Bulgari S.p.A. v shilei

WIPO Case No. D2023-1784

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Bulgari S.p.A. v. shilei

Case No. D2023-1784

1. The Parties

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

The Respondent is shilei, China.

2. The Domain Name and Registrar

The disputed domain name <bvlgariperfumeforwomen.com> is registered with Dynadot, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2023. connection with the disputed domain name. On April 22, 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 (REDACTED FOR PRIVACY, Dynadot Privacy Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 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 the same date.

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 May 2, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2023.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on June 22, 2023. 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 the Italian company Bulgari SpA, seated in Rome. The Complainant was founded in 1884 by an individual called Sotirios Voulgaris. The Complainant is particularly known for its jewelry, including but not limited to watches, rings, necklaces. Also, the Complainant is famous in fragrance products.

The BULGARI name derives from the founder’s name, “Voulgaris”. The Complainant’s trademark is written as BVLGARI in the classic Latin alphabet and BULGARI in the modern alphabet. The Complainant states that the terms BULGARI and BVLGARI are often used synonymously, but the term BULGARI is used in relation to the company name, whilst the term BVLGARI relates to the brand name.

The Complainant claims that it registered the domain name of its official website, “ on February 17, 1998 and has a strong web presence. The Complainant’s official website receives over 2 million visits per month from users around the world and these users have access to all product lines:

perfumes, jewelry, watches, leather goods and accessories.

The Complainant is the owner of several BULGARI and BVLGARI trademark registrations, including:

- the European Union Trademark Registration for BVLGARI No. 007138101 registered on June 3, 2009,
for services in classes 35, 36, 41, and 43;

- the Italian Trademark Registration for BVLGARI No. 0000984147, registered on November 18, 2005,
for goods and services in classes 25, 34, 38, and 41;

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

- the Canadian Trademark Registration for BVLGARI No. TMA312178, registered on March 14, 1986,
for goods in classes 14, 21, and 26;

- the Mexican Trademark Registration for BULGARI No. 503494, registered on September 12, 1995, for
goods in class 25;

- the International Trademark Registration for BULGARI No. 452694, registered on May 15, 1980, for
goods in classes 11, 14, 20, and 21;

- the Australian Trademark Registration for BULGARI No. 338663, registered on October 5, 1979, for
goods in class 14.

The disputed domain name was registered on January 5, 2023, and is currently directed to a webpage with pay-per-click links to third party websites, including webpages that sell perfumes and fragrances, which are direct competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s

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BVLGARI mark. To this end, such underlines that it owns registered trademarks for BULGARI/BVLGARI and that there is a goodwill and recognition attained under the name BULGARI/BVLGARI, which is a distinct identifier associated with the Complainant’s goods and services.

The Complainant states that the disputed domain name is confusingly similar to its trademark BVLGARI, as such encompasses the BVLGARI mark in its entirety with the addition of the expression “perfume for women”.

The Complainant further contends that the addition of the referred expression is not sufficient to alleviate the confusing similarity between the Complainant’s BVLGARI mark and the disputed domain name. According to the Complainant, the additions only reinforce the connection with their mark and their business.

In respect of the generic Top-Level Domain (“gTLD”) “.com”, which forms part of the disputed domain name, the Complainant requests that the Panel disregard it under the first element as it is a standard registration requirement.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with a descriptive expression – shows a clear intention of misleading Internet users, as it links to various third-party websites, including to a page that provides links to several different websites

related to fragrances, provided by competitors to the Complainant. The Complainant underlines that the
disputed domain name gives the impression that it is associated with the Complainant.

The Complainant also indicates that the Respondent registered and is using the disputed domain name in bad faith, noting the composition of the disputed domain name as well as the current use, which is a page with pay-per-click links.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i.          the disputed 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 to the disputed domain name; and

iii.        the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark BULGARI/BVLGARI. The evidence demonstrates that the Complainant is the owner of several trademark registrations for BULGARI and BVLGARI, which is considered as a well-known trademark.

The disputed domain name incorporates the Complainant’s trademark BVLGARI in its entirety. The addition of the expression “perfumeforwomen” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

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According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, several prior UDRP panels have

recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is
identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview 3.0. It is
also well established that “.com”, as a generic Top-Level Domain, may be disregarded in the assessment of
the confusing similarity between the disputed domain name and the Complainant’s mark (section 1.11.1 of
the WIPO Overview 3.0).

Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark BVLGARI is naturally associated with the Complainant, since it is not
only registered as a mark in its name, but also has been used to identify the products and services by the
Complainant for almost 140 years.

Further, the Complainant provided evidence of the renown of the mark BVLGARI and the full range of products provided under this mark to its clients. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark BULGARI/BVLGARI, and its direct relation to the Complainant.

The Respondent has not submitted a response to the Complaint. Also, there is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark BVLGARI, nor evidence that the Respondent is commonly known by the disputed domain name.

Besides, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the Complainant presented evidence that the disputed domain name has been used to link various third-party websites, including to a page that provides links to several different websites related to perfumes, offered by direct competitors of the Complainant.

The Complainant has not authorized the Respondent to use its mark BVLGARI, or register a domain name incorporating the mark. There is no evidence that the Respondent is commonly known by the disputed domain name or has made a bona fide or noncommercial fair use of the disputed domain name. The use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark (section 2.9 of the WIPO Overview 3.0).

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain
name. For this reason, the Panel believes that the Complainant has satisfied the second element of the

Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the terms “perfume for women”. Further, the additional terms can surely be considered an

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allusion to the Complainant’s business, a fact from which the Respondent may well profit by giving Internet
users the impression that the disputed domain name belongs to the Complainant.

The fact that the disputed domain name links to various third-party websites related to the commercialization of perfumes supports a finding of bad faith in these circumstances.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved 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, <bvlgariperfumeforwomen.com>, be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: July 6, 2023