Decision for dispute CAC-UDRP-107556

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant has proved ownership of the following trademark rights:

• The prior international trademark « BERETTA » No. 55880, dated July 27, 1990, and duly renewed, covering goods in class 8 and 13;
• The prior European trademark « BERETTA » No. 009743543, dated February 17 2011 and duly renewed, covering goods and services in class 8, 9, 13, 14, 18, 25 and 34;
• The prior European trademark « BERETTA » No. 003801537, dated April 28, 2004 and duly renewed, covering goods and services in class 28.

The Registrant of 8 of the 9 disputed domain names is YAN GENSUO. The disputed domain name <beretta-usa.shop> was registered by CHEN SHENG. According to Section 4(f) of the UDRP, the Complainant requested that the complaint be consolidated. According to the WHOIS database query results, the registration service agency is determined to be PDR Ltd. d/b/a PublicDomainRegistry.com.

According to the information provided in the Complaint, the Complainant Fabbrica d'Armi Pietro Beretta is a privately held Italian firearms manufacturing company operating in several countries. Its firearms are used worldwide for various civilian, law enforcement, and military purposes. Sporting arms account for three-quarters of sales. Beretta also markets shooting clothes and accessories.

The following disputed domain names were registered:

• <beretta-it.shop> on March 27, 2025;
• <beretta-usa.shop> on March 17, 2025;
• <beretta-eu.shop> on April 6, 2025;
• <beretta-us.shop> on April 9, 2025;
• <beretta-reduce.shop> on April 15, 2025;
• <beretta-outlets.shop> on April 21, 2025;
• <beretta-rabais.shop> on April 29, 2025;
• <beretta-sell.shop> on April 11, 2025;
• <beretta-sale.shop> on February 18, 2025.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant Response has been filed and the Respondent is therefore in default.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. Consolidation of the Proceeding

The Complainant requested that the present proceeding be consolidated to address all 9 disputed domain names in a single proceeding pursuant to Paragraph 4(f) of the Policy and Article 10 of the Rules.

The Panel notes that it is not necessary to find that the disputed domain names are registered nominally to a single entity or person. The issue is to establish whether the domain names or corresponding websites are subject to common control in that there is a “unity of interests” between the various Respondents and the consolidation would be fair and equitable to all parties (see Deutsche Börse AG v. Magdalena Weiser / Sheena Bridwell / Ji Wan Tao / Yang Tian Ping / HUGFJLNV HUANG HUDOWO / HBIOBI JIANG JING / YLISHA AHA ANN, CAC-UDRP-104278 and Yahoo! Inc. v. Mahesh Rohatgi / Prakhar Rastogi, Bestwebexperts.com / Prakhar Rastogi, Best Web Experts / Privacy Protection Service INC d/b/a PrivacyProtect.org / Prashant Mishra, Vipra Busines Solution / Rina Rohatgi / Wemo Tech Support / Charu Rohatgi / Alina Jain / Raju Hirani, Alfa Infosystem / Brijesh Pandey, IBS Infosystem / Registration Private, Domains By Proxy, LLC / Amit Singh / Satya Prakash / Rajveer Singh Chawla / Pooja Pandey, Innovative Business Solutions, WIPO Case No. D2015-2323).

The Complainant provided evidence that 8 of the 9 disputed domain names are registered by the same Respondent, YAN GENSUO, as confirmed by WHOIS data. The remaining disputed domain name <beretta-usa.shop> was registered by CHEN SHENG, with identical contact information, namely:

• Registrant City: Bei Jing Shi
• Registrant Country: CN
• Registrant Phone: +86.01081235432
• Registrant Phone Ext: Registrant Fax: +86.01081235432

Furthermore, the disputed domain names all follow an identical naming pattern, incorporating the Complainant’s BERETTA trademarks combined with a country abbreviation or a descriptive term. Notably, 8 out of the 9 disputed domain names were registered within a short timeframe between March 17 and April 29, 2025 (less than six weeks) while the remaining disputed  domain name <beretta-sale.shop> was registered slightly earlier on February 18, 2025.

The Panel finds that the pattern of the disputed domain name registrations within a short timeframe strongly indicates that the disputed domain names are under common control, thereby justifying the request for consolidation. Consolidating the proceedings will promote consistency in decision-making, prevent unnecessary duplication of effort, and ensure procedural efficiency. Accordingly, the Panel considers that consolidation is not only appropriate but also fair and equitable to all parties involved.

In accordance with established UDRP practice and the discretion provided under Paragraph 4(f) of the Policy, the Panel therefore grants the request for consolidation and will render a single decision with respect to all 9 disputed domain names.

2. Identity (paragraph 4(a)(i) of the Policy)

The Panel finds that the Complainant has established rights in the BERETTA trademarks.

The disputed domain names reproduce the BERETTA trademarks in its entirety.

The addition of descriptive terms such as “reduce”, “outlets”, “sell”, “sale”, “rabais” (discount in French) or geographical terms such as “it”, “us”, “usa”, “eu” does not dispel the similarity. On the contrary, the Panel is of the opinion that the inclusion of this term enhances the likelihood of confusion, as it reinforces the false impression that the disputed domain names are associated with the Complainant.

The addition of the generic Top-Level Domain “.shop” is a technical element that does not affect the assessment of similarity under the Policy.

Thus, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademarks.

3. Absence of Rights or Legitimate Interests (paragraph 4(a)(ii) of the Policy).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent is not known by the name “BERETTA” and has not been authorized, licensed, or otherwise permitted by the Complainant to use the BERETTA trademarks. There is no indication that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate non-commercial purpose.

 Furthermore, at the time of the Complaint, the disputed domain names <Beretta-eu.shop>, <Beretta-us.shop>, <Beretta-reduce.shop>, <Beretta-outlets.shop>, <Beretta-sell.shop> and <Beretta-sale.shop > resolved to an inaccessible website, with the exception of <beretta-rabais.shop>, <Beretta-it.shop> and <Beretta-usa.shop. This passive holding, in the absence of any evidence of intended or actual use, does not support a finding of rights or legitimate interests.  This conclusion is reinforced by the global reputation and distinctive nature of the BERETTA trademarks. It is implausible that the Respondent would coincidentally register multiple domain names incorporating the mark, along with suggestive generic or geographic terms, without knowledge of the Complainant or its trademarks (Fabbrica d’Armi Pietro Beretta - S.P.A. v. AJAY KUMAR PANDEY, BERETTA HOLDINGS PTE.  LTD. Case No. D2024-3243).

Regarding the disputed domain names <beretta-rabais.shop>, <Beretta-it.shop> and <Beretta-usa.shop> they directed to a website that closely imitates the Complainant’s official site.

 Finally, the Respondent has chosen not to engage in these proceedings or offer any justification, which further evidences the absence of rights or legitimate interest.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

4. Bad faith (paragraph 4(a)(iii) of the Policy):

The Panel finds that the disputed domain names have been registered and is being used in bad faith.

In the light of the records, the Complainant showed that the disputed domain names reproduce in their entirety the BERETTA trademark. The Panel finds that the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the disputed domain names. Moreover, the time of the registration, namely between February and April 2025, is well posterior to the registration of the BERETTA trademarks. Therefore, it is clear to the Panel that the Respondent was well aware of the BERETTA trademarks and has registered the disputed domain names with the intention to refer to the Complainant and its trademarks. 

Furthermore, the Panel is of the opinion that the Respondent has registered the disputed domain names in bad faith. Indeed, the Respondent registered and operated the disputed domain names in a manner that exploits the goodwill associated with the Complainant’s BERETTA trademarks. At the time of filing the Complaint, the disputed domain names <Beretta-it.shop>, <Beretta-usa.shop>, and <Beretta-rabais.shop> directed users to websites that closely imitate the Complainant’s official site, thereby creating a misleading association with the Complainant.

The disputed domain names <Beretta-eu.shop>, <Beretta-us.shop>, <Beretta-reduce.shop>, <Beretta-outlets.shop>, <Beretta-sell.shop> and <Beretta-sale.shop > resolve to a blank page that lacks content. However, panelists have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding (QlikTech International AB v. 林 藏 (Lin Zang) Case No. D2024-2111).

Therefore, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.