The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom.
The Respondent is Name Redacted1.
The disputed domain name <hotel-bulgari.com> is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2019. On November 15, 2019, the Center received an email from a person named as the Respondent requesting to delete his personal data. Upon the Center’s response November 22, 2019, this person implied that he is not the holder of this or any other domain name. The Center informed the Parties of the third party communication on November 26, 2019.
The Center verified that the Complaint together with the amended 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, and the proceedings commenced on November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. Accordingly, the Center notified the Commencement of Panel Appointment on December 3, 2019.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 5, 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.
The Complainant is an Italian company founded in 1884 that operates in the luxury industry, selling products such as rings, watches, necklaces or perfumes. The Complainants counts more than 230 retailers worldwide. Since 2001, the Complainant also holds hotels as a result of a joint venture between itself and Luxury Group, a division of Marriott International. The Complainant’s hotels are located in major cities such as London, Beijing, Milan, Bali and Dubai.
The Complainant holds numerous trademarks on a worldwide basis consisting of the terms BULGARI, respectively BVLGARI, such as:
- International trademark 452694, registered on May 15, 1980, in classes 11, 14, 20 and 21;
- International trademark 494237, registered on July 5, 1985, in classes 3, 8, 11, 14, 16, 18, 20, 21, 25 and 34;
- European Union trademark 007138101 registered on June 3, 2009, in classes 35, 36, 41 and 43.
The Complainant holds several domain names to carry out its online activities. It notably registered <bulgari.com> on February 17, 1998 and owns several social media accounts on Facebook, Twitter, Instagram and Pinterest.
The Respondent registered <hotel-bulgari.com> on July 1, 2019. The disputed domain name relates to a website selling clothing products.
On September 4, 2019, the Complainant sent a cease and desist letter to the Respondent, in which it drew the Respondent’s attention upon its rights, inviting him to transfer the disputed domain name in its favor. The Respondent did not respond.
On November 15 and 22, 2019, a person named as the Respondent sent two emails to the Center (with an email address different to the registrant’s email address) to require the deletion of his personal data in relation to the registration agreement, arguing that he had never been the holder of the disputed domain name. Upon request from the Center, this person confirmed that information on November 30, 2019.
The Complainant first argues that <hotel-bulgari.com> is confusingly similar to its BULGARI trademark as it entirely incorporates its trademark with the addition of the term “hotel” whose descriptiveness does not exclude the resulting likelihood of confusion.
The Complainant then affirms that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not known under the term “BULGARI”, does not hold any trademark rights in such designation, and has not been authorized to use it by the Complainant in any way.
The Complainant finally considers that the disputed domain name has been registered and is being used in bad faith. Considering the strong reputation and distinctiveness enjoyed by the trademark BULGARI, the Complainant considers that the Respondent was perfectly aware of its existence when it registered the disputed domain name <hotel-bulgari.com>. In the Complainant’s view, the disputed domain name was clearly registered by the Respondent in order to exploit the reputation enjoyed by the Complainant’s trademark, so as to attract and divert Internet users to the Respondent’s website and promote the goods displayed on the related website for sale.
The Respondent did not reply to the Complainant’s contentions other than through the emails that a person named as the Respondent sent to the Center on November 15, 22 and 30 as stated above.
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous trademarks throughout the world consisting of the term “BULGARI”.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629). Such is the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are dictionary term. The Panel finds these elements are present here.
The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a dictionary term such as “hotel” does not avoid confusing similarity (see, among others: Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant is the owner of the BULGARI trademark that enjoys a significant reputation. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not object to these assertions. To the contrary, the exchange the Respondent had with the Center, in which he argued not to be the right holder of the disputed domain name, thereby inviting the Center to delete his personal data from the registration agreement, rather demonstrates that he has no interest in further holding the domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s BULGARI trademarks enjoy a strong reputation.
Considering the distinctiveness of the BULGARI mark and the fact that the Complainant exploits hotels, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the domain name <hotel-bulgari.com>. The Panel notes that such a domain name may mislead Internet users in making them believe that the Complainant, which also exploits hotels since 2001, would hold or be affiliated with the disputed domain name.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain name and use it in good faith. Rather, it appears based upon the website related to the disputed domain name that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark.
Consequently, the Panel is of the opinion that the disputed domain name <hotel-bulgari.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
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 <hotel-bulgari.com> be transferred to the Complainant.
Date: December 6, 2019
1 The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").
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