LUXURY GOODS INTERNATIONAL (L.G.I.) SA v. Ralph Mendez
Claim Number: FA2103001935845
Complainant is LUXURY GOODS INTERNATIONAL (L.G.I.) SA (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Ralph Mendez (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottegavenetahandbagsoutlet.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bottegavenetahandbagsoutlet.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 March 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2021 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@bottegavenetahandbagsoutlet.us. Also on March 11, 2021, 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a well-known producer of artisanal leather goods.
Complainant has rights in the BOTTEGA VENETA mark through Complainant’s registration of the mark with the European Union Intellectual Property Office (“EUIPO”).
Respondent’s <bottegavenetahandbagsoutlet.us> domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark as it contains the BOTTEGA VENETA mark in its entirety and merely adds the non-distinctive elements “handbags” and “outlet” with the country-code top-level domain (“ccTLD”) “.us”.
Respondent lacks rights or legitimate interests in the <bottegavenetahandbagsoutlet.us> domain name. Respondent is not commonly known by the BOTTEGA VENETA mark, and Respondent is not a licensee, an authorized agent of Complainant or, in any other way, authorized to use the Complainant’s trademark BOTTEGA VENETA. 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 Respondent’s website is affiliated with Complainant by advertising Complainant’s products for sale on an unauthorized basis.
Respondent registered or uses the <bottegavenetahandbagsoutlet.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 by claiming to be Complainant and selling unauthorized products. Respondent had actual knowledge of Complainant’s rights to the BOTTEGA VENETA mark prior to registering the disputed domain name evidenced by the famous nature of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the BOTTEGA VENETA mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in BOTTEGA VENETA.
Respondent’s uses the domain name to address a website advertising Complainant’s products for sale at a discount.
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.”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s EUIPO registration of its BOTTEGA VENETA mark establishes Complainant’s rights in such mark for the purposes of 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).”).
The at-issue domain name contains Complainant’s BOTTEGA VENETA trademark less its space, followed by the term or term(s) “handbags outlet,” with all followed by the top level domain name “.us.” The differences between the <bottegavenetahandbagsoutlet.us> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). In fact, the term “handbag outlet” is suggestive of Complainant’s retail business and thus only adds to any confusing caused by Respondent’s inclusion of BOTTEGA VENETA in the domain name. Therefore, the Panel finds that the <bottegavenetahandbagsoutlet.us> domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <bottegavenetahandbagsoutlet.us> indicates that “Ralph Mendez” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <bottegavenetahandbagsoutlet.us> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <bottegavenetahandbagsoutlet.us> domain name addresses a website that internet users are led to believe is affiliated with Complainant. The intended confusion caused by the trademark laden domain name is intensified by Respondent’s use of the website to, without authorization, advertise Complainant’s products for sale at a discount and by Respondent’s display of images lifted from Complainant’s official website. Moreover, the faux website also features Complainant’s BOTTEGA VENETA trademark and a copyright notice in Complainant’s name. Such use of the domain name is neither indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(ii), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(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 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 policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <bottegavenetahandbagsoutlet.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interest, Respondent uses the domain name to promote and sell Complainant’s products at a discount. Respondent’s use of the confusingly similar domain name in this manner, which misleads consumers to believe there is an association between Complainant and Respondent’s domain name where there is none, is disruptive to Complainant’s business and shows Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also, Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (“The Panel here finds that Respondent’s use of the <stevemaddenboots.us> domain name to sell counterfeit goods based on Complainant’s goods constitutes bad faith registration and use under Policy ¶ 4(b)(iv)”).
Moreover, Respondent registered the <bottegavenetahandbagsoutlet.us> domain name knowing that Complainant had trademark rights in BOTTEGA VENETA. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s incorporation of the suggestive term “handbags outlet” into the domain name, from Respondent’s misappropriation of Complainant’s trademark and images on the <bottegavenetahandbagsoutlet.us> website, and from Respondent’s further use of the domain name to sell Complainant’s products as discussed elsewhere herein. Therefore, the Panel finds that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <bottegavenetahandbagsoutlet.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <bottegavenetahandbagsoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 7, 2021
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