Bottega Veneta S.r.l. v f'l ff

WIPO Case No. D2025-0064

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bottega Veneta S.r.l. v. f'l ff

Case No. D2025-0064

1. The Parties

The Complainant is Bottega Veneta S.r.l., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is f'l ff, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <aabottegaveneta.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2025.
On January 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 8, 2025, 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 (Domain Administrator, See PrivacyGuardian.org) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 8,
2025, 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 amendment to the

Complaint on January 9, 2025.

The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on January 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 3, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 4, 2025.

The Center appointed Keiji Kondo as the sole panelist in this matter on February 6, 2025. 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.

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4. Factual Background

The Complainant was founded in the mid-1960s in Vicenza, Italy, by Michele Taddei and Renzo Zengiaro. The name Bottega Veneta means “Venetian atelier” and the Complainant began to produce artisanal leather goods. The Complainant’s artisans developed a leather-weaving technique, called “intrecciato”, which has become the signature of the brand.

Over time the Complainant’s renown grew, and in the 1970s the Complainant began advertising with the tag line “When your own initials are enough”, which expresses a philosophy of individuality and confidence that now applies to a range of products including women’s and men’s ready-to-wear, fine jewelry and more. By the early 1980s Bottega Veneta was among the favorite brands of the international jet set.

The Complainant distributes its products through a worldwide network of directly operated stores, exclusive
departments and specialty stores, encompassing Europe, Asia, North and South America. Wholesale
distribution in select specialty and department stores is complemented by a growing number of Bottega
Veneta-owned boutiques, currently located in Italy, United States, China, France, United Kingdom,
Switzerland, Germany, Greece, Russian Federation, Türkiye, Denmark, Sweden, Lithuania, Ukraine, Japan,
Hong Kong, China, Guam, Republic of Korea, Taiwan Province of China, Singapore, Indonesia, Philippines,
Thailand, Kuwait, India, Malaysia, United Arab Emirates, Saudi Arabia.

The Complainant’s activity under the trademark BOTTEGA VENETA was and presently is supported by advertising campaigns worldwide, which involves the collaboration of famous artists. The Complainant’s advertising campaigns appeared in important international magazines with broad circulation such as, inter

alia, Elle, Monocle, Vogue, Vanity Fair, and Harper’s Bazaar.

The Complainant is the owner of trademark registrations for BOTTEGA VENETA (the “Complainant’s trademark”), including the following:

- European Union 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. 420038, registered on December 16, 1975, in classes 6, 11, 14,

16, 18, 20, 21, and 25; and

- United States Trademark Registration No. 1086395, filed on September 15, 1976, and registered on

February 28, 1978, in international classes 18, 20, and 25.

The disputed domain name was registered on November 12, 2024, and has been used to resolve to a
website offering for sale products which are designated as BOTTEGA VENETA, along with products of the

Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

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Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the trademark BOTTEGA VENETA in which the

Complainant has rights;

- The Respondent is not an employee, licensee, affiliated person or authorized agent of the

Complainant or in any other way authorized to use the Complainant’s trademark and was not authorized to
register or use the disputed domain name.
- In addition, in light of the Registrar-disclosed information for the disputed domain name, it is clear that
the Respondent cannot reasonably claim to be commonly known by the disputed domain name. Moreover,
the Respondent cannot claim any rights in the disputed domain name since, according to the searches
conducted by the Complainant’s representative on online trademark databases, no trademark application or

registration for BOTTEGA VENETA could be found in the name of the Respondent;

- As to the country where the Respondent is based, i.e., United States, the Complainant has a valid

trademark registration for the Complainant’s trademark;

- Moreover, the Complainant is using its trademark in connection with the advertising and sale of its

products in the United States and the Complainant’s website dedicated to the promotion of the BOTTEGA
VENETA brand and products with specific reference to the United States market is available at

“

- The Complainant also distributes its products on the United States market through specialty stores in

the United States;

- Furthermore, the Complainant has also an affiliated company based in the United States named

Bottega Veneta Inc.;

- In view of the above, the Respondent was certainly aware of the Complainant’s trademark when it

registered the disputed domain name, and clearly intended to target the Complainant and its trademark, as

also confirmed by the content of the website to which the disputed domain name resolves; and

- It should be noted that several products featured on the Respondent’s website are described as

“replica”, “replicas”, “rep”, “reps” or “replicate”. Moreover, no information about the person or entity operating the website is provided, except for the e-mail address. Furthermore, the prices at which products are offered for sale on the Respondent’s website are much cheaper than the prices applied to the BOTTEGA VENETA

products sold by the Complainant. Therefore, the products offered for sale are prima facie counterfeit.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

WIPO Overview 3.0, section 1.7.

The Complainant has registrations for the Complainant’s trademark in several jurisdictions including the domain name. The disputed domain name consists of “aa”, “bottegaveneta” and the generic Top-Level Domain “.com”, and an average observer would easily recognize that the “bottegaveneta” part of the disputed domain name has been formed by eliminating the space between “BOTTEGA” and “VENETA” from the Complainant’s trademark. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of the Policy.

The Panel finds that the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie
case that the Respondent lacks rights or legitimate interests in the disputed domain name. Especially in light
of the fact that the Respondent’s website offers for sale products which are designated as BOTTEGA
VENETA, the Panel has paid attention to the Complainant’s contention that the products offered for sale are
prima facie counterfeit. If they were genuine, further analysis under the Oki Data criteria would be
necessary, but the Panel, having carefully reviewed the Complainant’s contention, and the evidence
submitted by it to support its contention, finds that the products offered by the Respondent are most likely
counterfeit. In addition, the Respondent has not rebutted the Complainant’s prima facie showing and has not
come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain

name such as those enumerated in the Policy or otherwise.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent offers for sale “replicas” of products of the Internet users by creating a likelihood of confusion with the complainant’s trademark. The Respondent, at the time of registration of the disputed domain name, should have been aware of the Complainant’s trademark, and intentionally selected the disputed domain name, which is clearly confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Respondent registered and has been using the disputed domain name in bad faith.

Accordingly, the Panel finds that the third element of the policy has been established.

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 <aabottegaveneta.com> be transferred to the Complainant.

/Keiji Kondo/ Keiji Kondo Sole Panelist Date: February 20, 2025