Bulgari S.p.A v he jingwen

WIPO Case No. D2024-5101

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bulgari S.p.A v. he jingwen

Case No. D2024-5101

1. The Parties

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

The Respondent is he jingwen, United States of America (“United States”).

2. The Domain Name and Registrar

The Domain Name <bvlgariring.xyz> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 12, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2024, 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 December 16, 2024.

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 December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2025.

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The Center appointed Marina Perraki as the sole panelist in this matter on January 13, 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.

4. Factual Background

The Complainant is an Italian company founded in 1884 by Sotirios Voulgaris. The Complainant operates in
the luxury goods and hotel markets and is particularly known for its high-end jewelry, including rings. The
Complainant opened its first international locations in New York City (United States of America), Paris
(France), Geneva (Switzerland), and Monte Carlo (Monaco) in the 1970s. Currently the Complainant has
more than 320 retail locations worldwide. The BULGARI name derives from the founder’s name
(“Voulgaris”). 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’s website at “ receives over 2 million visits per month from users around the world. The Complainant’s Facebook page has 4.7 million followers and its Instagram page has 14.1 million followers. The BVLGARI/BULGARI brand is advertised globally, while many celebrities wear the Complainant’s goods at high-profile events, such as the Oscars and Premieres.

The Complainant is the owner of trademark registrations for BULGARI, including the Australian trademark registration No. 338663 BULGARI (word), filed and registered on October 5, 1979, for goods in international class 14. Similarly, the Complainant owns trademark registration for BVLGARI, including the International trademark registration 494237 BVLGARI (figurative), filed and registered on July 5, 1985, designating amongst others China and Viet Nam, for goods in international classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34.

The Complainant is also the owner of the domain name <bulgari.com> registered on February 17, 1998, under which it maintains its official website “

The Domain Name was registered on June 20, 2024, and leads to a parking page with pay-per-click (“PPC”) links that direct to offerings which compete with those of the Complainant.

The Complainant sent a cease-and-desist letter on August 23, 2024, 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 Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the
Domain Name:

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(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered or is being used in bad faith.

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 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 BVLGARI mark is reproduced within the Domain Name. Accordingly, the 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 “ring”, 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
Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.xyz” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

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 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Name such as those enumerated in the Policy or otherwise.

On the contrary, the Domain Name was used to host a parked page with PPC links. The Panel finds that it is not unlikely that the Respondent received PPC fees from the linked websites and used the Domain Name for its own commercial gain. The use of a domain name to host a parked page comprising PPC links does not

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represent a bona fide offering where such links mislead Internet users and trade off the complainant’s
trademark (Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; WIPO

Overview 3.0, section 2.9).

Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain
Name on the part of the Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.

In addition, the nature of the Domain Name, consisting of the Complainant’s trademark in its entirety with the related term “ring”, carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

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.

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.

moghadam, zeus, WIPO Case No. D2024-0280), the Panel finds it more likely than not that the Respondent had the Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This is also in view of the fact that the Domain Name incorporates the Complainant’s trademark in its entirety, namely without any other meaning than to designate the Complainant, along with a term descriptive of the Complainant’s business, clearly attempting to mislead Internet users into believing that the Domain Name is connected to the Complainant’s jewellery business.

The Panel concludes that the Respondent has registered and used the Domain Name in bad faith. The
Complainant’s trademark is well known for jewellery. Because the mark had been widely used and
registered at the time of the Domain Name registration and enjoyed reputation, 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.

As regards bad faith use, the Domain Name directs Internet users to a page displaying links to competing
third-party sites, which suggests that, presumably, the Respondent received PPC fees from the linked
websites that were listed thereon. It has been recognized that such use of another’s trademark to generate
revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v.
ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No.
D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO

Overview 3.0, section 3.5).

This, in view of the finding that the Respondent has no rights to or legitimate interests in the Domain Name,
and in the circumstances of the case, affirms the bad faith (Aygaz Anonim Şirketi v. Arthur Cain, WIPO Case
No. D2014-1206; WIPO Overview 3.0, section 3.1).

Under these circumstances and on this record, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

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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 Domain Name <bvlgariring.xyz> be transferred to the Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: January 27, 2025