WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Zhi Wei Tan

Case No. D2019-2706

1. The Parties

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

The Respondent is Zhi Wei Tan, China.

2. The Domain Name and Registrar

The disputed domain name <bulgari.app> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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.

On November 7, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 7, 2019. The Respondent requested that Chinese be the language of the proceeding on November 29, 2019.

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 English and Chinese, and the proceeding commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent submitted a Response in English on December 8, 2019. The Center notified the Commencement of Panel Appointment Process on December 10, 2019.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 26, 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 is an Italian company, active in the fashion and luxury industry, and has global operations, with over 230 retail locations worldwide. The Complainant owns a portfolio of trademark registrations for BULGARI, registered in a number of countries around the world, including Italian trademark registration number 0000896469, registered on June 11, 2003 and international trademark registration number 543321, registered on October 11, 1989, and indicating, amongst other jurisdictions, the Respondent’s apparent home jurisdiction China. The disputed domain name was registered on October 4, 2019. The disputed domain name directs to an inactive webpage.

The Respondent is apparently an individual based in China.

The Complainant provides evidence that it has first sought to settle this matter amicably through a cease‑and-desist letter sent to Respondent on October 8, 2019, to which it received no answer.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademarks for BULGARI, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith, through the doctrine of passive holding.

The Complainant claims that its trademarks are distinctive, well-known and used intensively, and that there are no justifications for the use of its trademarks in the disputed domain name. The Complainant submits a number of prior UDRP decisions which confirm that its trademarks for BULGARI are well-known (e.g. Bulgari S.p.A. v. Stefan Paraniac, WIPO Case No. D2019-2018; and Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi WIPO Case No. D2019-1901). The Complainant contends that the Respondent has engaged in a pattern of bad faith domain name registrations, that the disputed domain name is currently not used and held passively by the Respondent, and essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent submitted a Response in English on December 8, 2019. In its Response the Respondent essentially contends that: (i) the Respondent chose the disputed domain name because it corresponds to the name that his wife adopts in English; (ii) the Complainant does not own trademarks in the disputed domain name throughout the world, its trademarks being limited to a number of jurisdictions and the trademarks are not distinctive, being similar to common English words like “bulgar” and “Bulgaria”; (iii) the Respondent has not used the disputed domain name, and states that his wife plans to use it for a future personal blog, and is therefore not using the disputed domain name in bad faith; and (iv) the disputed domain name was not registered and is not used in bad faith.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant states that, to the best of its knowledge, the language of the Registration Agreements is Chinese. Nevertheless the Complainant filed its Complaint in English, including a motivated request that the language of the proceeding be English. The Respondent requested that Chinese be the language of the proceeding in an email sent on November 29, 2019.

The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, notify the Complaint in Chinese and English, send email communications in English and Chinese and appointed the present Panel, which is familiar with both English and Chinese.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the Respondent’s request that the language of the proceeding be Chinese; the fact that the Respondent sent a number of emails to the Center containing English, i.e., on November 29, 2019 (bilingual Chinese-English) and on December 8, 2019 (English), and filed its Response in English, from which the Panel deducts that the Respondent understands, and is able to communicate in English, and de facto accepts English as the language of the proceeding; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(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 is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark BULGARI based on its registration and use of the same as trademarks in a large number of countries throughout the world.

As to the Respondent’s contention that the Complainant’s trademarks are insufficient in this procedure, since they do not cover all jurisdictions throughout the world, the Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2: “Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” The Panel also refers to earlier UDRP decisions on this issue, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Furthermore, as to the Respondent’s contention that the Complainant’s trademarks for BULGARI are not sufficiently distinctive, being similar to common words such as “bulgar” and “Bulgaria”, the Panel rules that registered trademarks are considered prima facie valid and distinctive, see WIPO Overview 3.0, section 1.2.1 and previous UDRP decisions such as Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205. The Panel therefore rules that the Complainant’s rights in its trademark registrations for BULGARI are valid and sufficient for the purposes of this procedure.

Moreover, as to identity or confusing similarity, the Complainant owns registered trademarks in BULGARI. The only difference between these trademarks and the disputed domain name is the addition of the top level domain “.app” in the disputed domain name, which is a standard registration requirement, and therefore an element that is disregarded by the Panel in assessing the first element under the Policy, see WIPO Overview 3.0, section 1.11.1. The Panel concludes that the disputed domain name is identical to the Complainant’s trademarks, and rules that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

The Complainant claims that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of proof regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

The Respondent stated in its Response that it has not yet used the disputed domain name and plans to use it for a personal blog sometime in the future. The Panel concludes that such absence of use, or unsubstantiated claims as to future use, do not confer any rights or legitimate interests on the Respondent.

The Respondent furthermore stated in its Response that the Respondent chose the disputed domain name because it corresponds to the name that his wife adopts in English. The Panel refers to the WIPO Overview 3.0, section 2.3: “Insofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence.” The Panel notes that the Respondent’s contentions regarding his wife’s English name are mere assertions and that the Respondent fails to provide any evidence of his claims. The Panel therefore rejects this argument.

Furthermore, the Panel notes that the nature of the disputed domain name, being identical to the Complainant’s trademarks, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). On the basis of the foregoing, the Panel considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided sufficient evidence that its trademarks are famous and enjoy a strong reputation, including in the Respondent’s home jurisdiction, China. The registration of the disputed domain name, which is identical to the Complainant’s trademarks and which took place years after the first registration and use of the Complainant’s trademarks for BULGARI, is therefore clearly intended to profit from, or exploit the Complainant’s trademarks and mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns trademarks in BULGARI and uses them extensively. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use of the disputed domain name in bad faith, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” Having regard to all elements of the case at hand, and in particular to the fact that the disputed domain name is identical to the Complainant’s famous trademarks, the high degree of distinctiveness of the Complainant’s trademarks, the fact that the Complainant provides evidence that the Respondent has registered a large amount of domain names, many of which incorporate, or are similar to famous trademarks, from which the Panel deducts that the Respondent has engaged in a pattern of trademark-abusive domain name registrations, and the fact that the Respondent chose to ignore the cease-and-desist letter sent by the Complainant, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any evidence, other than its mere unsubstantiated claims, to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <bulgari.app> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: January 6, 2020