Bulgari S.p.A. v Alice Collier

WIPO Case No. DCO2025-0006

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. Alice Collier

Case No. DCO2025-0006

1. The Parties

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

The Respondent is Alice Collier, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <bulgarihotels.co> is registered with Dynadot Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2025.
On January 23, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 25, 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 (Redacted for Privacy, Super Privacy Service LTD c/o Dynadot)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
January 28, 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 amended Complaint on

January 29, 2025.

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 February 3, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 23, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 27, 2025.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 7, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is Bulgari S.p.A., an Italian company founded in 1884 which operates in the luxury goods and hotel markets and is particularly known for its high-end jewelry including but not limited to watches, rings, necklaces, and fragrance products under its mark BVLGARI. The Complainant’s trademark is both written as BVLGARI in the classic Latin alphabet and also as BULGARI in the modern alphabet.

The Complainant’s official website is “ and the said domain name <bulgari.com> was registered on February 17, 1998.

The Complainant owns trademark registrations for its marks BULGARI and BVLGARI in several countries.

The details of a few such registrations are as below:

-	BULGARI – International Registration No. 452694 in classes 11, 14, 20, and 21 registered on May 15,
1980;
-	BVLGARI – International Registration No. 494237 in classes 3, 8, 11, 14, 16,18, 20, 21, 25, and 34

registered on July 05, 1985;

- BVLGARI – US Registration No. 1694380 in class 18 registered on June 16, 1992;

- BVLGARI – European Union Registration No. 007138101 in classes 35, 36, 41, and 43 registered on

June 03, 2009;

- BVLGARI – Italian Registration No. 0000984147 in classes 25, 34, 38, and 41 registered on

November 18, 2005.

The disputed domain name <bulgarihotels.co> was registered on July 18, 2024. The disputed domain name resolves into a website titled “the content of the page cannot be displayed”.

The Complainant sent a cease and desist letter to the Respondent on December 6, 2024, which remained unanswered.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark BULGARI. The Complainant submits that the terms “Bulgari” and “Bvlgari” are often used synonymously but are traditionally intended for the following purposes: “Bulgari” is used in relation to the company name (Bulgari S.p.A), whilst the term “Bvlgari” relates to the brand name. The Complainant submits that the disputed domain name subsumes the Complainant’s renowned trademark BULGARI in its entirety. Further, the Complainant alleges that the Respondent has merely added a descriptive suffix “hotels” which is inconsequential to render it dissimilar from the Complainant’s trademark BULGARI. The Complainant argues that the addition of this descriptive term reinforces the disputed domain name’s connection to the Complainant, as Internet users will likely associate this combination of terms with the Complainant’s hotel offerings. In this regard the Complainant has put their reliance on International Business Machines Corporation v. Domain Admin Tucows.com Co., WIPO Case No. D2023-1473, and Bottega Veneta SA v. Demp Cross, WIPO Case No. D2013-1534.

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The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain
name. The Complainant argues that neither the Respondent has any trademark rights nor retains any
unregistered trademark rights to the term “Bulgari” or “bulgarihotels”. The Complainant further argues that
they never gave any license to the Respondent to use any domain names featuring the BULGARI trademark.
The Complainant submits that the Respondent has not used, nor prepared to use, the disputed domain
name in connection with a bona fide offering of goods or services. In support of this claim, the Complainant
points out the fact that the disputed domain name currently resolves to an inactive website. The
Complainant further alleges that the Respondent is not commonly known by the terms “bulgarihotels” or
“Bulgari”, nor is offering any genuine goods or services under the same terms. The Complainant submits
that the non-use of a domain name is not a legitimate, noncommercial or fair use of the domain name. In
this regard the Complainant relies on AB Electrolux v. Benedict Boom, Benedict, WIPO Case No.
D2024-4742, Disabled American Veterans v. xiansheng chen, chenxiansheng, WIPO Case No. D2022-3805,
Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302, and Meta Platforms, Inc v.
Chirdon Mohamed Houssein, WIPO Case No. D2022-1156.

Bulgari S.p.A. v. Jerry Anderson, WIPO Case No. D2024-0504, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Tyson Foods, Inc. v. WhoisGuard, Inc. / Sarah Naohton, WIPO Case No. D2020-2521, Valvoline Licensing and Intellectual Property LLC v. Wesley Karr, DomainPower, WIPO Case No. D2022-4796, and Instagram, LLC v. Jane Dew,WIPO Case No. D2019-0708.

The Complaint contends that the Respondent has registered the disputed domain name in bad faith. The provide evidence of any actual good faith use, but the Respondent chose not to respond. The Complainant also alleges that the Respondent has engaged in a pattern of abusive conduct by registering other domain names that encompass the marks of third-party famous brands and that such conduct itself is probative of bad faith under the policy. In this regard the Complainant relies on
Complainant asserts that the mere registration of a domain name that is identical or confusingly similar to a
famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
The Complainant contends that non-use of the domain name does not prevent a finding of bad faith.

The Complainant submits that the Respondent has been involved in three previous UDRP cases, which further submits as additional evidence for the Respondent’s pattern of bad faith, namely:

- Sarepta Therapeutics, Inc. v. Alice Collier, WIPO Case No. DCO2024-0031;

- Cosmo Gaming Company LTD v. Alice Collier,WIPO Case No. DME2017-0002;

- Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abendroth, Wang Liqun,

WIPO Case No. D2015-1781.

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.

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.

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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 “hotels” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding 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 finds the first 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 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 with 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.

The Panel considers that the composition of the disputed domain name carries a risk of implied affiliation
with the Complainant. WIPO Overview 3.0, section 2.5.1. Further, the Respondent neither has any
trademark rights over BULGARI nor retains any unregistered trademark rights to the terms “Bulgari” or
“bulgarihotels”. The Complainant has not given a license to the Respondent to use any domain names
featuring the BULGARI trademark. The Respondent has not used the disputed domain name in connection
with any bona fide offering of goods or services. The disputed domain name currently resolves to an inactive
website. Further, the non-use of the disputed domain name is not a legitimate, noncommercial or fair use of

the domain name under the circumstances of this case.

The Panel finds 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 had registered the disputed domain name which is confusingly similar to a famous or widely known trademark of the Complainant. Further, the Complainant sent a cease-and-desist letter and gave an opportunity to the Respondent to provide evidence of any actual good faith use, but the Respondent chose not to respond, which indicated the bad faith on the Respondent’s part. Further the Respondent chose not to respond to the present proceedings neither. The Panel finds that the Respondent is a habitual cybersquatter and has been involved in previous UDRP cases, namely:

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- Sarepta Therapeutics, Inc. v. Alice Collier, WIPO Case No. DCO2024-0031;

- Cosmo Gaming Company LTD v. Alice Collier, WIPO Case No. DME2017-0002;

- Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abendroth, Wang Liqun,

WIPO Case No. D2015-1781.

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.

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 reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent the finding of bad faith under the Policy.

The Panel finds 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 <bulgarihotels.co> be transferred to the Complainant.

/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: March 20, 2025