LUXURY GOODS INTERNATIONAL (L.G.I.) SA v. Ted Najzer
Claim Number: FA2011001921188
Complainant is LUXURY GOODS INTERNATIONAL (L.G.I.) SA (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Ted Najzer (“Respondent”), New York, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottegavenetabagsoutlet.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2020; the Forum received payment on November 19, 2020.
On November 19, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bottegavenetabagsoutlet.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bottegavenetabagsoutlet.us. Also on November 19, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in the mid-1960s in Vicenza, Italy, by Michele Taddei and Renzo Zengiaro. The name Bottega Veneta means “Venetian atelier” and the company was begun to produce artisanal leather goods. In particular, the company’s artisans developed a leather-weaving technique, called “intrecciato”, which has become the signature of the brand. These products are sold in many cities around the world through a worldwide network of directly operated stores, exclusive departments, and specialty stores, encompassing Europe, Asia, North and South America. Complainant has rights in the trademark BOTTEGA VENETA through its extensive and longstanding use in commerce and its registration of the mark with the World Intellectual Property Organization (“WIPO”), the European Union Intellectual Property Office (“EUIPO”), and the United States Patent and Trademark Office (“USPTO”), the earliest of which dates back to 1975. Respondent’s <bottegavenetabagsoutlet.us> domain name, registered on August 5, 2020, is identical or confusingly similar to Complainant’s BOTTEGA VENETA mark as it contains the mark in its entirety and merely adds the non-distinctive words “bags” and “outlet” plus the country-code “.us”.
Respondent lacks rights or legitimate interests in the <bottegavenetabagsoutlet.us> domain name. Respondent is not commonly known by the BOTTEGA VENETA mark, nor has Respondent been authorized by Complainant to use the mark. Further, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s website causes Internet users to mistakenly believe that its website is affiliated with Complainant by advertising Complainant’s products for sale on an unauthorized basis and with no disclaimer as to any connection between Respondent and Complainant. There are also facts that suggest Respondent is offering counterfeit BOTTEGA VENETA products for sale at its website.
Respondent registered and uses the <bottegavenetabagsoutlet.us> domain name in bad faith. Respondent registered and uses the disputed domain name primarily for the purpose of deceiving consumers as to the affiliation of Respondent’s website and to disrupt Complainant’s business. There are also indications that Respondent is selling counterfeit products or, at a minimum, products that are not authorized by Complainant. In any event, Respondent had actual knowledge of Complainant’s rights to the BOTTEGA VENETA mark prior to registering the disputed domain name as evidenced by the fame of the mark and the extensive references to Complainant and its trademarked products on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Respondent asserts rights in the trademark BOTTEGA VENETA through its registration of the mark with the EUIPO, the WIPO, and the USPTO. Registration of a mark with such national or regional trademark offices is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). Therefore, the Panel finds that Complainant has demonstrated its ownership of rights in the BOTTEGA VENETA mark sufficiently to meet the threshold of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bottegavenetabagsoutlet.us> domain name is identical or confusingly similar to the BOTTEGA VENETA mark as it contains the mark in its entirety and merely adds the non-distinctive words “bags” and “outlet” plus the country-code “.us”. The addition of generic terms and a ccTLD most often fails to sufficiently distinguish a disputed domain name from an asserted mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where the disputed domain name minecraft4free.us and minecraftforfreeonline.us contain Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. The Panel concludes that the differences between the domain name and its contained trademark are insufficient to distinguish one from the other for the purposes of the Policy); see also Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). Here, the Panel notes that the <bottegavenetabagsoutlet.us> domain name does incorporate the entirety of Complainant’s BOTTEGA VENETA mark and adds the words “bags” and “outlet”, both of which are related, in concept, to Complainant’s sale of handbags through retail outlets. As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
As proving a lack of Respondent’s rights or legitimate interests in respect of a disputed domain name, to the point of certainty, can be impossible given the evidentiary limitations of the Policy, Panels have held that it is sufficient for a complainant to make out a prima facie case under Policy ¶ 4(a)(ii). WIPO Overview 3.0, par. 2.1. Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Here, there is no evidence that Respondent owns trademark or service mark rights in any component of the disputed domain name per Policy ¶ 4(c)(i).
Complainant then contends that Respondent lacks rights or legitimate interests in the <bottegavenetabagsoutlet.us> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the BOTTEGA VENETA mark. Panels may look to the WHOIS information for a disputed domain name as part of their consideration of whether a respondent is or is not commonly known by the domain name under Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under UDRP Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated that the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)” of the UDRP). The private WHOIS information for the <bottegavenetabagsoutlet.us> domain name, as revealed by the concerned Registrar after the commencement of the present action, lists the registrant as “Ted Najzer” and there is no evidence to suggest that Respondent is known otherwise. Further, Complainant states that Respondent is not authorized to use the BOTTEGA VENETA mark in any manner. Finally, use of the mark on Respondent’s website does not, upon consideration of all of the circumstances of the present case, provide any evidence that Respondent is commonly known by Complainant’s mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another” should not be considered. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) As Respondent has filed no Response or made any other submission in this case the Panel is left to conclude, based upon the available evidence, that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant further argues that Respondent fails to use the <bottegavenetabagsoutlet.us> name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof as Respondent’s website causes Internet users to mistakenly believe that Respondent and its offered products are affiliated with Complainant. Where a respondent uses a disputed domain name to pass itself off as a complainant through the unauthorized sale of a complainant’s products, the Panel may find that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under [UDRP] policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant submits screenshots of the resolving <bottegavenetabagsoutlet.us> website and notes its prominent use of the BOTTEGA VENETA trademark and logo, a photo of one of Complainant’s storefronts, and its offering for sale of purported BOTTEGA VENETA products. It also points out that the offered products are from previous seasons and the displayed photographs are copied from earlier versions of Complainant’s own website; the products are listed at discounted prices of up to 70% below their typical retail prices; the word “style” is frequently used to describe the items (e.g., “New Nero Intrecciato Silk Stretch Knot Style”, “New Nero Intrecciato Nappa Crossbody Bag Style”); there appears a footer that reads “Copyright © 2020 Bottega Veneta Bags. All Rights Reserved. Powered by Bottega Veneta Bags”; and the fact that the website lacks contact details of the site’s operator and also lacks any notice of it not being affiliated with Complainant. All of these elements, combined, Complainant argues, “suggest that Respondent is using the Domain Name to advertise and offer for sale counterfeit BOTTEGA VENETA products.” While there is no definitive proof of counterfeiting, such as physical inspection of a test purchase from Respondent’s website, the Panel finds that Complainant has at least made out a prima facie case and demonstrated a high probability that the products offered on the <bottegavenetabagsoutlet.us> website are counterfeit. For its part, Respondent has not participated in this case and so it has not met its now-shifted burden of rebutting Complainant’s prima facie case. Further, even if the products offered on this site are genuine, the absence of any notice stating a lack of affiliation or other relationship between the website and Complainant fails to satisfy the test for distributors set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, Nov. 6, 2001). Therefore, upon a preponderance of the evidence presented in this case, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent registered the <bottegavenetabagsoutlet.us> domain name with actual knowledge of Complainant’s rights in the trademark BOTTEGA VENETA based on the famous nature of the mark and the content of Respondent’s website. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and form the foundation for a finding of bad faith registration per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (the “Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy paragraph 4(a)(iii).”) Complainant argues that the BOTTEGA VENETA mark is famous because it “has been widely publicized globally and constantly featured throughout the Internet”. In support, Complainant submits into evidence images from its own legitimate <bottegaveneta.com> website as well as copies of advertisements and news stories in widely-read fashion magazines, a listing of some of its shops in the United States, a listing of its key financial figures, an article detailing a prestigious fashion industry award that it won in 2014, its ranking at No. 13 among the Top 30 Most Valuable Italian Brands in 2018, and a link to two books it has published detailing the company’s history. It also notes that prior UDRP decisions have recognized its mark as being well-known and famous. See e.g. Bottega Veneta SA v. Hon LO, Lee, WIPO Case No. D2016-0225 (“The BOTTEGA VENETA trade mark is distinctive and famous”). In light of this evidence the Panel concludes that Complainant’s mark is famous and, as such, there is a very high probability that it was known to Respondent at the time the disputed domain name was registered. Further, Respondent’s actual use of the mark and images of Complainant’s products on its website confirms the conclusion that it had actual knowledge of the mark at the time the <bottegavenetabagsoutlet.us> domain name was created.
Turning next to Complainant’s contention that Respondent registered and uses the <bottegavenetabagsoutlet.us> domain name in bad faith, it is argued that Respondent uses the disputed domain name primarily for the purpose of deceiving consumers as to the affiliation of Respondent’s website by claiming to be an outlet for Complainant’s products even though it is, in fact, selling unauthorized and possibly counterfeit goods. Registration of a confusingly similar domain name with the intent to pass oneself off as a complainant by selling unauthorized or counterfeit products based upon customer confusion or to disrupt the business of a complainant can support a finding of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). Also Puma SE v. Internet Domain Services BS Corp / Joan Gonzalez, D2020-2747 (WIPO Dec. 7, 2020) (operation of “an online store in which the Complainant’s trademark is reproduced, offering for sale what appear to be counterfeit goods” found to be evidence of bad faith under Policy ¶ 4(b)(iv)). Complainant provides screenshots of the disputed domain name’s resolving webpages showing that it prominently features the BOTTEGA VENETA trademark as well as photographs of Complainant’s product and offers for sale purported BOTTEGA VENETA products from previous seasons at discounted prices (up to 70%). As noted in the previous section of this decision, the website also contains a number of other elements that suggest the products offered are, in fact, counterfeits. As Respondent has not appeared in this case or sought to rebut Complainant’s assertions or evidence, upon a preponderance of the evidence presented, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Finally, Complainant contends that Respondent registered and uses the <bottegavenetabagsoutlet.us> domain name in bad faith as Respondent failed to respond to Complainant’s multiple cease and desist letters. Failing to respond to a cease and desist letter can further support a finding of bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant argues that Respondent failed to cease and desist from wrongful use of the disputed domain name by not stopping its use after being notified by Complainant of the asserted infractions through multiple means of correspondence. The Panel finds that Respondent’s failure to respond to Complainant’s cease and desist notices provides supporting evidence that it registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bottegavenetabagsoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 17, 2020
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