Bulgari S.p.A v Agus Pranatha

WIPO Case No. D2025-1186

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A v. Agus Pranatha

Case No. D2025-1186

1. The Parties

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

The Respondent is Agus Pranatha, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <bvlgaribali.site> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2025. On March 24, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 25, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (Privacy Protect, LLC, PrivacyProtect.org) and contact

information in the Complaint. The Center sent an email communication to the Complainant on March 25,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on

March 27, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the
Complaint, and the proceedings commenced on March 28, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was April 17, 2025. The Respondent did not submit any response.
Accordingly, the Center notif ied the Respondent’s default on April 18, 2025.

The Center appointed Indrek Eelmets as the sole panelist in this matter on April 30, 2025. The Panel f inds 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 is an Italian company active in the luxury goods and hotel sectors. It was founded in 1884 and has more than 320 retail locations worldwide. The Complainant’s trademark is both written as BVLGARI in the classic Latin alphabet and BULGARI in the modern alphabet, the terms “BULGARI” and “BVLGARI” being often used interchangeably, even though “Bulgari” is intended to be used in relation to the company name (Bulgari S.p.A) and BVLGARI as the brand name.

The Complainant owns trademark registrations for BULGARI and BVLGARI in many countries around the world, such as:

- International Trademark Registration BVLGARI No. 494237 registered on July 5, 1985, covering
classes 3, 8, 11, 14, 16, 18, 20, 21, 25, 34;

- United States of America Trademark Registration BVLGARI No. 1694380 registered on June 16,
1992, covering class 18;

- European Union Trademark Registration BVLGARI No. 007138101 registered on June 3, 2009,
covering classes 35, 36, 41, 43;

- Australia Trademark Registration BULGARI No. 338663 registered on October 5, 1979, covering class
14;

- International Trademark Registration BULGARI No. 452694 registered on May 15, 1980, covering
classes 11, 14, 20, 21.

The Complainant registered the domain name <bulgari.com>, used for its of f icial website, on February 17, 1998 and has had a strong web presence since that date. The Complainant’s official website receives over 2 million visits per month. In addition, the Complainant uses the mark BULGARI on various social media channels.

The disputed domain name was registered on December 19, 2024. The disputed domain name does not currently resolve to an active website.

The Complainant sent a cease-and-desist letter on February 13, 2025, to which the Respondent did not reply.

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.

As to the first element, the Complainant argues that it holds valid trademark rights in the names BVLGARI and BULGARI and that the disputed domain name is confusingly similar to these marks. The disputed domain name fully incorporates the BVLGARI mark, and the addition of a geographic term “bali” does not suf ficiently distinguish it. The generic Top-Level Domain (“gTLD”) “.site” is irrelevant in this assessment. Therefore, the Complainant contends the disputed domain name meets the UDRP threshold for confusing similarity.

Regarding the second element, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent holds no trademark rights, is not commonly known by the disputed domain name, and has not used the domain for any bona fide or fair purpose. Instead, the disputed domain name has remained inactive. This passive use, combined with the confusing similarity to the Complainant’s trademark, supports the claim that the Respondent lacks legitimate interests under the UDRP.

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Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Given the global fame and distinctiveness of the BULGARI/BVLGARI trademark and its longstanding presence, including operations in Bali, the Respondent most likely knew of the Complainant and its mark when registering the disputed domain name. The addition of “bali” suggests intentional targeting. The Respondent ignored a cease-and-desist letter, has no evidence of good faith use, and passively holds the disputed domain name, which can still mislead or harm consumers. Mail Exchange (MX) records further imply potential for fraudulent use. Altogether, these factors indicate bad faith registration and use.

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 f irst 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.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “bali”, may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

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 of ten 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 satisf ied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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.

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The Panel f inds 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel concludes that the Respondent has registered and used the disputed domain name in bad faith. Given the wide use, distinctiveness and strong reputation of the BVLGARI trademark, as repeatedly recognised (Bulgari S.p.A. v. Aydin Genc, WIPO Case No. D2021-4247; Bulgari S.p.A v. Fang Miao, WIPO Case No. D2022-3905; Bulgari S.p.A. v. K888VIP, WIPO Case No. D2023-3092; and Bulgari S.p.A. v. morteza amini moghadam, zeus, WIPO Case No. D2024-0280), and the Complainant’s numerous trademark registrations, the Panel finds it unlikely that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s mark.

Further, the disputed domain name incorporates the Complainant’s BVLGARI mark in its entirety, combined with the geographic term “bali”, where the Complainant operates a well-known resort under the BVLGARI brand. The use of this geographic term, in conjunction with the Complainant’s distinctive mark, gives rise to a compelling inference that the Respondent deliberately targeted the Complainant.

The Respondent has set up MX records. The use of MX records associated with the disputed domain name further raises the possibility of malicious use, such as phishing or email f raud, which could exploit the goodwill associated with the Complainant’s mark. This reinforces the Panel’s f inding of the Respondent’s bad faith.

Finally, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed domain name, and the lack of any response by the Respondent to the Complainant’s cease-and-desist letter as well as in the proceedings, the implausibility of any good faith use the disputed domain name may be put, and f inds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

The Panel f inds that the Complainant has established the third element of 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 <bvlgaribali.site> be transferred to the Complainant.

/Indrek Eelmets/
Indrek Eelmets
Sole Panelist
Date: May 14, 2025