WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. amei li C/o li a mei
Case No. D2012-0559
1. The Parties
The Complainant is Guccio Gucci S.p.A of Florence, Italy represented by Studio Barbero, Italy.
The Respondent is amei li C/o li a mei of FuJian, China.
2. The Domain Names and Registrar
The disputed domain names <guccioutlet-it.com>, <guccioutletnuovo.com> and <guccioutlet-2012.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 20, 2012, the Center transmitted by email to Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”) a request for registrar verification in connection with the disputed domain names. On March 23, 2012, Chengdu West Dimension Digital Technology Co., Ltd. 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 26, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On March 26, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 April 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on May 2, 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
4.1 The Complainant, Guccio Gucci S.p.A., is an Italian Public Limited Company, part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute. The Gucci Fashion House was founded in 1921 by Guccio Gucci, who opened a leather goods company and a small luggage store in Florence.
4.2 According to the Complainant, the trademark green-red-green web that was derived from saddle girths became a great success during the 1950s and has endured as one of the most familiar identifiers of the brand.
4.3 The Complainant claims that it is the owner of a broad array of trademark registrations worldwide for GUCCI, both alone and in combination with other word and/or device elements. The trademark was regularly used by Complainant for more than 80 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. As a result, the Complainant claims that the logo GUCCI is a famous trademark and enjoys a worldwide reputation and goodwill as one of the leading manufacturers of fashion products.
4.4 The Complainant claims that the trademark GUCCI was and is presently supported by intensive advertising campaigns worldwide, with campaigns appearing in important international magazines with broad circulation such as, inter alia, Vogue, Vanity Fair, GQ and Glamour and a strong presence online through the most popular social medias, i.a. Facebook, Twitter, YouTube and FourSquare ( www.facebook.com/gucci, www.twitter.com/gucci, http://youtube.com/gucci and http://foursquare.com/gucci) and dedicated web sites, such as the main site <gucci.com>, <gucciconnect.com> and <gucciparfums.com>.
4.5 The Complainant has provided evidence to show that it and its associated companies belonging to the Gucci Group are the owners of more than five hundred domain names identical to or comprising the mark GUCCI.
4.6 The Complainant has stated that the Respondent had registered the disputed domain names <guccioutlet-it.com> on 17 December 2011, <guccioutlet-2012.com> on 25 December 2011 and <guccioutletnuovo.com> on 25 December 2011 without the authorization of Complainant. The Respondent has been redirecting users to the corresponding web sites, where the Complainant’s trademarks and images taken from Complainant’s advertising campaigns were misappropriated. Further, the Complainant claims that the Respondent is offering fake counterfeit products bearing the GUCCI marks for sale.
4.7 The Complainant has provided evidence from web sites showing that the Respondent has offered counterfeit products for sale that are much cheaper than the prices for the genuine products. Further the disputed website “www.guccioutlet-it.com” contains on its homepage a text in the Italian language that allegedly translates into the following:
“On line sale of cheap GUCCI products, bags and shoes. Buy GUCCI high standard quality bags and shoes for low prices on our on-line store [.]”
4.8 The Respondent appeared to also advertise content of a similar nature in the Italian language on the other web sites <guccioutletnuovo.com> and <guccioutlet-2012.com.
5. Parties’ Contentions
5.1 The Complainant contends that the three disputed domain names are confusingly similar to the GUCCI trademark in which it has rights for the following reasons:
(i) The Complainant submits that the disputed domain names incorporate the whole of Complainant’s GUCCI trademark. The fact that the disputed domain names include the non-distinctive element “outlet”, the geographical descriptor “it” - which is the acronym for Italy –, the hyphen, the year’s indication “2012” and the Italian adjective “nuovo” (which means “new”) does not distinguish the disputed domain names from the identifying feature “Gucci”.
(ii) The Complainant submits that it is a well-established principle that domain names that wholly incorporate a trademark, in particular one as famous as GUCCI, are found to be confusingly similar for the purposes of the Policy, despite the fact that the disputed domain names may also contain a descriptive or generic term.
(iii) The Complainant submits that the term “outlet” selected by Respondent for one of its disputed domain names’ registrations is 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 Complainant. In fact, the word “outlet” suggests a location where Complainant’s products are offered for sale at lower prices
(iv) The Complainant submits that the disputed domain name <guccioutletit.com>, contains the mark GUCCI in its entirety, the generic term “outlet” and the geographic indication “it” – which is an acronym for Italy - separated by hyphen. While such a suffix cannot be considered as sufficient to distinguish the Respondent’s disputed domain name from the Complainant’s mark, is apt, due to the presence of the geographic indicator “.it”, to induce confusion in Internet consumers as to the source and origin of the products. The Complainant submits that GUCCI is in fact an internationally well-known mark which was been founded in Italy and the addition of the generic terms do not distinguish the disputed domain names from the trademark GUCCI.
(v) Finally the Complainant submitted that prior UDPR panels have also held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons:
(i) The Respondent has no connection or affiliation with the Complainant and has never been licensed or given authorization of any other kind to use the Complainant’s GUCCI Trademark.
(ii) The Respondent is not commonly known by the disputed domain names as an individual, business, or other organization, and “Gucci” is not the family name of Respondent, which is Amei Li.
(iii) The Respondent’s sale of counterfeit GUCCI branded products demonstrates that it is not making a bona fide offering of goods or services, nor does it have a right or legitimate interest.
(iv) The Respondent is not using the disputed domain names in connection with the bona fide offering of goods or services. Furthermore, such use of the disputed domain names cannot be considered a legitimate non commercial or fair use of the disputed domain names without intent for commercial gain, because the Respondent has been undoubtedly gaining from the sales of prima facie counterfeit products.
5.3 The Complainant, lastly, contends that the disputed domain names were registered and are being used in bad faith for the following reasons:
(i) The Complainant alleges that the Respondent has registered the disputed domain names in bad faith because they was registered with the knowledge of the Complainant’s rights in the GUCCI trademarks as the trademark GUCCI is certainly well-known and used since as early as 1921.
(ii) The Complainant also submitted that the Respondent’s attempt to attract consumers for commercial gain to the website at the disputed domain names, by creating confusion among consumers through utilizing the GUCCI trademark, is further compounded by the Respondent’s efforts to mislead Internet users into believing that the websites were operated or authorized by the Complainant.
(iii) The Respondent had, without valid consent, utilized the GUCCI Trademark on the website at the disputed domain names and is using the disputed domain names to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
The Complainant requests a decision that the three disputed domain names be transferred to the Complainant.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Complaint was filed in the English language. On March 26, 2012, the Center transmitted by email to the parties in both the Chinese and English language regarding the language of proceedings. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned Registrar that the languages of the registration agreements for the disputed domain names are Chinese. Although the Chinese language is the language of the registration agreements for the disputed domain names, the Complainant asserted its request that the English language should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceedings in the event that translations are required amongst other relevant factors. The Panel would like to make it clear that the inability of the Complainant to communicate in the Chinese language or its preference to communicate in the English language is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. Had this been a contested matter, the Respondent may have been likely to have been entitled to expect a panel to rule that the language of the proceedings should take place in Chinese, in strict adherence to paragraph 11 of the Rules. However, in the overall circumstances of this case, the Panel finds that the English language should be the language of the proceeding.
6.2 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy.
6.3 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel’s finding is as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that it accepts the claims of the Complainant, or even that it does not wish to respond or defend its perceived interest in the trademark. (See cases set out by the Complainant above).
6.5 However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the Rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).
6.6 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, 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 Confusingly Similar
6.7 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.8 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain names and the trademark alone, independent of the disputed domain names’ use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has appended to the Complaint a long list of registered trademarks and registered domain names that incorporate the trademark GUCCI. It is quite clear that the Complainant is the owner of a number of trademarks and domain names in several countries that simply comprise the word “Gucci”. The Respondent’s registration consists of the use of the Complainant’s trademark GUCCI which causes confusing similarity. Previous panel decisions under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 have decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain names are confusingly similar to a number of trademarks in which the Complainant has rights.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 The Panel accepts that the Complainant has satisfactorily provided evidence showing that the GUCCI trademarks are widely-known throughout the world, registered and present all over the world. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its disputed domain names with the Complainant and offering counterfeit products. The Panel accepts that such activity clearly does not provide the Respondent with rights or legitimate interests in the disputed domain names.
6.12 Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. However, it is the prevailing view among UDRP panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.13 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.14 As another UDRP panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.15 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain names, or that the Respondent has made noncommercial or fair use of the disputed domain names. The Respondent has also not used the disputed domain names in connection with a bona fide offering of goods or services. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names which are confusingly similar to the Complainant’s mark.
6.16 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
6.17 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source of a website.
6.18 The Complainant has proven that the Respondent had operated the three disputed domain names to sell counterfeit goods that claimed to be GUCCI goods on the website. It was further submitted that the Respondent’s prior use of the disputed domain names clearly demonstrate the Respondent’s bad faith.
6.19 The Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was previously using the disputed domain names genuinely for its own goods or services. It has also failed to disclose on the website the true relationship between it and the Complainant. The Panel therefore finds, as submitted by the Complainant, that the Respondent is intentionally attempting, for a commercial purpose, to attract Internet users to the Respondent’s website. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the disputed domain names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the three disputed domain names <guccioutlet-it.com>, <guccioutletnuovo.com> and <guccioutlet-2012.com> be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Dated: June 6, 2012