Bottega Veneta SA v. Patrick Adderley
Claim Number: FA2005001898113
Complainant is Bottega Veneta SA (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Patrick Adderley (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottegaveneta-bags.us> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2020; the Forum received payment on May 29, 2020.
On May 29, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bottegaveneta-bags.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 June 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2020 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@bottegaveneta-bags.us. Also on June 3, 2020, 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 June 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility 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 National Arbitration 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, Bottega Veneta, is a luxury fashion brand. Complainant has rights in the BOTTEGA VENETA mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,086,395, registered February 28, 1978). Respondent’s <bottegaveneta-bags.us> domain name is confusingly similar to Complainant’s BOTTEGA VENETA mark, as the domain name incorporates the mark in its entirety and simply adds the generic term “bags,” a hyphen, and the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <bottegaveneta-bags.us> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the BOTTEGA VENETA mark in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant in an effort to sell unauthorized products.
Respondent registered and is using the <bottegaveneta-bags.us> domain name in bad faith. Respondent attempts to pass off as Complainant to purportedly sell Complainant’s own products, which are likely counterfeit. Further, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOTTEGA VENETA mark. The Domain Name is confusingly similar to Complainant’s BOTTEGA VENETA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 and 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 Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant has rights in the BOTTEGA VENETA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 1,086,395, registered February 28, 1978). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i)”).
The Panel finds that the <bottegaveneta-bags.us> Domain Name is confusingly similar to the BOTTEGA VENETA mark as it fully incorporates the BOTTEGA VENETA mark adding only the generic term “bags”, a hyphen, and the “.us” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BOTTEGA VENETA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Patrick Adderley” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website (the “Respondent’s Website”), where the Respondent purports to sell versions of Complainant’s BOTTEGA VENETA products. If such goods are counterfeit products, the use of a confusingly similar domain name to sell counterfeit versions of a complainant’s goods or goods directly in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
If the Respondent is reselling genuine Complainant’s BOTTEGA VENETA products through the Respondent’s Website, then the Panel notes the guidance provided in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 as to when a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirements including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this proceeding, the website to which the Domain Name resolves purports to offer genuine BOTTEGA VENETA branded goods, prominently displays Complainant’s mark without license or authority and misleadingly purports to be operated by Complainant. Therefore, the Respondent’s Website does not accurately disclose Respondent’s relationship with Complainant and in these circumstances, Respondent cannot rely on a defense based on the Oki Data principles.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, November 22, 2019, Respondent had actual knowledge of Complainant’s BOTTEGA VENETA mark since the Respondent’s Website purports to offer (either genuine or counterfeit versions of) Complainant’s products, and hence makes repeated references to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s BOTTEGA VENETA Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that either offers counterfeit versions of Complainant’s products or offers genuine versions but seeks to mislead consumers by asserting that the Respondent’s Website is an official website of Complainant. Using a confusingly similar domain name to pass off as a complainant and offer products in direct competition with the complainant can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”);
The Panel finds Complainant has satisfied 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 <bottegaveneta-bags.us> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 30, 2020
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