WIPO Arbitration and Mediation Center

EXPERT DECISION

Bulgari S.p.A. v. Registration Private, WhoisGuardService.com / S. H., Two Stooges LLC

Case No. DCH2021-0005

1. The Parties

Claimant is Bulgari S.p.A., of Italy, represented by Studio Barbero, Italy.

Respondent is Registration Private, WhoisGuardService.com / S. H., Two Stooges LLC, of China.

2. The Domain Name

The dispute concerns the following domain name <bulgari.ch>.

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. On February 9, 2021, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On February 10, 2021, SWITCH transmitted by email to the Center its verification response. On March 18, 2021, the Registrar Vautron Rechenzentrum AG confirmed by email to the Center that the Respondent is listed as the holder of the domain name and provided further relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified Respondent of the Request, and the Dispute resolution procedure commenced on March 26, 2021. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was April 15, 2021.

Respondent neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.

On April 16, 2021, the Center notified Claimant accordingly, who on April 16, 2021, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.

On April 23, 2021, the Center appointed Jonatan Baier as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

Claimant is an Italian jewelry manufacturer founded in 1884, which is active globally in the luxury goods and designs segment. Claimant manufactures and distributes its products through boutiques and retailers worldwide, including in Switzerland and China. Claimant is holder of the domain name <bulgari.com>, which is the brand’s global website. In addition, Claimant has numerous other domain names, such as <bulgari.cn>, <bvlgari.com> and <bvlgari.ch>.

Claimant is the owner of numerous trademark registrations, including the following:

- Switzerland trademark number 341021 for the word and design mark BVLGARI, registered on September 30, 1985, in international classes 3-4, 9, 14, 16, 18, 20-21, 24-25, 34;
- International trademark number 543321 for the word and design mark BULGARI, registered on October 11, 1989, in international classes 3, 8, 11, 14, 16, 18, 20, 21, 25, 34;
- International trademark number 494237 for the word mark BVLGARI, registered on July 5, 1985, in international classes 3, 8, 11, 14, 16, 18, 20, 21, 25, 34;
- International trademark number 556039 for a word mark BVLGARI, registered on June 11, 1990, in international class 9;
- International trademark number 1290822 for a word mark BVLGARI, registered on December 23, 2015, in international classes 9, 35, 38, 42; and
- Chinese trademark number 15659743, 15659741, 15659740 and 15659739 for a word mark BULGARI, registered on December 28, 2014, in International classes 14, 18, 25, 35.

The disputed domain name was registered through the Registrar Vautron Rechenzentrum AG on July 3, 1997. The holder of the domain name is “Registration Private” and uses the privacy protection service of “WhoisGuardService.com”. According to the Registrar, Mr. S. H. / Two Stooges LLC is the owner of the disputed domain name.

Respondent is using the disputed domain name to point to a “parking page” displaying several commercial pay-per-click links. Several of these links make references to Claimant’s trademarks BVLGARI and BULGARI (e.g. “Bulgari jewelry”) and forward users to third party websites for jewelry products.

5. Parties’ Contentions

A. Claimant

Claimant submits to be the owner of the internationally registered trademarks with protective effect for Switzerland and China. Claimant claims that the disputed domain name is identical and confusingly similar to Claimant’s registered trademarks. Furthermore, Claimant states that Respondent appears to be trying to take advantage of Claimant’s well-known trademark, which conduct violates Claimant’s right in its distinctive sign under Article 13 of the Federal Act on the Protection of Trade Marks and Indications of Source (TmPA) and under the Federal Act against Unfair competition (UCA). According to Claimant, the disputed domain name incorporates Claimant’s trademark BULGARI in its entirety, without any alteration which might distinguish Respondent’s domain name from the trademark.

Whereas the disputed domain name is identical to BULGARI trademarks, it differs from Claimant’s trademark BVLGARI only by the substitution of the letter “U” with the letter "V", which does not affect the confusing similarity.

Moreover, Claimant claims that Respondent is not a licensee or an authorized agent of Claimant or in any way legally permitted to use Claimant’s trademarks BULGARI and BVLGARI.

B. Respondent

Respondent did not reply to Claimant’s contentions.

6. Discussion and Findings

According to the Rules of Procedure, Paragraph 24(c), “the Expert shall grant the request if the allocation or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland”.

The Rules of Procedure, Paragraph 24(d) specify that “a clear infringement of an intellectual property right exists when:

(i) both the existence and the infringement of the claimed right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
(ii) the respondent has not conclusively pleaded and proven any relevant grounds for defense; and
(iii) the infringement of the right justifies the transfer or revocation of the domain name, depending on the remedy requested in the request”.

A. Claimant has a right in a distinctive sign under the laws of Switzerland

The Expert finds that Claimant has established its ownership of active Swiss trademarks BULGARI and BVLGARI with respect to the Swiss trademark number 341021 and the above International trademarks designating Switzerland. Accordingly, Claimant has provided sufficient evidence of Swiss trademark rights in accordance with Paragraph 24(d)(i) of the Rules of Procedure.

B. The allocation or use of the domain name constitutes a clear infringement of a right in a distinctive sign which Claimant owns under the laws of Switzerland

According to Article 13, paragraph 1 and paragraph 2(c) of the TmPA, a trademark right confers on its proprietor the exclusive right to use the trademark to identify the goods or services for which it is claimed, and to prohibit others from offering, providing or storing goods for that purpose under a sign that is identical or confusingly similar to its trademark. Thus, trademarks are to be assessed in principle depending on the goods and services for which they claim protection (so-called principle of specialty; Aschmann/Noth, in: Noth/Bühler/Thouvenin [ed.], SHK Markenschutzgesetz (MSchG), Bern 2017, art. 2 N 30).

The Swiss Federal Supreme Court held that domain names have an identifying function and must maintain the necessary distance from the signs of third parties with an absolute protection in order to avoid confusion (see BGE 126 III 239 c. 2b/c). A likelihood of confusion exists as soon as, on the basis of the relevant criteria (typeface, effect, meaning) and due to the similarity of the range of services offered, confusion may arise among users of the Internet. It is not a prerequisite that such confusion actually occurred (see BGE 128 III 401 c. 5). Country code Top-Level Domains ("ccTLD") such as “.ch” have a descriptive effect and contribute little or nothing to the distinctiveness (Aschmann, in: Noth/Bühler/Thouvenin [ed.], SHK Markenschutzgesetz (MSchG), Bern 2017, art. 2 lit. a N 146).

The disputed domain name <bulgari.ch> is identical to the BULGARI Claimant’s trademark and differs only by the addition of the “.ch” ccTLD, which does not create any sufficient distinction to exclude the likelihood of confusion. Furthermore, the disputed domain name is visually and phonetically similar to the trademark BVLGARI. The substitution of the letter “U” for the roman letter “V” does not impact the pronunciation of the marks.

The disputed domain name resolves to a “parking page” with commercial links – which also comprise Claimant’s trademarks – and to third party websites for jewelry products. There is an obvious risk that users who wish to visit Claimant’s website will unintentionally access to the Respondent’s website. In the context of the principle of specialty set out above, the disputed domain name refers to the identical sector of jewelry products in which Claimant is active and for which the exclusive rights exist in favor of Claimant. The disputed domain name thus creates a likelihood of confusion with Claimant’s trademark and websites among users of the Internet.

The registration and use of the disputed domain name by Respondent violates Article 13 TmPA for the reasons described above and as a consequence constitutes a clear infringement of Claimant’s trademark rights under Swiss law.

Given that the transfer of the disputed domain name is already justified on the basis of the clear trademark infringement, any potential infringement of the UCA does not need to be examined.

7. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the disputed domain name <bulgari.ch> be transferred to Claimant.

Dr. Jonatan Baier
Expert
Dated: May 4, 2021