LUXURY GOODS INTERNATIONAL (L.G.I.) SA v. Cynthia Peters
Claim Number: FA2011001921189
Complainant is LUXURY GOODS INTERNATIONAL (L.G.I.) SA (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Cynthia Peters (“Respondent”), United States of America (“United States”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottegavenetabags.us> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun 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 <bottegavenetabags.us> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 United States Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@bottegavenetabags.us. Also on November 20, 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 Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in the mid-1960s in Italy, Complainant has produced artisanal leather goods for distribution and sale and is a well-known brand worldwide. Complainant has rights in the BOTTEGA VENETA trademark through Complainant’s registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 6809362, registered May 31, 2010), and through Complainant’s registration of the mark in the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,086,395, registered on February 28, 1978) (hereinafter collectively referred to as the “BOTTEGA VENETA Mark”).
Over the years, Complainant has registered more than 400 domain names incorporating the BOTTEGA VENETA Mark, or variations thereof, under several different generic Top-Level-Domain {“gTLD”) names.
Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s BOTTEGA VENETA Mark as it contains the BOTTEGA VENETA Mark in its entirety, merely adding the dictionary term “bags”, followed by the country code Top-Level Domain (“ccTLD”) “.us”. Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name, since, among other reasons, Respondent has not been authorized by Complainant to use the BOTTEGA VENETA Mark nor has it used the disputed domain name in connection with a bona fide offering of goods or services. Finally, Respondent registered or is using the disputed domain name in bad faith since Respondent registered and is using the disputed domain name primarily for the purpose of deceiving consumers as to the affiliation of Respondent’s website by selling unauthorized products purportedly sponsored by Complainant. Respondent registered the disputed domain name on July 21, 2019, years after Complainant first registered and used the BOTTEGA VENETA Mark. The disputed domain name resolves to a website featuring the BOTTEGA VENETA Mark and offering for sale purported BOTTEGA VENETA goods at exceptionally discounted prices. Moreover, Complainant sent several cease and desist letters to Respondent, but received no response, another indication of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns trademark rights in the BOTTEGA VENETA Mark, that the disputed domain name is confusingly similar to the BOTTEGA VENETA Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered or 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 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 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”).
The Panel finds that Complainant has rights in the BOTTEGA VENETA Mark through its registration of the mark with the EUIPO (e.g. Reg. No. 6809362, registered May 31, 2010), and through Complainant’s registration of the mark in the USPTO (e.g., Reg. No. 1,086,395, registered on February 28, 1978). Registration of a mark with the EUIPO and the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”); Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel further concludes that the disputed domain name is identical or confusingly similar to Complainant’s BOTTEGA VENETA Mark as it contains the BOTTEGA VENETA Mark in its entirety, merely adding the dictionary term “bags”, followed by the ccTLD “.us”. The addition of a dictionary term fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a dictionary term). Moreover, the addition of a ccTLD to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by any of the disputed domain names, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the BOTTEGA VENETA Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) is found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent attempts to pass off as Complainant to deceive Internet users as to the affiliation or association of the Complainant. Such use is indicative of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
Here, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent uses the disputed domain name to resolve to a website that sells counterfeit goods, purportedly those of the Complainant. Using a confusingly similar domain name to divert Internet users to a website that sells counterfeit goods is emblematic of bad faith. In this case, the disputed domain name resolves to a website that displays goods of Complainant offered at exceptional discounts – as much as 90% off – signaling to customers that the products must be counterfeit, and thus, demonstrating bad faith.
Third, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BOTTEGA VENETA Mark based on the fame of the trademark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and demonstrate bad faith per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, the Panel finds that Complainant’s BOTTEGA VENETA Mark is famous because prior UDRP decisions have recognized it as such. See e.g., Bottega Veneta SA v. Hon LO, Lee, WIPO Case No. D2016-0225 (“The BOTTEGA VENETA trade mark is distinctive and famous”).
Finally, the Panel finds that Respondent’s failure to respond and comply with Complainant’s multiple cease and desist letters demonstrates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy 4(b)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bottegavenetabags.us> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 27, 2020
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