Bulgari S.p.A. v. Angie Leblanc
Claim Number: FA1911001872070
Complainant is Bulgari S.p.A. ("Complainant"), represented by Caroline Valle of Safenames Ltd, United Kingdom. Respondent is Angie Leblanc ("Respondent"), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bvlgari-jewelry.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2019; the Forum received payment on November 20, 2019.
On November 20, 2019, NameCheap, Inc. confirmed by email to the Forum that the <bvlgari-jewelry.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 U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On November 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bvlgari-jewelry.us. Also on November 20, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is an Italian company founded in 1884 that has more than 230 retail locations worldwide, including in the United States. Complainant operates in the luxury goods and hotel markets, and is particularly known for high-end jewelry. Complainant uses BULGARI and BVLGARI in connection with its products and services. Complainant owns numerous trademark registrations for BVLGARI, including U.S. registration number 1,694,380, issued in 1992 for BVLGARI as a standard character mark for attaché cases and related products.
Respondent registered the disputed domain name <bvlgari-jewelry.us> in
September 2019. The domain name is being used for a website that displays the BVLGARI mark in the same typeface used by Complainant and offers for sale discounted jewelry products that it describes as BVLGARI and CARTIER products. Complainant states that Respondent has not received any license from Complainant to use the BVLGARI mark, and has not been authorized or licensed to sell Complainant's goods. Complainant also alleges that Respondent is associated with a total of 37 domain names, all hosted at the same IP address and incorporating various well-known trademarks, including <addidasnmd.us>, <calvinklein-dresses.us>, and <nikeclothes.us>.
Complainant contends on the above grounds that the disputed domain name <bvlgari-jewelry.us> is confusingly similar to its BVLGARI mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <bvlgari-jewelry.us> incorporates Complainant's registered BVLGARI trademark, adding a hyphen and the generic term "jewelry" and appending the ".us" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Bulgari S.p.A. v. Tool Domains Ltd, DRO2019-0012 (WIPO Dec. 13, 2019) (finding <bvlgari.ro> identical or confusingly similar to BVLGARI); Christian Dior Couture v. Protected Domain services / dior‑jewelry.com, Gaoyu Liu, D2011-2214 (WIPO Feb. 5, 2012) (finding <dior‑jewelry.com> confusingly similar to DIOR). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website designed to convey the false impression that it is owned by or associated with Complainant, in order to promote products that are (or, at least, are represented to be) those of Complainant as well as competing products.
A respondent's use of domain name containing a trademark to undertake sales or repairs related to the trademark owner's goods or services may give rise to rights or legitimate interests where (1) the respondent is actually offering the goods or services at issue, (2) the domain name is being used only for those goods or services, (3) the respondent accurately and prominently discloses its relationship with the trademark owner, and (4) the respondent does not attempt to corner the market in domain names reflecting the mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.8.1 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/#item28 (citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)); Kohler Co. v. Kevin Saunders / Seaside Gas Service, FA 1692851 (Forum Oct. 17, 2016) (same). Even if Respondent is actually offering genuine BVLGARI products for sale, the domain name is also being used to promote other products, and the website fails to disclose the lack of a relationship with the trademark owner.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark without authorization, and is using it to pass off as Complainant for Respondent's commercial gain. Respondent's actions are indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). In addition, Respondent's registration of many other domain names similarly incorporating well-known marks is suggestive of a pattern of bad faith registrations under paragraph 4(b)(ii), although it is not clear that Respondent's purpose has been to prevent trademark owners from reflecting their marks in corresponding domain names.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bvlgari-jewelry.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 19, 2019
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