Bulgari S.p.A. v gorineza lereika

WIPO Case No. D2023-4055

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A. v. gorineza lereika

Case No. D2023-4055

1. The Parties

The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom (“UK”).

The Respondent is Gorineza lereika, UK.

2. The Domain Name and Registrar

The disputed domain name <bulgarihotelsgroup.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2023. On September 28, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2023, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2023 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 October 9, 2023.

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 October 13, 2023. In accordance with the Rules, paragraph
5, the due date for Response was November 2, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 9, 2023.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 17, 2023. 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 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.

The Complainant is headquartered in Rome, Italy and opened its first international locations in New York worldwide.

The BULGARI name derives from the founder’s name (‘Voulgaris’), and the terms BULGARI and BVLGARI are often used synonymously, but these terms 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 registered the domain name of its official website, “ on February 17,
1998 and has had a strong web presence since that date.

The Complainant’s official website, which receives over 2 million visits per month from users around the world (Annex 5), enables users to access all product lines: jewelry, watches, fragrances, 6 leather goods and accessories. Internet users are also able to locate the Complainant’s stores and authorized retailers worldwide.

As a further indication of the Complainant’s success, the Complainant’s store in Rome has become a popular meeting place for movie stars and socialites, amplifying the international fame of the brand.

The BVLGARI/BULGARI brand is well-advertised globally, with promotional videos, billboards and other sources of marketing material, which has further promoted the brand’s global recognition for high-end jewelry and accessories.

The Complainant’s products are renowned for having a distinctive style that celebrates the Complainant’s rich Roman history.

As part of their effort to protect their Intellectual Property, the Complainant, its affiliates, subsidiaries, and associated companies own trademarks for the terms BVLGARI and BULGARI within numerous jurisdictions including but not limited to the following:

- BULGARI Australia 338663,registered on October 5, 1979, class 14

- BULGARI United States of America 1184684, registered on January 5, 1982, class 14

- BULGARI International 452694, registered on May 5,1880, classes 11, 14, 20, 21 7

- BULGARI the UK UK00901510866, registered on June 20, 2002, classes 14, 35, 41, 42

- BVLGARI the UK UK00001227859, registered on September 2, 1988, class 24

- BVLGARI International 494237 July 5,1985 classes 3, 8, 11, 14, 16, 18, 20, 21, 25, 34

- BVLGARI European Union 007138101, registered on June 3,2009, classes 35, 36, 41, 43

The Complainant further utilizes the BVLGARI trademark as part of their brand logo.

- The Complainant has also established a social media presence and uses their trademarks

BVLGARI/BULGARI to promote their services under this name, in particular on the following social platforms:

- Facebook: ~ 4.6 million followers

- Twitter: ~ 795.4k followers

- Instagram: ~ 13 million followers

- Pinterest: ~ 61.5k follower.

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The Respondent is an individual located in the UK and registered the disputed domain name on May 23,

2023. The disputed domain name currently resolves to a registrar parking page.

A. Complainant

By the Complaint, the Complainant contends that:

- it holds a registered trademark in various countries, which highlights the goodwill and recognition that has
been attained under the name BVLGARI.
- the BULGARI trademarks are a distinctive identifier associated with the Complainant’s services.
- previous Panels have recognized the value of the BVLGARI/BULGARI trademark and its association with
the Complainant.
- the registered trademark is recognisable within the limits of the second level of the disputed domain name.
- the disputed domain name incorporates the BULGARI trademark, with the addition of the terms “hotels”
and “group”, which further reinforces the confusing similarity with the Complainant’s luxury hotel offerings.
- the Respondent has not registered any trademarks for the term BULGARI, and there is no evidence that
the Respondent holds any unregistered right to the term BULGARI.
- the Respondent has not received any license from the Complainant to use domain names that feature the
BULGARI trademark.
- all active trademarks for the term BULGARI are held by the Complainant.
- the disputed domain name does not currently resolve to content other than a Namecheap landing WHOIS
verification page, despite being registered a few months ago, which indicates that the Respondent is not
using the disputed domain name in connection with an offering of goods and services in good faith.
- there is no evidence of demonstrable preparations to use the disputed domain name in good faith.
- the Respondent is not known, nor has it ever been known as BULGARI, which is distinctive and not used in
commerce other than by the Complainant.
- there is no plausible reason for the registration of the disputed domain name other than to take advantage
of the goodwill and valuable reputation attached to the BULGARI brand, as the Respondent has no
connection or affiliation with the Complainant and has not received any license or consent to use the
Complainant’s trademark in any way.
- there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed
domain name.
- the Respondent both registered and is using the disputed domain name in bad faith in accordance with
paragraph 4(a)(iii) of the Policy.
- the Complainant’s earliest BULGARI trademark registration predates the creation date of the disputed
domain name by at least 40 years.
- the Complainant has accrued substantial goodwill and recognition since the Complainant’s establishment in
1884 – the BVLGARI/BULGARI name has become synonymous with high-end and stylistically unique luxury
jewelry, watches and accessories.
- anyone with access to the Internet can find the Complainant’s trademarks on public trademark databases.
- the Complainant submits that a cease-and-desist letter was sent to the Respondent on August 14, 2023, to
put the Respondent on notice of the Complainant’s trademark rights and with a view of resolving the matter
amicably.
- the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or
other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on
the Respondent’s website or location.
- the circumstances of this case indicate that the Respondent has intentionally been using the commercial
value and goodwill of the Complainant’s brand to attract and redirect Internet users to its own website.
- there is a high likelihood of confusion given the additional terms used in the disputed domain name, as
alluded to above.
- the previous use of PPC links by the Respondent on the disputed domain name constitutes a clear attempt
to generate a commercial gain, particularly by misleading online users with the disputed domain name and
subsequently redirecting these online users to third-party websites.

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B. Respondent

Despite of being procedurally summoned, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it holds rights in the well-known and distinctive BULGARI trademarks in relationship to operation of luxury goods and hotel markets.

The disputed domain name comprises of the Complainant s trademarks BVLGARI/BULGARI with the
addition of the terms ‘hotels’ and ‘group’, which does not prevent a finding of confusing similarity with the
Complainant’s trademarks.

The Panel notes that the registered trademarks BVLGARI/BULGARI are completely recognisable within the limits of the second level of the disputed domain name.

Consequently, this Panel finds that the disputed domain name is confusingly similar with the establishing the first element of the Policy.

B. Rights or Legitimate Interests

In respect of the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. It is common UDRP’s practice according to the section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0.”) that if the Complainant makes that prima facie showing, the burden of production shifts to the Respondent.

In these proceedings, per Complainant’s assertions,

- the Respondent has not registered any trademarks for the term BULGARI, and there is no evidence that
the Respondent holds any unregistered right to the term BULGARI;
- the Respondent has not received any license from the Complainant to use domain names that features
the BULGARI trademark;
- all active trademarks for the term BULGARI are held by the Complainant;
- the disputed domain name does not currently resolve to content other than a Namecheap landing WHOIS
verification page, despite being registered a few months ago, which indicates that the Respondent is not
using the disputed domain name in connection with an offering of goods and services in good faith.
- there is no evidence of demonstrable preparations to use the disputed domain name in good faith.
- the Respondent is not known, nor has it ever been known as BULGARI, which is distinctive and not used in
commerce other than by the Complainant.
- there is no plausible reason for the registration of the disputed domain name other than to take advantage
of the goodwill and valuable reputation attached to the BULGARI brand, as the Respondent has no
connection or affiliation with the Complainant and has not received any license or consent to use the
Complainant’s trademark in any way.

This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

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For the reasons above, this Panel finds that the Complainant succeeded clearly in establishing the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees that circumstances asserted by the Complainant are indicative of bad faith registration and use of the disputed domain name by the Respondent.

The Complainant’s earliest BULGARI trademark registration predates the creation date of the disputed domain name by at least 40 years and in time the Complainant has accrued substantial goodwill and recognition since the Complainant’s establishment in 1884 the BVLGARI/BULGARI name has become synonymous with high-end and stylistically unique luxury jewelry, watches and accessories.

Singapore Airlines Ltd v. European Travel Network, WIPO Case No. D2000-0641).

In the opinion of the Panel there is no plausible reason for which the Respondent has registered the disputed Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. As per previous UDRP’s practice, the selection of a domain name that is so obviously connected to a complainant’s trademark strongly suggests ‘opportunistic bad faith’, particularly where it is held by someone with no affiliation with the complainant (see
domain name except for that the Respondent has intentionally attempted to attract, for commercial gain,

Not answering to the cease and desist letter sent to the Respondent in August 2023, with a view of resolving the matter amicably, infers further bad faith behaviour of the Respondent in respect to the disputed domain name

The previous use of pay-per-click (“PPC”) links by the Respondent on the disputed domain name constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the disputed domain name and subsequently redirecting these online users to third-party websites.

This is particularly so given that the disputed domain name uses keywords that are in connection with the
Complainant’s hotel offerings, which increases the likelihood of confusion.

For all the reasons above, this Panel finds that the Complainant succeeded clearly in establishing the third and the last 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 <bulgarihotelsgroup.com> be transferred to the Complainant.

/Dr. Beatrice Onica Jarka/
Dr. Beatrice Onica Jarka
Sole Panelist
Date: December 1, 2023