The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is zhang shao hua of Jiaxing, Zhejiang, the People's Republic of China.
The disputed domain name <gucciwell.com> is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2010. On March 4, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 9, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 9, 2010, the Center wrote by email to the parties in both Chinese and English regarding the language of proceedings. On March 10, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Respondent sent several email communications to the Center on April 6, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on April 15, 2010. 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.
On April 28, 2010, due to exceptional circumstances, the Panel extended the time for its decision.
The Complainant is the owner of numerous trade marks consisting of the words GUCCI. These registrations include Community Trade Mark Registration No. 000121988 which was registered on November 24, 1998 in respect of certain goods under Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforementioned GUCCI mark occurred well over 10 years before the registration of the disputed domain name <gucciwell.com> on November 23, 2009.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the Complaint), the website of the Respondent (as provided in Annexes 10 and 12 to the Complaint), the WhoIs database search results and webpage at “http://gucciwell.com” updated to March 16, 2010 provided by the Center and information provided by the Respondent in its email to the Center on April 6, 2010, there is no evidence in the case file concerning the background of the Respondent and its business.
The Complainant has made the following contentions:
The Complainant has rights in the trade mark GUCCI which is registered worldwide. It has used the mark both alone and in combination with other word and/or device elements regularly for more than 80 years in connection with products in the high fashion and leather industry, including ready-to-wear clothes, handbags, leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. The mark GUCCI has become a famous trade mark and the Complainant enjoys a worldwide reputation and goodwill as one of the leading manufacturers of fashion products. According to the Nielson's Global Luxury Brands Survey, the Complainant was the most important luxury brand in the world in 2007 and according to the Inter-Brand ranking of 2009 it ranked 41st amongst the Best Global Brands [See Annex 4 attached to the Complaint]. The Complainant has also registered domain names consisting of or comprising the word “gucci” including <gucci.com>, <gucci-group.com>, <gucci.info>, <gucci.biz>, <gucci-care.com>, <gucci-group.cn>, <guccibeauty.cn>, <guccibodycare.com>, <guccichina.com>, <guccichina.cn>, <guccicosmetics.com>, <guccijoy.com> and <guccipure.com>. The Complainant claims that it has consistently invested substantial advertisements to promote its products over the years and more than 6.4 million Euros were spent in 2008.
The disputed domain name <gucciwell.com> is identical or confusingly similar to the trade mark GUCCI. The disputed domain name incorporates the whole of the GUCCI trade mark. Inclusion of the non-distinctive word “well” does not distinguish it from the trade mark GUCCI.
The disputed domain name resolves to the Respondent's website which displayed the GUCCI trade mark and various products bearing the GUCCI mark alongside with those of competitors such as Burberry's which are apparently also offered for sale. The Complainant claims that the products bearing the GUCCI mark as shown on the Respondent's website are prima facie counterfeits. It is also noted that the presence of the “Google Adsense” tools indicates revenues being generated for the domain name holder by use of the website.
The Respondent is not a licensee or an authorised agent of the Complainant. It registered the disputed domain name without the authorization from the Complainant.
There is no evidence to show that the Respondent is commonly known by the disputed domain name. The way in which the Respondent's website is used shows that the disputed domain name is not being used in connection with a bona fide offering of goods or services before any notice of dispute. It also does not demonstrate any legitimate non-commercial or fair use.
Consumers are mislead to visit the site via the use of the disputed domain name which is confusingly similar with the Complainant's GUCCI trade mark so that consumers may believe that the website is an online sales channel of the Complainant or is otherwise associated with or authorised by the Complainant. By diverting customers to its webpage where products of third parties are also advertised and sponsored links are published, the Respondent is gaining from the click-through generated commissions from the sponsored links.
The Complainant claims that the trade mark GUCCI is a well-known mark which the Respondent must actually or ought to be aware of.
A cease and desist letter was issued to the Respondent by the Complainant's legal representative demanding cessation of use of the disputed domain name and its transfer to the Complainant on February 18, 2010. The Respondent did not reply to such letter.
On April 6, 2010, being one day after the due date for filing its Response, the Respondent sent 5 substantially identical emails to the Center in the terms quoted below :
“My website don't sell bags, it only provide knowledges about Gucci bags. In my website there is not [another version: there don't have] a cart, people don't buy gucci bags in my website, they can know informations about gucci bags.”
Despite the late filing of Response, the Panel has given full consideration to the statements contained in the Respondent's aforesaid e-mail.
In response to the Center's notification in English and Chinese of March 9, 2010 to both parties concerning the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on March 10, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that:
The website to which the disputed domain name resolves is an English based website which invites customers to “Write to Gucciwell”. The website did not have a single reference or section in Chinese. The Respondent has clearly demonstrated familiarity of the English language. The Complainant would be prejudiced by undue expenses or delay if its is required to translate the Complaint and conduct these proceedings in Chinese.
The Respondent has not raised any objections to the use of English as the language for these proceedings by the specified deadline of March 14, 2010. Indeed, it proceeded with filing an email communication in English on April 6, 2010.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters (being a combination of (i) English alphabets constituting the mark of the Complainant and (ii) the English word “well”); (b) the entire contents of the website to which the disputed domain name resolves (as shown in Annexes 10 and 12 to the Complaint) is in English and (c) the Respondent has by its conduct consented to the use of English as the language for the conduct of these proceedings.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The said three elements are considered below.
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade mark GUCCI by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark GUCCI. The addition of the descriptive and non-distinctive English word “well” as a suffix is not sufficient to distinguish the disputed domain name from the Complainant's trade mark GUCCI. This is so especially when GUCCI is not a common dictionary word and is also well-known. It is also well-established practice to disregard the top-level part of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
There is evidence of the Complainant's asserted registration and use of the registered trade mark GUCCI prior to the Respondent's registration of the disputed domain name <gucciwell.com> on November 23, 2009. The Complainant has confirmed that the Respondent is not a licensee or an authorized agent of the Complainant. The Respondent was not authorized to register and therefore use of the disputed domain name. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <gucciwell.com>. There is also no evidence available to demonstrate any bona fide offering of goods or services, legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt the word “gucciwell” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
The printout of the disputed website as shown in Annex 10 to the Complaint contained the following information or materials :
(a) the words “Replica Gucci Handbags for Sale <gucciwell.com>”;
(b) the word mark GUCCI in a prominent position on the top left corner of the webpage;
(c) the words “GUCCI online store”;
(d) Images of products being offered by reference to the mark GUCCI.
The word “replica” suggests replication or copies. The statement of “Replica Gucci Handbags for Sale <gucciwell.com>” lend support to the Complainant's allegation that the goods shown or offered in the Respondent's website are counterfeits.
In view of the Complainant's unequivocal assertion that the Respondent is not its licensee or an authorised agent, the claim for being the “GUCCI online store” together use of the Complainant's GUCCI trade mark in a prominent manner as shown in the top left corner of the Respondent's website would be a false claim.
In this Panel's view, it is not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the evidence available.
The Respondent's website contains the Complainant's logo which is displayed prominently together and images used in its advertising campaigns with replica Gucci handbags being offered alongside the products of the Complainant's competitors. The Respondent has registered the disputed domain name and allowed the operator of the site, to which the disputed domain name resolves, to use it primarily for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The argument in the Response to the effect that no sales were conducted on the “www.gucciwell.com” website which only provides information about GUCCI bags to people does not assist the Respondent. This is because the contents of the Respondent's website clearly contain offers of “GUCCI products” or “Replica GUCCI products” for sale. The Respondent's argument is unable to rebut the presumptions of bad faith which the Complainant can rely on under paragraph 4(b)(iii)(iv) of the Policy to establish registration and use in bad faith.
The Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gucciwell.com> be transferred to the Complainant.
C. K. Kwong
Dated: May 5, 2010