate interests (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has not authorized or licensed the Respondent to use or apply the BOTTEGA VENETA trade mark in a domain name. There is no evidence of a commercial relationship between the Complainant and the Respondent. The Respondent does not appear to be using the disputed domain name for a bona fide offering of goods and there is no evidence that he is commonly known by the disputed domain name. The Respondent has not rebutted the Complainant’s allegations with evidence which shows he has rights or legitimate interests, in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been established.
The BOTTEGA VENETA trade mark is distinctive and famous. The Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel also finds that the Respondent is clearly using the disputed domain name to give the false impression to Internet users that his website is the website of or endorsed by the Complainant. Paragraph 4(b) of the Policy sets out four illustrative circumstances which, though not conclusive, shall be evidence of the registration and use of the domain name in bad faith, including:
“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to [his] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [his] website or location.”
The circumstances described in the preceding paragraph can be found in this case. The Panel agrees with the panel’s statement in the decision of Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671 (cited by the Complainant), that “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’”.
The disputed domain name incorporates the widely known trade mark of the Complainant and in the context of how it is used by the Respondent, the Panel finds that registration and use has been in bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy 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 <bottegavenetasingapore.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: March 26, 2016