WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Zhao Ke / Yeli / Corporate Domains, Inc / Li Ye
Case No. D2012-0357
1. The Parties
Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
Respondent is Zhao Ke / Yeli / Corporate Domains Inc, / Li Ye of Shanghai, China.
2. The Domain Names and Registrars
The disputed domain names <groupgucci.com>, <guccichildren.com> and <guccisports.com> are registered with Hangzhou E-Business Services Co., Ltd.
The disputed domain name <gucci-parfum.com> is registered with Dynadot, LLC.
The disputed domain name <gucci-parfums.com> is registered with eNom.
Collectively, these will be the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2012. On February 22, 2012, the Center transmitted by email to Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the Disputed Domain Names. On February 23, 2012, Hangzhou E-Business Services Co., Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for <groupgucci.com>, <guccichildren.com> and <guccisports.com>.
On February 23, 2012, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the Disputed Domain Names. On February 23, 2012, Dynadot, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for <gucci-parfum.com>.
On February 23, 2012, the Center transmitted by email to eNom. a request for registrar verification in connection with the Disputed Domain Names. On February 23, 2012 eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for <gucci-parfums.com>.
On March 5, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On March 5, 2012, Complainant confirmed its request that English be the language of the proceeding. On March 6, 2012, Respondent requested for Chinese to be the language of proceeding.
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 Respondent of the Complaint, and the proceedings commenced on March 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. Respondent did not submit a formal response. Accordingly, the Center notified Respondent’s default on April 2, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 19, 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
Complainant Guccio Gucci S.p.A. is an Italian company which sells clothing, accessories, fragrances, eyewear and leather goods under its GUCCI trademark. Complainant’s history can be traced to its founding in 1921 by Guccio Gucci, an individual who opened a leather goods store in Florence, Italy. Complainant promotes and sells its goods worldwide through third party stores and its own stores which are operated in multiple countries. Complainant’s GUCCI trademark and Complainant’s goods have been publicized in advertising campaigns featured in publications distributed in multiple countries worldwide including Vanity Fair, Glamour, and GQ magazines.
Complainant has sent cease and desist letters to the registrants identified in WhoIs records for each of the Disputed Domain Names. In response to these letters, Complainant has received e-mails from a representative of Corporate Domains Center, Haodomains, Inc., offering to sell the Disputed Domain Names to Complainant.
The record shows that the Disputed Domain Names have featured webpages advertising each of these domain names for sale and displaying links to third party websites.
The Disputed Domain Names were created on the following dates:
<groupgucci.com> was created on July 15, 2011
<guccichildren.com> was created on March 12, 2011
<gucci-parfum.com> was created on September 23, 2011
<gucci-parfums.com> was created on May 9, 2010
<guccisports.com> was created on March 12, 2011
The record shows differing registrant, administrative and technical contact information for the Disputed Domain Names.
5. Parties’ Contentions
Complainant claims that it is one of the leading manufacturers of fashion products and that its GUCCI trademark is famous based upon more than 80 years of use of the mark for its products. Complainant maintains that it has invested substantially in advertising and promotion for its GUCCI brand to ensure that its GUCCI trademark is known and recognized by consumers.
Complainant maintains that the Disputed Domain Names are confusingly similar to its GUCCI trademark because they utilize the GUCCI trademark in combination with literal elements that Complainant claims are non-distinctive, specifically the literal elements “sports”, “parfum”, “parfums”, “group”, and “children”. Complainant maintains that the use of these additional literal elements in combination with its GUCCI trademark to compose the Disputed Domain Names do not create domain names which are distinctive from its GUCCI trademark. In addition to Complainant’s contention that the aforementioned additional literal elements are non-distinctive, Complainant contends that certain elements utilized in the Disputed Domain Names are descriptive of the products offered by Complainant under its GUCCI trademark. Specifically, Complainant maintains that the literal elements “parfum”, “parfums”, and “sport” describe products offered by Complainant. Further, Complainant maintains that the literal element “group” as used in combination with the GUCCI trademark to form a domain name will cause consumers to believe that the domain name is sponsored by or affiliated with Complainant, and that the term “children” describes a target market for some of Complainant’s products.
Complainant maintains that Respondent is not affiliated with Complainant and has not been authorized by Complainant to use its GUCCI trademark. Further, Complainant notes that Respondent is not commonly known by Complainant’s GUCCI trademark or by any of the literal compositions used to form the Disputed Domain Names. Complainant alleges that Respondent has not made any demonstrable preparations to use the Disputed Domain Names legitimately and maintains that all use of the Disputed Domain Names by Respondent has been indicative of bad faith. In support of this claim, Complainant cites content displayed at the Disputed Domain Names which has advertised the domain names for sale and links displayed at the Disputed Domain Names which direct Internet users to third party websites.
Regarding bad faith, Complainant maintains that its GUCCI trademark has been cited by prior UDRP panels as famous and that therefore it is “inconceivable” that Respondent was not aware of Complainant or Complainant’s GUCCI trademark when registering the Disputed Domain Names, as each incorporates Complainant’s GUCCI trademark in its entirety. Complainant further notes evidence of bad faith use of the Disputed Domain Names, including claims that Respondent has used the Disputed Domain Names to display links to third party websites to create a likelihood of consumer confusion and divert traffic away from Complainant, that Respondent has been involved in past domain name disputes where bad faith was present, that Respondent provided false contact information for WhoIs records associated with the Disputed Domain Names, and that Respondent has attempted to sell the Disputed Domain Names for sums which exceed out-of-pocket costs directly related to registration and maintenance of these domain names.
The Complaint requests that ownership of the Disputed Domain Names be transferred from Respondent to Complainant.
Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was submitted in the English language. The language of the registration agreements for the Disputed Domain Names is Chinese. Complainant has requested that English be the language of the proceedings. Respondent has requested that the proceedings be conducted in Chinese. All communications from the Center have been transmitted in the English and Chinese languages.
The record shows that Respondent comprehends English. Respondent communicated with Complainant in the English language in response to Complainant’s cease and desist letters, each of which were written in English. Further, the Disputed Domain Names have featured commercial English language content. Based on these factors, the Panel concludes that it is acceptable to proceed in the English language. Translation of the Complaint and other materials would cause unnecessary expense and delay.
B. Consolidation of Disputed Domain Names Into Single Proceeding
The record indicates that different WhoIs contact information is associated with the Disputed Domain Names involved in the proceeding. Specifically, the following names, addresses, telephone numbers, and e-mail addresses are identified in WhoIs records for the Disputed Domain Names:
Name: Zhao Ke
Address: Jinke Road 2666, China
Name: Zhao Ke
Address: Jinke Road 2666, China
Name: Hao Domain Services, Zhao Ke
Address: Jinke Road 2555, Shanghai 201203, China
Telephone: +86 3585827900
Name: Corporate Domains, Inc., Li Ye
Address: Weihai Rd. 755, Shanghai 200041, China
Telephone: +86 213939900
Name: Ye Li
Address: liyangjie58hao, China
The Panel is satisfied that four of the Disputed Domain Names, namely <groupgucci.com>, <guccichildren.com>, <gucci-parfum.com>, and <gucci-parfums.com> have been registered by the same individual or representative entity based upon their use of an identical contact e-mail account, namely the account associated with the firstname.lastname@example.org e-mail address. This conclusion is supported by the fact that the cease and desist letter sent to this e-mail address by Complainant was responded to by an individual on behalf of these domain names.
Regarding <guccisports.com>, Complainant argues that the WhoIs contact associated with this domain name was initially identified as Zhao Ke and that the e-mail address listed was email@example.com, and that this information was changed to Ye Li and firstname.lastname@example.org soon after Complainant sent a cease and desist letter. Complainant cites a prior UDRP decision which identifies this contact as the same individual or representative entity, namely Zino Davidoff SA v. Li Ye, WIPO Case No. D2010-1722. The Panel notes that WIPO Case No. D2010-1722 involves the same individual names and contact e-mail addresses as the present case. Moreover, WIPO Case No. D2010-1722 involved the same contact person acting as correspondent for the respondent as the individual who has contacted Complainant in this case. The similarities in contact information led the panel in WIPO Case No. D2010-1722 to conclude that “Corporate Domains, Inc., Haodomains Inc., Zhao Ke, and Ye Li are acting either as the same person or under control of a single individual or entity”. Having considered the present case, the Panel agrees with this conclusion.
The content of the Disputed Domain Names at issue supports consolidation, as each contain similar webpages featuring advertisements to sell the domain name and sponsored links. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (noting that the domain names involved “were all directed to essentially identical websites” in support of its finding that the domain names were controlled by a single party).
Based on the circumstances, the Panel is satisfied that the consolidation of these Disputed Domain Names into a single proceeding is appropriate.
C. Identical or Confusingly Similar
It is clear from the record that Complainant owns trademark rights in GUCCI which precede the creation of the Disputed Domain Names. Complainant’s GUCCI trademark has been recognized as a famous trademark by prior UDRP panels (see, e.g., Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170 “The GUCCI mark is a famous luxury brand” and Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196, acknowledging evidence that “GUCCI has become internationally famous as a luxury fashion brand”).
Each of the Disputed Domain Names incorporates Complainant’s GUCCI trademark in its entirety. It has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of confusing similarity. See, e.g., Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark "Xerox". This is sufficient to justify the finding that the name is "confusingly similar" to the Complainant’s registered trademarks”). The use of the additional terms “group”, “parfum”, “parfums”, “children”, and “sports” in the Disputed Domain Names do nothing to distinguish the domain names from Complainant’s trademark. Each of these terms has been deemed generic and non-distinctive when combined with a trademark to form a domain name (See, e.g., GA Modefine SA v Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Burberry Limited v. Wei Ye, WIPO Case No. D2011-1927, and Hilton International Co. v. Elliot Centeno, WIPO Case No. D2005-0826). Upon consideration of Complainant’s business, it becomes clear that use of these terms in domain names has the potential to cause consumer confusion rather than mitigate the likelihood of confusion.
The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
D. Rights or Legitimate Interests
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “gucci”, “gucci parfum(s)”, “gucci group”, “gucci children”, or “gucci sports”. As such, Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith given the unlikelihood that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, supra (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s PORSCHE trademark when registering <porsche-me.com>). This conclusion is supported by past UDRP decisions involving Complainant. For example, Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170 concluded that “The GUCCI mark is a famous luxury brand which fact could not have reasonably escaped the Respondent's attention when registering the disputed domain name”.
It is clear that the Disputed Domain Names have been used for commercial gain. Specifically, the record shows that webpages featuring sponsored links to third party websites have been featured at the Disputed Domain Names. These included links titled “Vendiat Profumi Online”, “Lampada Effusion”, “Discount Donna Karan”, “Comme des Garcons Parfums”, and “Ben Sherman Online” advertising third party clothing and perfume products which compete with the goods sold under Complainant’s GUCCI trademark. Use of a website incorporating another party’s trademark to display third party links to goods which compete with those sold under the trademark at issue demonstrates a deliberate effort to trade off the goodwill associated with the trademark. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Respondent’s use of the Disputed Domain Names are diverting traffic from Complainant’s websites. This is bad faith use and such conduct falls within the scope of paragraph 4(b)(iv) of the Policy.
No evidence in the record indicates that Respondent has a bona fide intention to use the Disputed Domain Names. Webpages at the Disputed Domain Names have advertised the Disputed Domain Names for sale, and the record shows that a representative of Respondent contacted Complainant offering to sell the Disputed Domain Names for fees of €4,000 and €900, amounts which clearly exceed any reasonable costs associated with registering the Disputed Domain Names. Numerous prior UDRP panels have held that offers for sale of domain names which clearly exceed reasonable costs associated with registration to be grounds for findings of bad faith. See, e.g., Plaza Operating Partners, Ltd. V. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166 and Eurobet UK Limited v. Intergate , WIPO Case No. D2001-1270.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <groupgucci.com>, <guccichildren.com>, <guccisports.com>, <gucci-parfum.com>, and <gucci-parfums.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: May 24, 2012