World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Smith Davilv

Case No. D2012-0052

1. The Parties

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

The Respondent is Smith Davilv of Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <collezionegucci.com>, <guccibestellen.com>, <gucciborsa.net>, <gucciborseoutlet.com>, <gucciborse2011.com>, <guccicalzature.com>, <guccihomme.com>, <gucci-italia.com>, <gucciitalia.com>, <guccimilano.com>, <guccimoinscher.com>, <guccimontre.com>, <guccinederland.com>, <gucciscarpestore.com>, <gucciscarpeuomo.com>, <gucci-schoenen.com>, <scarpe-gucci.com>, <scarpeguccidonna.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On January 13, 2012, GoDaddy.com, LLC 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 January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Center received an email communication from a person named Cindy on January 18, 2012 informing that they, apparently <guccinederland.com>, were on vacation until January 30, 2012. The Center acknowledged receipt of that communication on January 19, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.

The Center appointed John Swinson as the sole panelist in this matter on February 23, 2012. 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 Guccio Gucci S.p.A., an Italian Public Limited Company which is part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute.

The Respondent is Smith Davilv of Guangdong, China. The Respondent did not file a Response, and consequently little information is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

The Complainant asserts that the Disputed Domain Names were registered with GoDaddy.com, LLC, as follows:

(a) <collezionegucci.com> registered on 13 May 2011

(b) <guccibestellen.com> registered on 13 May 2011

(c) <gucciborsa.net> registered on 12 May 2011

(d) <gucciborseoutlet.com> registered on 12 May 2011

(e) <gucciborse2011.com> registered on 12 May 2011

(f) <guccicalzature.com> registered on 9 May 2011

(g) <guccihomme.com> registered on 13 May 2011

(h) <gucci-italia.com> registered on 13 May 2011

(i) <gucciitalia.com> registered on 9 May 2011

(j) <guccimilano.com> registered on 13 May 2011

(k) <guccimoinscher.com> registered on 13 May 2011

(l) <guccimontre.com> registered on 13 May 2011

(m) <guccinederland.com> registered on 13 May 2011

(n) <gucciscarpestore.com> registered on 9 May 2011

(o) <gucciscarpeuomo.com> registered on 9 May 2011

(p) <gucci-schoenen.com> registered on 13 May 2011

(q) <scarpe-gucci.com> registered on 9 May 2011

(r) <scarpeguccidonna.com> registered on 9 May 2011

The Complainant is the owner of numerous national and international trade mark registrations worldwide of GUCCI (word mark), both alone and in combination with other word and/or device elements. The GUCCI (word mark) is registered in China, where the Respondent is apparently based.

The trade marks are used in connection with products in the high-end fashion and leather industry, including clothing, handbags, leather goods, luggage, shoes, jewelry, gifts, eyewear and fragrances.

The Complainant and its associated companies within the Gucci Group are the owners of over 500 domain names identical to or comprising the mark GUCCI. The majority of the Complainant’s registered domain names are redirected to the website “www.gucci.com”, where the Complainant’s products are advertised and offered for sale on internal pages of the website.

The Respondent registered the Disputed Domain Names between May 9 and May 13, 2011, without authorization from the Complainant, and has redirected them to websites on which the Complainant’s trade marks are misappropriated and prima facie counterfeit products bearing the Complainant’s trade marks are offered for sale.

At the time of the Complaint, the redirection of the domain names <guccibestellen.com>, <gucciborseoutlet.com>, <guccicalzature.com>, <guccihomme.com> and <gucciitalia.com> had been deactivated and the domain names <guccibestellen.com>, <guccicalzature.com> and <guccihomme.com> had also been suspended by the Registrar for “spam and abuse”.

The Complainant has sent a cease and desist letter and follow up correspondence to the Respondent. However, the Respondent has not responded.

Identical or confusingly similar

The Complainant contends that the Disputed Domain Names incorporate the whole of the Complainant’s GUCCI trade mark and that the inclusion of non-distinctive terms (e.g. “collezione”, which is “collection” in Italian) do not affect the confusing similarity (see e.g. PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 where generic terms such as “chart”, “music” and “arena” were added to the PEPSI mark).

Furthermore, in the present case, some of the terms selected by the Respondent for the registration of the Disputed Domain Names are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Disputed Domain Names and the Complainant. In fact, the terms “borsa/e” (“bag/s”), “calzature” and “scarpe” (“shoes”) and “montre” (“watch”) are descriptive of products made by the Complainant; the terms “outlet” and “store” recall a place where the Complainant’s products are sold; and the word “collezione” (“collection”), can be referred to clothes and accessories produced by the Complainant for its seasonal lines. Panels have made this finding in relation to the GUCCI trade mark in previous decisions (see Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170; Guccio Gucci S.p.A. v. Edardy Ou, WIPO Case No. D2011-1028; Guccio Gucci S.p.A. v. Domain Administrator, WIPO Case No. D2010-1836).

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

The Respondent has not:

(a) used or made preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(b) been commonly known by the Disputed Domain Names; or

(c) been making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain.

The Respondent is clearly attempting to derive revenues from the sale of prima facie counterfeit GUCCI products. Panels have previously ruled that the use of domain names to sell counterfeit products is not a legitimate use of the domain name (see e.g. Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758; Pandora Jewelry, LLC v. David Lee, WIPO Case No. D2010-0068; Guccio Gucci S.p.A. v. Domain Administrator – Domain Administrator, WIPO Case No. D2010-1589).

Furthermore, the Respondent did not reply to the cease and desist letter or follow up correspondence sent by an authorized representative of the Complainant. Panels have previously ruled that this shows that a respondent has no rights or legitimate interests in a disputed domain name (see eg. The Great Eastern Life Assurance Company Limited v. Unasi Inc. WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436) WIPO Case No. D2006-0230).

Registered and Used in Bad Faith

The Disputed Domain Names were registered, and are being used, in bad faith. As the GUCCI trade mark is well-known and has been used since 1921, it is inconceivable that the Respondent was unaware of the trade mark (see, among others 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 was obviously aware of the trade mark as it has attempted to attract users to its websites, which advertise prima facie counterfeit GUCCI products, for financial gain (see e.g. Guccio Gucci S.p.A. v. Domain Administrator – Domain Administrator, WIPO Case No. D2010-1589; Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).

The Respondent has also registered and is using several domain names confusingly similar to other registered and well-known trade marks, including NIKE and PRADA. Furthermore, the Respondent has been unsuccessful in another UDRP proceeding (Wilson Sporting Goods Co. v. Smith Davilv, NAF Claim No. FA1106001393375).

Failure to respond to the cease and desist letter supports an inference of bad faith (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are 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 Names; and

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

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Issues

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trade mark.

The Complainant asserts that it owns registered trade marks in many countries throughout the world which incorporate GUCCI or the GUCCI logo. The Complainant provided evidence of its ownership of these trade marks. The Panel accepts that the Complainant owns the GUCCI registered trade marks and that the GUCCI trade marks are well-known.

The Disputed Domain Names are clearly a combination of the GUCCI element with other largely descriptive and/or non-distinctive terms, including, for example, the terms “borsa/e” (“bag/s”), “calzature” and “scarpe” (“shoes”) and “montre” (“watch”), “outlet”, “store” and “collezione” (“collection”). The Panel finds that despite some minor differences, the Complainant’s trade mark remains the dominant element in the Disputed Domain Names. The addition of descriptive or non-distinctive terms does nothing to prevent the confusing similarity of the Disputed Domain Names with the Complainant’s GUCCI trade mark.

It is therefore clear that the Disputed Domain Names are confusingly similar to the Complainant’s GUCCI trade mark. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

On the facts presented to the Panel, there does not appear to be any legitimate, fair, noncommercial or bona fide offering of goods or services through the Disputed Domain Names. The redirection of users to websites which appear to sell counterfeit goods branded GUCCI strongly suggests that the Disputed Domain Names are being used for improper purposes or at least purposes inconsistent with a legitimate interest or right.

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.

The prima facie case showing that the Respondent lacks rights or legitimate interests is clearly made out in this instance.

The Respondent had the opportunity to demonstrate that it was selling legitimate GUCCI goods, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location”.

In light of the substantial reputation and the undoubted goodwill in the Complainant’s trade marks and for the reasons given above it is difficult to see how the Respondent can claim to have registered and used the Disputed Domain Names in good faith. Accordingly, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith as defined in paragraph 4(b) of the Policy.

7. Decision

For 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 <collezionegucci.com>, <guccibestellen.com>, <gucciborsa.net>, <gucciborseoutlet.com>, <gucciborse2011.com>, <guccicalzature.com>, <guccihomme.com>, <gucci-italia.com>, <gucciitalia.com>, <guccimilano.com>, <guccimoinscher.com>, <guccimontre.com>, <guccinederland.com>, <gucciscarpestore.com>, <gucciscarpeuomo.com>, <gucci-schoenen.com>, <scarpe-gucci.com>, <scarpeguccidonna.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: March 6, 2012

 

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