Bvlgaritokyo.com

The timeline behind bvlgaritokyo.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bulgari S.p.A. v. Pimniti Thummultri Case No. D2024-5028 1. The Parties The Complainant is Bulgari S.p.A., Italy, represented by SafeNames Ltd., United Kingdom. The Respondent is Pimniti Thummultri, Thailand. 2. The Domain Name and Registrar The Domain Name <bvlgaritokyo.com> is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2024. On December 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 6, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 11, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2025. page 2 The Center appointed Marina Perraki as the sole panelist in this matter on January 9, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is an Italian company founded in 1884 by Sotirios Voulgaris. Complainant operates in the luxury goods and hotel markets and is particularly known for its high-end jewellery. Complainant opened its first international locations in New York City (United States of America), Paris (France), Geneva (Switzerland), and Monte Carlo (Monaco) in the 1970s. Currently Complainant has more than 320 retail locations worldwide. The BULGARI name derives from the founder’s name (“Voulgaris”). Complainant’s trademark is both written as BVLGARI in the classic Latin alphabet and BULGARI in the modern alphabet, the terms BULGARI and BVLGARI being often used interchangeably, even though BULGARI is intended to be used in relation to the company name (Bulgari S.p.A) and BVLGARI as the brand name. Complainant’s website at “www.bulgari.com” receives over 2 million visits per month from users around the world. Complainant’s Facebook page has 4.7 million followers and its Instagram page has14.1 million followers. The BVLGARI/BULGARI brand is advertised globally, while many celebrities wear Complainant’s goods at high-profile events, such as the Oscars and Premieres. Complainant is the owner of trademark registrations for BULGARI, including the Australian trademark registration No. 338663 BULGARI (word), filed and registered on October 5, 1979, for goods in international class 14. Similarly, Complainant owns trademark registration for BVLGARI, including the International trademark registration 494237 BVLGARI (figurative), filed and registered on July 5, 1985, designating amongst others China and Viet Nam, for goods in international classes 3, 8, 11, 14, 16, 18, 20, 21, 25, and 34. Complainant is also the owner of the domain name <bulgari.com> registered on February 17, 1998, under which it maintains its official website “www.bulgari.com”. The Domain Name was registered on July 31, 2024, and resolves to a website (the Website) that advertises gambling services, featuring “Registration” prompts that redirect to registration pages for gambling services at “www.playgame168.com”. Complainant sent a cease-and-desist letter on August 23, 2024, to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. page 3 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (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 in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “tokyo”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275). The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a Domain Name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. page 4 Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. On the contrary, as Complainant demonstrated, the Domain Name resolves to the Website which contains gambling content. Last, the Domain Name incorporates in its entirety Complainant’s mark which increases the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name. Panels have held that the use of a domain name for illegitimate activity here, claimed impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s trademark is well known for jewellery. Because the mark had been widely used and registered at the time of the Domain Name registration and enjoyed reputation, as repeatedly recognised (Bulgari S.p.A. v. Aydin Genc, WIPO Case No. D2021-4247; Bulgari S.p.A v. Fang Miao, WIPO Case No. D2022-3905; Bulgari S.p.A. v. K888VIP, WIPO Case No. D2023-3092; and Bulgari S.p.A. v. morteza amini moghadam, zeus, WIPO Case No. D2024-0280), the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This is also in view of the fact that the Domain Name incorporates the Complainant’s trademark in its entirety, that is without meaning other than to designate the Complainant, along with a geographic term, clearly attempting to mislead Internet users into believing the disputed domain name to be connected to the Complainant’s website for Tokyo, Japan. As regards use, the Domain Name resolves to the Website which includes gambling content. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; WIPO Overview 3.0, section 3.5). The Domain Name use furthermore tarnishes Complainant’s reputation by suggesting a connection between Complainant and gambling services. This is an indication of bad faith use (WIPO Overview 3.0, section 3.12; Christian Dior Couture v. Identity Protection Service / Tom Birkett, WIPO Case No. D2014-1053). page 5 Panels have held that the use of a domain name for illegitimate activity, here claimed impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bvlgaritokyo.com> be transferred to Complainant. /Marina Perraki/ Marina Perraki Sole Panelist Date: January 23, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.