Bottega Veneta SA v. Walker Denise
Claim Number: FA1811001816774
Complainant is Bottega Veneta SA (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Walker Denise (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottega-venetaoutlet.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2018; the Forum received payment on November 16, 2018.
On November 16, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <bottega-venetaoutlet.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 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2018 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@bottega-venetaoutlet.us. Also on November 16, 2018, 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 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 to the usTLD Dispute Resolution Policy (“Rules”). 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
1. Complainant has emerged as one of the world’s premier luxury brands in leather goods and distributes its products 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 BOTTEGA VENETA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,086,395, registered Feb. 28, 1978). Respondent’s <bottega-venetaoutlet.us>[i] domain name is identical or confusingly similar to Complainant’s mark as it adds a hyphen to separate the terms of the mark and appends the non-distinctive term “outlet” and the “.us” country code top-level domain (“ccTLD”).
2. Respondent has no rights or legitimate interests in the <bottega-venetaoutlet.us> domain name. Respondent is not commonly known by the domain name, as the WHOIS information lists the registrant as “Walker Denise.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose.
3. Further, Respondent does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to its website where it displays Complainant’s mark and images, while soliciting Complainant’s products for sale at discounted prices.
4. Respondent registered and uses the <bottega-venetaoutlet.us> domain name in bad faith. Respondent creates confusion among Internet users by displaying Complainant’s marks and images on its resolving webpage where it allegedly offers to sell Complainant’s products, either genuine or counterfeit. Such use of the domain name disrupts Complainant’s business.
5. Further, Respondent clearly knew of Complainant’s rights in the mark when it registered the domain name as the BOTTEGA VENETA mark has been extensively used since as early as mid-1960s in connection with Complainant’s advertising and sales of BOTTEGA VENETA products worldwide, and has been widely publicized globally and constantly featured throughout the Internet. Respondent’s knowledge is also shown by its use of the resolving webpage to display Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOTTEGA VENETA mark. Respondent’s domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bottega-venetaoutlet.us> domain name and that Respondent registered and uses the 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 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 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the BOTTEGA VENETA mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,086,395, registered Feb. 28, 1978). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, Complainant has established rights in the BOTTEGA VENETA mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bottega-venetaoutlet.us> domain name is identical or confusingly similar to Complainant’s mark as it adds a hyphen to separate the terms of the mark and appends the non-distinctive term “outlet” and the “.us” ccTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The Panel holds that the <bottega-venetaoutlet.us> domain name is confusingly similar to the BOTTEGA VENETA mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bottega-venetaoutlet.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <bottega-venetaoutlet.us> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Walker Denise” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BOTTEGA VENETA mark. Such uncontradicted assertions may be considered as evidence that a respondent lacks rights or legitimate interests in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges, without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the BOTTEGA VENETA mark in any manner. Accordingly, the Panel holds that Respondent is not commonly known by the <bottega-venetaoutlet.us> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to redirect users to its website where it displays Complainant’s mark and images, while offering for sale Complainant’s products at discounted prices. Using a domain name that is confusingly similar to a registered mark to pass off as a complainant and sell a complainant’s products does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides a screenshot of the resolving webpage, along with its own for comparison purposes, which shows that Respondent uses the infringing domain name to display Complainant’s mark, images, and various products similar to those offered on Complainant’s website. Accordingly, the Panel holds that Respondent attempts to pass off as Complainant to sell Complainant’s products, thus failing to use the <bottega-venetaoutlet.us> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent disrupts Complainant’s business by creating confusion among Internet users through its display of Complainant’s marks and images on its resolving webpage where it offers to sell Complainant’s products, either genuine or counterfeit. Using a domain name that incorporates the mark of another to disrupt a complainant’s business and trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (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)”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of the resolving webpage, along with its own for comparison purposes, which shows that Respondent uses the infringing domain name to display Complainant’s mark, images, and various products similar to those offered on Complainant’s website. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BOTTEGA VENETA mark at the time of registering the <bottega-venetaoutlet.us> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant has provided evidence that the BOTTEGA VENETA mark has been extensively used since as early as mid-1960s in connection with Complainant’s advertising and sales of BOTTEGA VENETA products worldwide, and has been widely publicized globally and constantly featured throughout the Internet. Additionally, Complainant argues, and the Panel agrees, that Respondent’s knowledge is also shown by its use of the resolving webpage to display Complainant’s products. Thus, the Panel holds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bottega-venetaoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 13, 2018
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