WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. 杨坤 (yang kun)

Case No. D2021-0124

1. The Parties

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

The Respondent is 杨坤 (yang kun), China.

2. The Domain Name and Registrar

The disputed domain name <bvlgari.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on January 15, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2021, 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 January 19, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on January 20, 2021. On January 20, 2021, the Respondent requested that Chinese be the language of the proceeding.

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 January 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on February 19, 2021.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 17, 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.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in Italy and established in 1884. The Complainant operates in the luxury goods and hotel markets, and is particularly known for its high-end jewellery, marketed and sold under the trade mark BVLGARI (the “Trade Mark”) in more than 230 retail locations worldwide (including in China). The Complainant is the owner of numerous registrations for the Trade Mark in jurisdictions worldwide, including International registration No. 494237 (designating China), with a registration date of July 5, 1985.

B. Respondent

The Respondent is apparently an individual resident in China.

C. The Disputed Domain Name

The disputed domain name was registered on July 12, 2019.

D. Use of the Disputed Domain Name

The disputed domain name resolves to a Chinese and English language “the domain is for sale!” website hosted by the Registrar (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, however, on January 20, 2021, the Respondent requested that Chinese be the language of the proceeding.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.

The Complainant requested that the language of the proceeding be English, for several reasons, including the fact the Respondent responded in English to the Complainant’s cease and desist email. In his sole communication with the Center, the Respondent asserted that he does not understand English, and stated that he had concerns about using a translator to translate the Complaint.

The Panel would have accepted a response in Chinese, but the Respondent did not file a response.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel notes that, notwithstanding the Respondent’s assertion as to the level of his proficiency in English, his English language email sent to the Complainant’s representatives suggests that he does have some understanding of English. The Panel notes also that the Respondent has chosen not to contest this proceeding, and that all of the Center’s communications with the Parties have been sent in English and Chinese.

The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. Disregarding the generic Top-Level Domain (“gTLD”) “.xyz”, the disputed domain name is identical to the Trade Mark. The Panel therefore finds that the disputed domain name is identical to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name is being offered for sale via the Website.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In addition, the Panel notes the nature of the disputed domain name, which carries a high risk of implied association (see WIPO Overview 3.0, section 2.5.1).

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the Respondent’s offer to sell the disputed domain name via the Website, the Panel finds that bad faith registration and use has been made out under paragraph 4(b)(i) of the Policy.

The Panel also considers that, in all the circumstances, including the distinctiveness and repute of the Trade Mark (including in China, where the Respondent is based); the fact the disputed domain name is identical to the Trade Mark; and the Respondent’s offer to sell the disputed domain name, it is inconceivable that the Respondent was not aware of the Complainant and of the Complainant’s rights in the Trade Mark at the time of registration of the disputed domain name.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

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 <bvlgari.xyz> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: March 31, 2021