The Complainant is Guccio Gucci S.p.A of Florence, Italy, United States of America, represented by Studio Barbero, Italy.
The Respondent is Roberto Baggio of Moscow, Russian Federation.
The disputed domain name <guccitube.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2009. On September 10, 2009, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On September 10, 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2009.
The Center appointed Angela Fox as the sole panelist in this matter on October 23, 2009. 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.
The Complainant, Guccio Gucci SpA, is an Italian fashion house. It has been doing business under the GUCCI name and trademark since 1921. The business started in Italy but expanded internationally by the 1950s. Since then, the GUCCI name has become a global brand for fashion apparel and accessories.
The Complainant owns trademark registrations for GUCCI in respect of a wide range of goods and services in countries around the world. Annexed to the Complaint were copies of Italian, International and Community Trademark registration certificates for GUCCI in plain, stylised and logo forms, dating from as early as 1967.
The Complainant also owns numerous domain names incorporating the GUCCI trademark, including <gucci.com>. Annexed to the Complaint was a list of the Complainant's domain names, which shows “gucci” coupled with various generic and descriptive terms such as “beauty,” “care,” “fragrance” and “skin”.
The WhoIs details for the disputed domain name show that it was registered on March 29, 2009. At the time the Complaint was filed it resolved to a site offering explicit sexual images and displaying links to further third-party pornographic websites.
Originally the disputed domain name was registered in the name of Mulligan Nikita Ivanov. The WhoIs details were, however, incomplete and omitted a full postal address.
The Complainant's lawyers sent a cease and desist demand by email to Mulligan Nikita Ivanov on August 19, 2009. No reply was received and a reminder was sent on September 2, 2009. This also elicited no reply.
During this time the domain name holder details changed, with the new proprietor being listed as Roberto Baggio, but retaining the same contact details. The Complainant's lawyers sent a renewed cease and desist demand to the new listed owner on September 7, 2009, but again, no reply was received. The Complaint was therefore filed on September 9, 2009.
The Complainant submits that the disputed domain name is confusingly similar to its registered GUCCI trademark, which has become internationally famous as a luxury fashion brand. The additional element “tube” is non-distinctive and the Complainant argues that its presence will not avoid confusion with the well-known GUCCI trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by a name corresponding to the disputed domain name, nor has it been authorised or licensed by the Complainant to use the disputed domain name. The Complainant submits that the Respondent must have known of the GUCCI mark when it acquired the disputed domain name. The Complainant also submits that the Respondent's use of the disputed domain name to lure Internet users to a pornographic website tarnishes the image of the GUCCI name and brand, and does not, therefore, constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant submits that the GUCCI trademark is so famous that the Respondent must have been aware of it when it acquired the disputed domain name. The Respondent's use of it to provide pornographic content and sponsored links to third-party pornographic websites amounts to an intentional attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Moreover, the Respondent's provision of incomplete WhoIs contact details, together with the apparent transfer of the domain name after the Complainant's first cease and desist demand was sent, further point to bad faith on the Respondent's part. The Complainant also observes that the original domain name holder owns a number of other domain names including <piggymovies.com>, <zenatube.com> and <pradatube.com>, all of which resolve to pornographic websites from links on the website to which the disputed domain name resolves.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The Complainant has proved that it owns trademark registrations for GUCCI in plain, stylised and logo forms in jurisdictions around the world, including Italy, the European Union, Russia, China and numerous other countries covered by the International Registrations for which copy certificates were annexed to the Complaint.
The Complainant has also filed ample evidence to support its contention that GUCCI has become internationally famous as a luxury fashion brand. Among the materials it filed was a copy of an article by Nielsen reporting that GUCCI had topped a survey as “the world's most coveted luxury brand” in 2007.
The disputed domain name contains, as its first element, the Complainant's registered trademark GUCCI. The second element, “tube,” is non-distinctive. Although it has no obvious descriptive meaning relevant to the business under the GUCCI trademark, it is nevertheless a generic word and does nothing to distinguish the disputed domain name from the Complainant's mark. The impression created by the disputed domain name is dominated by the element “gucci,” which is identical to the Complainant's well-known registered mark.
The mere addition of a generic word to a trademark within a domain name does not typically avoid confusing similarity between that domain name and an earlier trademark (see inter alia, Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com, WIPO Case No. D2004-0463; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066; International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338).
In this case, the presence of the non-distinctive word “tube” in the disputed domain name does not detract from the confusing similarity created by the inclusion of the Complainant's famous trademark GUCCI. The overall impression created by the disputed domain name is that of one that is linked in some way to the Complainant and its GUCCI fashion brand.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the Complainant, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that he does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorised or licensed the Respondent to use a domain name including its GUCCI trademark, and there is no evidence that the Respondent has been commonly known by a name corresponding to the disputed domain name. There is nothing on the record to indicate that the Respondent might enjoy a right or legitimate interest in the disputed domain name, and it has not attempted to refute the Complainant's assertions.
The Respondent has been using the disputed domain name to offer explicit pornographic content and links to third-party pornographic websites. The Complainant alleges, and the Respondent has not denied, that the Respondent is deriving income from pay-per-click (“PPC”) advertising for these third-party pornographic sites.
The use of a domain name that is confusingly similar to the Complainant's well-known registered mark in order to lure Internet users to a website offering content that many are likely to find offensive does not, in the Panel's view, constitute a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy, nor does it amount to a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. There is nothing bona fide or legitimate about adopting a confusingly similar domain name in order to attract Internet users seeking a website relating to the Complainant and its brand, only to expose them to pornographic material that is likely to offend and may also taint, either consciously or subliminally, their impressions of the GUCCI brand.
As regards the Respondent's provision of PPC links, panelists have held that such activities may amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy where domain names consist of dictionary words and their value as links to PPC landing sites is linked to the dictionary meanings, rather than to any trademark significance (see inter alia mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141).
However, that is clearly not the case where, as here, the disputed domain name consists of the Complainant's trademark which has no dictionary meaning, coupled with a generic word. In this case, the value of the disputed domain name as an attractor is bound up in the Complainant's famous trademark GUCCI. The use of domain names for landing pages where the value of the domain names as attractors is linked to trademark meaning has repeatedly been taken as evidence of cybersquatting behaviour (see inter alia, mVisible Technologies, Inc, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; and Brink's Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that it has none.
As indicated in section 6(A) above, the Complainant has submitted ample evidence to support its claim that the trademark GUCCI has become internationally famous as a luxury fashion brand.
The Panel finds it implausible that the Respondent was not aware of the GUCCI name and brand at the time it acquired the disputed domain name. The word GUCCI has no dictionary meaning, nor does it appear to be the Respondent's family name, and the Respondent has put forward no explanation for how it came to adopt a domain name including the Complainant's internationally famous trademark if it had no knowledge of the Complainant.
In the absence of any suggestion to the contrary, the Panel finds it more likely than not that the Respondent was aware of the Complainant's GUCCI trademark at the time that it acquired the disputed domain name.
Under paragraph 4(b)(iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of a respondent's web site or location or of a product or service on it.
In this case, the Respondent has used a domain name that is confusingly similar to the Complainant's trademark in order to offer pornographic content and to derive PPC revenue. The Respondent has therefore intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark. Most Internet users unwittingly lured into the Respondent's website would, upon seeing its content, realise that it had no connection with the Complainant. However, by that time, Internet users seeking the Complainant would already have been diverted to content that many are likely to find distasteful and offensive. Such conduct on the Respondent's part is inherently misleading and has the potential to tarnish the reputation of the Complainant's GUCCI trademark.
Panels have found in the past that the intentional use of a confusingly similar domain name to draw Internet users to a site hosting pornographic content or links to pornographic content is evidence of bad faith (see inter alia, Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; America Online v. Viper, WIPO Case No. D2000-1198; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557; V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301; and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314).
The Panel finds that the disputed domain name was registered and has been used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <guccitube.com> be transferred to the Complainant.
Dated: October 28, 2009