World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Zhou Guodong

Case No. D2010-1695

1. The Parties

The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.

The Respondent is Zhou Guodong of United States of America.

2. The Domain Names and Registrar

The disputed domain names <buyguccihandbags.com>, <discountguccipurses.com>, <discountgucciwallets.com>, <getguccihandbags.com>, <guccibagsdiscount.com>, <guccicollections.com>, <guccigiftshop.com>, <guccigiftstore.com>, <guccihandbagsonsale.com>, <guccihandbagssale.com>, <guccihandbagswallets.com>, <guccihandbagtoday.com>, <guccinewcollections.com>, <guccishandbags.com>, <louisvuittongucci.com>, <luxuryguccibags.com>, <myguccicollections.com>, <myguccistore.com>, <popguccihandbags.com>, <topguccihandbags.com>, <vividguccihandbags.com>, <yeahguccicollections.com>, <yeahgucci.com>, <yeahguccishop.com>, <yesguccigifts.com>, <yesguccihandbags.com> (“Disputed Domain Names”) are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2010. On October 7, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the Disputed Domain Names. On October 9, 2010 and October 14, 2010, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by emails to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 14, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On October 15, 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 October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2010.

The Center appointed Kar Liang Soh as the sole panelist in this matter on November 18, 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.

4. Factual Background

The Complainant is part of the Gucci group which is part of the French Pinault-Printemps-Redoute group. The Gucci group started as a leather goods and luggage business in 1921 in Florence. The business has since built a global presence with stores from Milan to New York. The trade mark GUCCI has been associated with the Complainant for over 80 years in relation to high-fashion and leather products. The Complainant has been ranked 41 and 44 by Interbrand in 2009 and 2010 respectively.

The Complainant holds many registrations for the trade mark GUCCI around the world, including:

Jurisdiction Trade Mark No. Registration Date

Italy 801958 January 13, 1977

WIPO 429833 March 30, 1977

United States 1093769 June 3, 1977

CTM 121988 April 1, 1996

The Complainant and other members of the Gucci group also hold domain name registrations comprising the word GUCCI including <gucci-group.com>, <gucci.info> and <gucci.biz>. Most of the domain names of the Gucci group redirect to the website at “www.gucci.com”.

The Disputed Domain Names were registered by the Respondent on the following dates:

Domain Name Registration Date

<buyguccihandbags.com> September 21, 2009

<discountguccipurses.com> September 18, 2009

<discountgucciwallets.com> September 18, 2009

<getguccihandbags.com> September 21, 2009

<guccibagsdiscount.com> September 18, 2009

<guccicollections.com> September 21, 2009

<guccigiftshop.com> August 17, 2009

<guccigiftstore.com> August 17, 2009

<guccihandbagsonsale.com> September 18, 2009

<guccihandbagssale.com> September 18, 2009

<guccihandbagswallets.com> September 18, 2009

<guccihandbagtoday.com> September 21, 2009

<guccinewcollections.com> September 21, 2009

<guccishandbags.com> September 21, 2009

<louisvuittongucci.com> September 18, 2009

<luxuryguccibags.com> September 21, 2009

<myguccicollections.com> September 21, 2009

<myguccistore.com> May 8, 2009

<popguccihandbags.com> September 21, 2009

<topguccihandbags.com> September 21, 2009

<vividguccihandbags.com> September 21, 2009

<yeahgucci.com> September 21, 2009

<yeahguccicollections.com> September 21, 2009

<yeahguccishop.com> August 17, 2009

<yesguccigifts.com> June 12, 2009

<yesguccihandbags.com> September 21, 2009

Very little is known about the Respondent beyond the WhoIs information for the Disputed Domain Names. It is noted that the Respondent purports to be based in San Francisco, United States of America. The Disputed Domain Names <guccicollections.com>, <myguccistore.com>, <yesguccigifts.com>, <guccigiftshop.com> and <guccigiftstore.com> resolve to websites purporting to offer Gucci bags for sale. Online shopping cart facilities are apparently provided at these websites. The Disputed Domain Names <guccishandbags.com> and <yeahguccishop.com> resolve to blank pages. The other Disputed Domain Names resolve to parking websites.

The Complainant wrote to the Respondent on July 12, 2010 requiring the Respondent to cease use of the Disputed Domain Names and to transfer them to the Complainant. The Respondent did not reply to the Complainant. The Respondent also did not reply to the Complainant’s follow-up correspondence of September 2, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s GUCCI trade mark. The Disputed Domain Names incorporate the whole of the Complainant’s GUCCI trade mark and include non-distinctive elements which do not distinguish the Disputed Domain Names from the Complainant’s GUCCI trade mark. The Disputed Domain Name <luoisvuittongucci.com> additionally includes the trade mark of another company Louis Vuitton;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is neither a licensee of the Complainant nor authorized to use the trade mark GUCCI. The Respondent is not commonly known by the Disputed Domain Names. The products offered on the websites resolved from the relevant Disputed Domain Names are prima facie counterfeit products; and

(3) The Disputed Domain Names were registered and are being used in bad faith. The GUCCI trade mark is well-known and the Respondent must be aware of the same. The Respondent is attempting to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation or endorsement of the Respondent’s websites or products on the Respondent’s websites. The Respondent’s address does not correspond to any existing address. The use of false contact information constitutes a further indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of Proceeding

As the language of the registration agreement of the Disputed Domain Names is in Chinese, the default language of the proceeding is Chinese. However, taking into account the following circumstances and exercising the prerogatives given pursuant to paragraph 11 of the Policy, the Panel determines that English should be the language of the proceeding:

(1) The Complaint was submitted in English and requested that the language of the proceeding be English;

(2) The Respondent is based in United States. The national language of the United States is English;

(2) The websites resolvable from the Disputed Domain Names have exclusively English content;

(3) The Respondent has neither chosen to participate in the proceedings nor contest the language request of the Complainant;

(4) Insisting that Chinese shall be the language of the proceeding will serve no beneficial purpose and will in all likelihood cause delay to the proceeding; and

(5) It is unclear from the available information whether the Complainant and Respondent are conversant in Chinese. If they are not, forcing Chinese upon them as the language of the proceeding would serve no purpose.

6.2. Decision

To succeed in the proceeding, the following limbs of paragraph 4(a) of the Policy must be established:

(1) The Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has trade mark rights in the trade mark GUCCI by virtue of the trade mark registrations identified in the Complaint. These registrations pre-date the registration Disputed Domain Names by over a decade.

The trade mark GUCCI is incorporated in its entirety in all the Disputed Domain Names. The only difference between the Disputed Domain Names and the trade mark GUCCI are various prefixes and suffixes as follows:

Domain Name Prefix Suffix

<buyguccihandbags.com> “buy” “handbags”

<discountguccipurses.com> “discount” “purses”

<discountgucciwallets.com> “discount” “wallets”

<getguccihandbags.com> “get” “handbags”

<guccibagsdiscount.com> - “bags”, “discount”

<guccicollections.com> - “collections”

<guccigiftshop.com> - “giftshop”

<guccigiftstore.com> - “giftstore”

<guccihandbagsonsale.com> - “handbag”, “on”, “sale”

<guccihandbagssale.com> - “handbags”, “sale”

<guccihandbagswallets.com> - “handbags”, “wallets”

<guccihandbagtoday.com> - “handbag”, “today”

<guccinewcollections.com> - “new”, “collections”

<guccishandbags.com> - “s”, “handbags”

<louisvuittongucci.com> “louisvuitton” -

<luxuryguccibags.com> “luxury” “bags”

<myguccicollections.com> “my” “collections”

<myguccistore.com> “my” “store”

<popguccihandbags.com> “pop” “handbags”

<topguccihandbags.com> “top” “handbags”

<vividguccihandbags.com> “vivid” “handbags”

<yeahgucci.com> “yeah” -

<yeahguccicollections.com> “yeah” “collections”

<yeahguccishop.com> “yeah” “shop”

<yesguccigifts.com> “yes” “gifts”

<yesguccihandbags.com> “yes” “handbags”

The prefixes and suffixes are largely descriptive and generic words. In particular:

- “buy”, “discount”, “luxury”, “on sale”, “today”, “yeah” and “yes” are a call to action to a potential customer to purchase goods;

- “handbags”, “purses”, “wallets” and “bags” refer to the products to which a trade mark may be applied to identify the products from. In this case, these are goods of which the evidence shows are of direct interest to the Complainant;

- “gifts”, “luxury”, “my”, “pop”, “top” and “vivid” are descriptions of the products indicated above; and

- “giftshop”, “giftstore”, “store” and “shop” describe the availability of the products indicated above.

The Panel is of the view that the inclusion of these prefixes and suffixes do not successfully distinguish the Disputed Domain Names from the trade mark GUCCI. This leaves the Disputed Domain Names <guccishandbags.com> and <louisvuittongucci.com>.

In relation to <guccishandbags.com>, the first suffix “s” before the second suffix “handbags” is a typical incorporation of an apostrophe “s”. As the apostrophe character “’” is not a valid character in a domain name, it is often omitted and the ensuing letter “s” is simply joined to the preceding word. The apostrophe “s” of the first suffix is not capable of distinguishing <guccishandbags.com> from the trade mark GUCCI.

In relation to <louisvuittongucci.com>, it is noted that the prefix “louisvuitton” is derived from the trade mark LOUIS VUITTON of a third party. It is the Panel’s view that the combination of a third party’s trade mark with a complainant’s trade mark does not immediately lead to the resulting domain name being able to avoid confusing similarity with the complainant’s trade mark. There must be something more such that the identity of the complainant’s trade mark is no longer identifiable in the combination. In the present case, the Disputed Domain Name is entirely made up of the Complainant’s trade mark GUCCI and the third party trade mark. Nothing more presents itself to distinguish the Complainant’s trade mark. Instead of being distinguished from the Complainant’s trade mark, the combination simply suggests an association between the Complainant’s trade mark and the third party trade mark.

Therefore, the Panel holds that all the Disputed Domain Names are confusingly similar to the trade mark GUCCI. The first limb of paragraph 4(a) is established.

B. Rights or Legitimate Interests

The Complainant has denied any relationship with the Respondent and there is nothing to suggest that the Respondent is commonly known by any of the Disputed Domain Names.

In addition, the Complainant has also alleged that the products on the websites resolved from five of the Disputed Domain Names are prima facie counterfeits. These are very strong accusations which if untrue, would generate a strong denial from a reasonable respondent. However, the Respondent has declined to provide any explanation or demonstrate any circumstances which may suggest any rights or legitimate interests.

In the circumstances, in accordance with established principles, the Panel holds that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in all the Disputed Domain Names. Since the Respondent has failed to rebut the prima facie case, the second limb of paragraph 4(a) of the Policy is also established.

C. Registered and Used in Bad Faith

The Panel is of the view that paragraph 4(b)(iv) of the Policy is relevant to the present circumstances. Paragraph 4(b)(iv) provides an example of bad faith registration and use:

“… by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The use of the trade mark GUCCI in the Disputed Domain Names is a clear attempt at associating with the Complainant and the Complainant’s products. The websites resolved from the Disputed Domain Names <guccicollections.com>, <myguccistore.com>, <yesguccigifts.com>, <guccigiftshop.com> and <guccigiftstore.com> appear to be for commercial gain. The websites contain shopping cart icons which strongly suggest that products may be purchased online. The Respondent is clearly using the Disputed Domain Names to attract Internet users to these websites by creating a likelihood of confusion with the Complainant’s trade mark GUCCI. A reasonable person who visits any of these websites is likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. These facts are consistent with the requirements of paragraph 4(b)(iv) of the Policy.

The other Disputed Domain Names do not resolve to websites of similar nature. Rather, they are passively held by the Respondent, whether by association with parking sites or empty sites. The evolution of the concept of “passive holding” since the oft-quoted decision of Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 has defined a common scenario of bad faith under paragraph 4(a) comprising the following elements (see Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414; Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582; UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882):

1) The disputed domain name incorporates a well-known mark;

2) The respondent is an individual, rather than a business entity;

3) In view of the complainant’s trade mark rights, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the disputed domain name by the respondent;

4) There is no apparent evidence of actual or contemplated use of the disputed domain name; and

5) The respondent failed to respond to the complainant’s cease and desist letter and the complaint under the Policy.

Based on the evidence, the Panel has no doubt that the trade mark GUCCI is well-known. Other panels have also come to the same conclusion about the trade mark GUCCI (e.g., Guccio Gucci S.p.A. v. Mark O'Flynn, WIPO Case No. D2001-0270; Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170; Guccio Gucci S.p.A. v. Roberto Baggio, WIPO Case No. D2009-1196). The Respondent appears to be an individual. In view of the Complainant’s trade mark rights, the Respondent would in all likelihood be prevented from unauthorized use of the Dispute Domain Names in the United States and other countries covered by the Complainant’s trade mark registrations for GUCCI. The Disputed Domain Names resolve to empty webpages or parking webpages. The Respondent has also failed to respond to the Complainant’s cease and desist letter of July 12, 2010. The facts readily fall within the scope of the “passive holding” scenario above.

In addition, the Complainant has submitted that the Respondent’s address is false. The Panel is also doubtful whether the word “Foreignness” (which is associated with all of the Disputed Domain Names registered from September 18, 2010 onwards) and the letters “wg” (which is associated with all the Disputed Domain Names) in the address form a part of any valid address in the United States. An applicant for registration of a domain name has a duty to act honestly. In this case, the deliberate use of fictitious and/or ineffective contact particulars is further evidence of bad faith. (see ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). Based on the available information, the Respondent has likely failed to discharge the duty to act honestly.

In view of the above, the Panel is satisfied that bad faith registration and use under the third limb of paragraph 4(a) is established for all the Disputed Domain Names.

7. Decision

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 Names:

1) <buyguccihandbags.com>, <discountguccipurses.com>, <discountgucciwallets.com>, <getguccihandbags.com>, <guccibagsdiscount.com>, <guccicollections.com>, <guccigiftshop.com>, <guccigiftstore.com>, <guccihandbagsonsale.com>, <guccihandbagssale.com>, <guccihandbagswallets.com>, <guccihandbagtoday.com>, <guccinewcollections.com>, <guccishandbags.com>, <luxuryguccibags.com>, <myguccicollections.com>, <myguccistore.com>, <popguccihandbags.com>, <topguccihandbags.com>, <vividguccihandbags.com>, <yeahguccicollections.com>, <yeahgucci.com>, <yeahguccishop.com>, <yesguccigifts.com>, <yesguccihandbags.com> be transferred to the Complainant; and

2) <louisvuittongucci.com> be cancelled.

Kar Liang Soh
Sole Panelist
Dated: December 6, 2010

 

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