WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Weng Ru Hai

Case No. D2019-1331

1. The Parties

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

Respondent is Weng Ru Hai, China.

2. The Domain Name and Registrar

The disputed domain name <bvlgari.link> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On June 19, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 19, 2019, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on 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 Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Center received an email communication from Respondent on July 15, 2019. On July 16, 2019, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Yijun Tian as the sole panelist in this matter on July 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

A. Complainant

Complainant, Bulgari S.p.A., is a company incorporated in Italy. Founded in 1884 by Sotirio Bulgari, Complainant operates its business in the luxury goods and hotel industry, and is particularly known for its high-end goods, such as rings, watches, necklaces, and fragrance products (Annex 5 to the Complaint). Complainant opened its first international locations in New York, Paris, Geneva and Monte Carlo in the 1970s. Complainant currently has more than 230 retail locations worldwide.

Complainant has registered a number of trademarks for BVLGARI in various jurisdictions, including international trademark registrations covering China (international trademark registration number 494237, registered July 5, 1985), trademark registrations in Canada (trademark registration number TMA312178, registered March 14, 1986), and trademark registrations in the United States of America (“U.S.”) (registered June 16, 1992, the trademark registration number 1694380). Complainant’s registered the domain name of its official website, “www.bulgari.com”, on February 17, 1998, and has had a strong web presence since that date.

In addition, Complainant has a global presence, including particular repute in the jurisdiction of China, where it has many points-of-sale. It has invested significantly to increase the BVLGARI brand’s presence in China, in addition to collaborating with Chinese artists and opening new hotels in Shanghai and Beijing.

B. Respondent

Respondent is Weng Ru Hai, China. Respondent registered the disputed domain name <bvlgari.link> on November 8, 2018, which is long after Complainant’s registration of the BVLGARI trademarks in the U.S. (since 1992), and international registration covering China (since 1985). At the time of this decision, the disputed domain name directed to a website which is currently inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to the BVLGARI marks.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <bvlgari.link> be transferred to it.

B. Respondent

Respondent replied to Complainant’s contentions in an email dated July 15, 2019, stating, inter alia, that he has no intention to infringe upon anyone’s intellectual propriety rights, that he has not used the disputed domain name, that he did not respond to a third party who approached him to purchase the disputed domain name, and that he registered the disputed domain name in accordance with the procedures set by the Registrar.

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, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Neither Complainant nor its representatives are familiar with the Chinese language.

(b) There is evidence that Respondent has an understanding of English considering Respondent’s domain name portfolio which features many domain names which contain English words such as <carinsurance.design>, <airlineratings.online>, <freestyle.wiki>, <constellation.pub> and <i-love-you.fun>, amongst many others (Annex 3 to the Complaint).

(c) The registration of many domain names featuring English words has, in previous UDRP decisions, been accepted as evidence of Respondent’s understanding of English.

(d) In compelling Complainant to translate and submit this complaint in Chinese, the Panel would not be acting in keeping with the overriding principles in paragraph 10 of the Rules, in particular paragraph 10(b) of the Rules, in that the parties should be treated equally and given a fair opportunity to present their case, and paragraph 10(c) of the Rules which preserves the time span of the process.

Respondent did not comment on the language of the proceeding, nor did he object to the use of English as the language of the proceeding, despite having submitted an email communication dated July 15, 2019 in Chinese.

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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the Italy, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters (“bvlgari”) and is registered in the generic Top-Level Domain (“gTLD”) space comprising of the Latin characters and English word “link” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <bvlgari.link> includes Latin characters “bvlgari” and English word “link” rather than Chinese script; (b) the Center has notified Respondent of the proceeding in both Chinese and English; (c) the Center informed Respondent that it would accept a Response in either English or Chinese; (d) Respondent has been able to communicate with the Center in this case.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the BVLGARI marks acquired through registration. The BVLGARI marks have been registered worldwide including registrations in the U.S. and Canada, as well as international registration covering China.

The disputed domain name <bvlgari.link> comprises the BVLGARI mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the addition of the gTLD suffix “.link”. This does not eliminate the identity between Complainant’s registered trademarks and the disputed domain name. In relation to the gTLD suffix, WIPO Overview 3.0 further states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that disregarding the gTLD suffix “.link”, the disputed domain name is identical to the BVLGARI marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

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

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant operates its business in the luxury goods and hotel industry, and is particularly known for its high-end goods, such as rings, watches, necklaces, and fragrance products. Complainant opened its first international locations in New York, Paris, Geneva, and Monte Carlo in the 1970s. It currently has more than 230 retail locations worldwide. Complainant has rights in the BVLGARI marks internationally (covering China) since 1985, Canadian trademark registration since 1986, and the U.S. trademark registration since 1992, which long precede Respondent’s registration of the disputed domain name (in 2019).

Moreover, Respondent is not an authorized dealer of BVLGARI-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “bvlgari” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BVLGARI marks or to apply for or use any domain name incorporating the BVLGARI mark, and Respondent has, through the use of an identical domain name created a likelihood of confusion with the BVLGARI marks.

b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2019, long after the BVLGARI marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s BVLGARI marks.

c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive.

The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel finds that Complainant has a widespread reputation in the BVLGARI mark with regard to its products. Complainant has registered its BVLGARI mark internationally, including registration in the U.S. (since 1992) and international registration covering China (since 1985). In addition, based on the information provided in the Complaint, Complainant has a global presence, including particular repute in the jurisdiction of China, where it has many points-of-sale. It has invested significantly to increase the BVLGARI brand’s presence in China, in addition to collaborating with Chinese artists and opening new hotels in Shanghai and Beijing. Therefore, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2019). The Panel therefore finds that the BVLGARI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent did not provide any arguments or evidence as to why he chose to register the disputed domain name in response to Complainant’s allegations in an email communication dated July 15, 2019.

Thus, the Panel concludes that Complainant has made out a prima facie case and that the disputed domain name was registered in bad faith.

The disputed domain name <bvlgari.link> is currently inactive. In terms of inactive domain names, the WIPO Overview 3.0 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.” (Section 3.3, WIPO Overview 3.0).

The WIPO Overview 3.0 further states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

As discussed above, Complainant’s BVLGARI marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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.link> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: August 2, 2019