Bulgari S.p.A. v. Monika Burke
Claim Number: FA2104001942451
Complainant is Bulgari S.p.A. (“Complainant”), represented by James Taylor of Bulgari S.p.A., Italy. Respondent is Monika Burke (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <bvlgarirings.us>, which is registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2021; the Forum received payment on April 22, 2021.
On April 22, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <bvlgarirings.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 April 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@bvlgarirings.us. Also, on April 22, 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 May 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is an Italian company operating under the BVLGARI brand name in the luxury goods and hotel markets.
Complainant holds a registration for the BVLGARI trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,107,156, registered December 27, 2016.
Respondent registered the domain name <bvlgarirings.us> on August 5, 2020.
The domain name is confusingly similar to Complainant’s BVLGARI mark.
Respondent is not licensed or otherwise authorized by Complainant to use the BVLGARI mark.
Respondent does not own any trademark or service mark related to the “BVLGARI” brand.
Respondent has not employed the domain name in connection with either a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent has used the domain name to pass itself off as Complainant online in order to profit from the sale of counterfeit goods purporting to be those of Complainant.
Respondent currently fails to make any active use of the domain name.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has engaged in a history of bad faith registrations of domain names.
Respondent knew of Complainant’s rights to the BVLGARI mark prior to registering the domain name.
Respondent has failed to respond to Complainant’s cease and desist letter of February 11, 2021.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the close similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will, where applicable, draw upon UDRP panel decisions in rendering its decision in this proceeding.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the BVLGARI trademark and service mark by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a complainant’s registration of its mark with the USPTO sufficiently confirmed its rights in the mark under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bvlgarirings.us> domain name is confusingly similar to Complainant’s BVLGARI mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us” and the generic term “rings,” which is a direct reference to an aspect of Complainant’s line of business. Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <bvlgarirings.us>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <bvlgarirings.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that Respondent currently makes no active use of the <bvlgarirings.us> domain name (a practice called “passive holding”). Because Respondent makes no active use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We also note Complainant’s further assertion, to which Respondent likewise does not object, that Respondent earlier used the <bvlgarirings.us> domain name to pass itself off as Complainant online in order to profit from the sale of counterfeit goods purporting to be those of Complainant. Because such a use of the domain name was inherently illegitimate, it cannot be said that this prior use satisfied the express requirement of Policy ¶ 4(c)(ii) that Respondent’s use of the domain name be “in connection with a bona fide offering of goods or services.” As to each of these points, see, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products on a resolving website was evidence that a UDRP respondent did not make either a bona fide offering of goods or services by means of a disputed domain name or a legitimate noncommercial or fair use of it).
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <bvlgarirings.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Monika Burke,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent evidently does not currently make any active use of the <bvlgarirings.us> domain name, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it within the meaning of Policy ¶ 4(c)(iv). And, it should go without saying that Respondent’s prior use of the domain name, as detailed in the Complaint, was in any sense legitimate or noncommercial or fair.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence in the record before us that Respondent’s prior use of the <bvlgarirings.us> domain name, as alleged in the Complaint, disrupted Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith both in registering and thus using the domain name. See, for example, Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017):
Respondent’s primary offering seem to be counterfeits of Complainant’s … products. Respondent’s use of the … domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s current failure to make any active use of the domain name, a behavior apparently prompted by its receipt of Complainant’s cease and desist letter, further illustrates Respondent’s bad faith in registering and using the domain name in that it suggests that Respondent’s strategy for avoiding the consequences of its misappropriation and misuse of Complainant’s BVLGARI mark is simply, at least temporarily, to take it underground. See, for example, CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
Moreover, it is apparent from the record that Respondent knew of Complainant and its rights in the BVLGARI mark when it registered the <bvlgarirings.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO December 18, 2000) (finding that a respondent knew of a UDRP complainant’s mark when it registered a confusingly similar domain name, and so further found that that respondent registered the domain name in bad faith).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bvlgarirings.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 18, 2021
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