WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Edardy Ou
Case No. D2011-1028
1. The Parties
The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Edardy Ou of Guangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <guccitshirt.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 19, 2011, GoDaddy.com, 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 June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 3, 2011. 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 the owner of registered trade marks for GUCCI internationally including in China (where the Respondent is based) and is part of a well-known fashion house founded in 1921. The Respondent registered the Domain Name on May 5, 2009 and it has been connected to a website selling what appears to be (according to the Complainant) counterfeit branded clothing.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of registered trade marks for GUCCI internationally including in China where the Respondent is based.
The Gucci fashion house was founded in 1921 in Florence selling leather goods. It was successful and began to operate internationally becoming well known. In 1995 it became a publicly owned company. It has more than five hundred domain names containing GUCCI the majority of which point to “www.gucci.com”.
The Respondent registered the Domain Name on May 5, 2009. It has since been directed to a website selling counterfeit clothing using the Gucci brand as well as other brands including Burberry, Calvin Klein, Diesel, Louis Vuitton and Abercrombie.
The Complainant sent a cease and desist letter to the Respondent at its email address since the postal address appeared to be incomplete. No reply was received and the site remained unaltered.
The Domain Name incorporates the Gucci trade mark and the non-distinctive element “tshirt” which does not affect the fact that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
Use of the Domain Name to sell counterfeit goods is not a bona fide use of the Domain Name or legitimate noncommercial or fair use. The Complainant has not authorised the Respondent to use its GUCCI mark. The Respondent is not commonly known as Gucci. Accordingly, the Respondent has no rights or legitimate interests in the Domain Name.
Since the GUCCI mark is well-known it is inconceivable that the Respondent was unaware of the existence of the Complainant at the time of the registration.
By selling counterfeit goods using the GUCCI trade mark on a site connected to the Domain Name the Respondent has knowingly attempted to attract Internet users to its website for financial gain by intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or the goods offered on the website.
The Respondent has used an incomplete postal address to register the Domain Name.
Accordingly it is clear the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s GUCCI trade mark and the generic text “tshirt”. “Tshirt” is a descriptive term and a name for an item of clothing, clothing being one of the types of goods sold by the Complainant. The distinctive part of the Domain Name is the Gucci name. The addition of the non-distinctive text “tshirt” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s GUCCI trade mark.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name. Use of a trade mark to sell what appears to be counterfeit goods using the Complainant’s Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not noncommercial. There is no evidence that the Respondent has any connection with the Gucci name and the Complainant has not given the Respondent any permission to use the same. In the circumstances of this case, and in view of the Panel’s discussion here below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of the Domain Name in bad faith including:
“[B]y using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register the Domain Name equivalent to the Complainant’s trade mark with only a descriptive term connected to the same goods that the Complainant sells added and sell what appears to be counterfeit clothing using the Complainant’s Gucci brand and other well- known brands on a site connected to the Domain Name. In the absence of a Response from the Respondent, and considering the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site for commercial gain by creating a likelihood of confusion that its website or the goods sold thereon were connected to the Complainant by using the Domain Name confusingly similar to the Complainant’s registered mark and selling clothing not connected with the Complainant as and for the same.
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 <guccitshirt.com> be transferred to the Complainant.
Dated: August 5, 2011