Decision for dispute CAC-UDRP-108116

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

The Complainant is the owner of trademark registrations for BERETTA. Its trademark registrations include the following:

• International trademark registration No. 147879, registered since July 7, 1950;
• International trademark registration No. 746766, registered since November 8, 2000;
• European Union trademark registration No. 9743543, registered since February 17, 2011;
• International trademark registration No. 1076776, registered since February 22, 2011, including a designation of China; and
• International trademark registration No. 558880, registered since July 27, 1990, including a designation of China.

The Complainant is a privately held Italian firearms manufacturing company operating in several countries. It was founded in 1526 by Mastro Bartolomeo Beretta and is the oldest active manufacturer of firearm components in the world. By the end of the 17^th century, Beretta had become the second largest gun barrel maker and it has supplied weapons for every major European war since 1650. The Complainant states that its success extends to North America where its Beretta 92 pistol was selected as the service handgun for the U.S. Army. Nowadays, Beretta firearms are used worldwide for a variety of civilian, law enforcement and military purposes.

The Complainant company has more than 3,380 employees located across Europe, the U.S., Australia, New Zealand, Russia, China and Turkey.  In 2021, the Complainant generated 250 million Euros in revenue.

The Complainant owns various domain names incorporating the BERETTA trade mark, including:

• <beretta.it>, registered on March 25, 1996;
• <berettadefense.com>, registered on January 18, 2021; and
• <berettaholding.com>, registered on August 6, 2012.

The Complainant’s main website where its products and points of sales are advertised is www.beretta.com. The Complainant is also widely promoted on social media such as Instagram Facebook, X, and YouTube.

The Respondent is identified in the registration information as gensuo yan, beijingshidaxingqu, BeijingS, 065001, China.

The disputed domain name is <beretta-europe.shop>, registered on July 10, 2025. At the time of filing the Complaint, the disputed domain name resolved to a webpage under construction.

LANGUAGE OF THE PROCEEDINGS 

The language of the registration agreement is Chinese. 

The Complainant requested that the language of proceedings be English. The reasons provided are that: 

(i)                 Neither the Complainant nor its representatives understand Chinese. If the language of the proceedings were to be Chinese, the Complainant will have to bear a great burden and cost for translation. It would also cause unnecessary delay to the procedure.

(ii)               The web page to which the disputed domain name resolves is in English.

(iii)             The disputed domain name does not include words in the Chinese language but contains the English term “Europe” and the Top-Level domain selected by the Respondent is “.shop”, which is also an English word.

Paragraph 11 of the Rules provides that unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. The Panel is mindful that proceedings under the UDRP should be conducted with due expedition and to be relatively low-cost in nature. Pursuant to paragraph 10 of the Rules which vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case, the Panel determines that it would be fair and equitable to all parties for the language of the proceedings to be English. The indications from the Respondent’s choice of the disputed domain name and the “under construction” webpage are that the Respondent is familiar with the English language. The Respondent could have voiced his objections but did not. The Panel therefore does not see any merit in placing a costly burden on the Complainant to incur the costs of translation into Chinese, which would delay the administrative proceeding.

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

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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 name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in the BERETTA trade mark.

The disputed domain name contains the entirety of the Complainant’s BERETTA trade mark with the addition of the term “-europe”. The Panel agrees that the additional term and hyphen are insufficient to prevent a finding of confusing similarity between the disputed domain name and the BERETTA trade mark. The distinctive BERETTA trade mark is identifiable in the disputed domain name. The Panel is of the view that term “-europe” in fact enhances the confusing similarity under the first element of paragraph 4(a)(i) of the Policy as it could be perceived by Internet users to signify that the Respondent’s website, albeit under construction, is the Complainant’s official BERETTA shop dedicated to the European market.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant provided evidence that it owns trademark rights in the BERETTA trade mark long before the disputed domain name was registered. The Respondent is not affiliated with the Complainant and was not licensed or otherwise authorized by the Complainant to use the Complainant’s BERETTA trade mark or to register it in a domain name. There is no evidence that the Respondent has acquired any rights in a trade mark corresponding to the disputed domain name.

The disputed domain name was registered several hundred years after the Complainant’s business was established and after a very long time after the highly distinctive BERETTA trade mark was first registered.

The Respondent failed to rebut the Complainant’s prima facie case showing he has rights or legitimate interests in the disputed domain name. There is no evidence to show that the Respondent has used or made demonstrable plans to use the disputed domain name for any legitimate purpose. It cannot be conceived how there could be any possible right or legitimate interest the Respondent could have in view of the global reputation and highly distinctive nature of the Complainant’s BERETTA trade mark.

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

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)).

The BERETTA mark is a distinctive and very well-established trade mark with a global reputation, even in China where the Respondent appears to be located. The trade mark is exclusively associated with the Complainant and it would be hard to conceive of any good faith registration and use by the Respondent of the disputed domain name which incorporates the BERETTA mark.

The disputed domain name resolves to an inactive webpage. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Panel Views on Selected UDRP Questions, Third Edition. 

Having considered the available record and the totality of the circumstances, including: (i) the degree of distinctiveness of the BERETTA trade mark, (ii) the composition of the disputed domain name, (iii) the reputation of the Complainant’s BERETTA trade mark, (iv) the Respondent’s failure to submit a response or any evidence of actual or contemplated good-faith use, (iv) the Respondent concealing its identity, and (v) the implausibility of any good faith use to which the domain name may be put, the Panel finds that the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel therefore concludes that the disputed domain name was registered and used in bad faith.