WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Yang Dongyi
Case No. D2012-2051
1. The Parties
The Complainant is Guccio Gucci S.p.A. of Florence, represented by Studio Barbero, Italy.
The Respondent is Yang Dongyi of Hangzhou, Zhejiang, China.
2. The Domain Names and Registrars
The disputed domain name <gucciborsaspaccio.com> is registered with Bizcn.com, Inc. The disputed domain names <guccich.com>, <guccise.com>, <guccitaskerdk.com>, <gucciwinkel.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On October 17, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 18, 2012, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 18, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 19, 2012, the Complainant confirmed its request that English be the language of proceeding. 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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on November 28, 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, Guccio Gucci S.p.A., is an Italian fashion house founded in 1921 with sales around the world.
The Complainant has registered the trademark GUCCI in multiple classes in numerous countries around the world. This includes multiple registrations in classes 6, 3, 18, 25, 14 and 34 in the China.
The disputed domain names were registered in November 2011 and February 2012. The websites to which four of the disputed domain name, namely: <guccich.com>, <guccise.com>, <guccitaskerdk.com> and <gucciwinkel.com> resolve offer “Gucci products” for sale bearing the Complainant’s trademarks and images taken from the Complainant’s advertising campaigns. The other disputed domain name <gucciborsaspaccio.com> is passively held by the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its registered trademark GUCCI. They are composed of the Complainant’s trademark GUCCI with either a geographical indication - in the case of <guccich.com> and <guccise.com>, where "ch" stands for Switzerland and "se" for Sweden - or with generic terms like "winkel", which in Dutch means "shop" -in the case of <gucciwinkel.com> - or with both of them- like in the case of <guccitaskerdk.com>, where "dk" is the geographical indication of Denmark and "tasker" is the Danish translation of "bags". The disputed domain name <gucciborsaspaccio.com> consists GUCCI along with the generic Italian terms "borsa" (bag) and "spaccio" (outlet).
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names as it has not made any bona fide use of the disputed domain names. The Complainant contends that the Respondent has no commercial relationship with the Complainant and it is not a licensee.
The Complainant contends that the disputed domain names were registered and are being used in bad faith with the intention of diverting Internet users to its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of Proceedings
The language of the Registration Agreements is Chinese. The Complainant requested the language of proceedings be English on a number of grounds including that the websites which four of the disputed domain names resolve to are written in a number of European languages (German, Danish and Dutch) but also include English words. The Complainant also submitted that requiring the Complainant to translate the Complaint into Chinese would cause extra delay and expense. With regard to the one domain name that is passively held <gucciborsaspaccio.com> did offer to translate the complaint if the Panel considered it necessary.
The Respondent did not respond to the language request.
The Respondent is clearly doing business internationally in multiple European languages. The Panel has no doubt the Respondent will also be able to comprehend English. Given the Respondent is the same person for all five disputed domain names, there is no need to translate the Complaint just because one disputed domain name is passively held. In the circumstances of this case, the Panel decides that the language of proceedings shall be English. (Paragraph 11 of the Rules).
This is a relatively straightforward case which, in the Panel’s opinion, does not require detailed discussion.
A. Identical or Confusingly Similar
The disputed domain names are composed of the Complainant’s trademark GUCCI with either a geographical indication - in the case of <guccich.com> and <guccise.com>, where "ch" stands for Switzerland and "se" for Sweden - or with generic terms like "winkel", which in Dutch means "shop" -in the case of <gucciwinkel.com> - or with both of them- in the case of <guccitaskerdk.com>, where "dk" is the geographical indication of Denmark and "tasker" is the Danish translation of "bags", and <gucciborsaspaccio.com> "borsa" means bag and "spaccio" means outlet in Italian.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark.
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain names were registered in bad faith and are being used in bad faith.
Under the circumstances, this case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
With regard to <gucciborsaspaccio.com> the nature of this disputed domain name meaning “Gucci bags outlet” and the use that has been made of the other disputed domain names means the Panel can infer easily that this disputed domain name would be used in bad faith if activated.
The third element of the UDRP is made out for all five disputed domain names.
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 <gucciborsaspaccio.com>, <guccich.com>, <guccise.com>, <guccitaskerdk.com>, and <gucciwinkel.com> be transferred to the Complainant.
Date: December 17, 2012