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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A v. Charles Staples

Case No. D2013-0611

1. The Parties

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

The Respondent is Charles Staples of Seattle, Washington, United States of America.

2. The Domain Names and Registrar

The disputed domain names <cuteguccijp.com>, <gucci-bargin.com>, <guccifine.com>, <guccigoodjp.com>, <guccijpclub.com>, <guccikisetu.com>, <guccilive2013.com>, <guccimagic.com>, <guccinyu.com>, <guccishake.com>, <guccisuper.com>, <guccisweet2013.com>, <gucciyangu.com>, <smilegucci.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.

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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent submitted several informal communications to the Center by email between April 16 and May 3, 2013. According to the Respondent’s email on April 15, 2013, he asserted that he did not know anything about the use of the disputed domain names and this might be a result of any web spoofing. The Respondent definitely asserted that he had not use or created any one of the disputed domain names in his email on April 25, 2013. No formal Response has been filed with the Center.

The Center appointed Masato Dogauchi as the sole panelist in this matter on May 23, 2013. 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

Whereas the Respondent has just asserted that he did not know anything about this case in his emails to the Center, the followings are found the factual background of this case.

The Complainant is an Italian Public Limited Company which is a part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute (“PPR”), one of the leading groups worldwide. It is the owner of national and international trademark registrations worldwide, including the following:

- Italian Registration No. 801958 GUCCI (word mark), originally filed on January 13, 1977, and duly renewed thereafter until the last renewal request filed on November 17, 2006, in all classes;

- International Registration No. 429833 GUCCI (word mark), registered on March 30, 1977, and last renewed on March 30, 2007, in classes 3, 14, 18, and 25;

- Community Trademark Registration No. 000121988 GUCCI (word mark), filed on April 1, 1996 and registered on November 24, 1998, in all classes.

In light of consistent use of the logo and trademark GUCCI in advertising, marketing and sales for decades by the Complainant and its associated companies belonging to the Gucci Group, GUCCI is indisputably a well-known trademark worldwide. The Complainant and its associated companies are the owners of many domain names identical to or comprising the trademark GUCCI.

The web site “www.gucci.com”, to which most of the Complainant’s registered domain names are redirected, generates a significant number of visits by Internet users. In particular, the Complainant’s products are advertised and offered for sale by the Complainant on internal pages of the web site “www.gucci.com”. During the last year, the Complainant's online sales increased by 30%.

The Complainant at first became aware that the disputed domain names <cuteguccijp.com>, <guccibargin.com>, <guccigoodjp.com>, <guccikisetu.com>,<guccilive2013.com>, <guccimagic.com>, <guccinyu.com>, <guccishake.com>, <guccisuper.com>, <guccisweet2013.com>,<gucciyangu.com> and <smilegucci.com> had been registered in the name of the Respondent and thus sent a cease and desist letter on March 7, 2013. Although this letter was disregarded by the Respondent, the website published in correspondence of <gucci-bargin.com> was deactivated and those published at <guccishake.com> and <gucciyangu.com>, which were redirected to inactive websites, were reactivated.

The Complainant became then aware of the infringing registration and use of the other disputed domain names <guccifine.com> and <guccijpclub.com> and therefore sent another cease and desist letter, encompassing all the disputed domain names, requesting immediate compliance with the Complainant's demands on April 2, 2013 to the Respondent’s email addresses known by the Complainant. This communication, however, was also disregarded by the Respondent.

In view of the above, the Complainant filed the present UDRP Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts in essence as follows:

(1) The disputed domain names are confusingly similar to the trademarks in which the Complainant has rights;

(2) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names; and

(3) The disputed domain names were registered and are being used in bad faith.

With regard to the item (1) above, the Complainant asserts as follows:

The Complainant is the owner of the well-known trademark “GUCCI” and the disputed domain names incorporate the whole of this trademark.

The fact that the disputed domain names include the non-distinctive elements “cute”, “fine”, “good”, “club”, “kisetu”, “bargin”, “live”, “magic”, “nyu”, “shake”, “super”, “sweet”, “yangu” and “smile” does not affect the confusing similarity. It is a well-established principle among UDRP panels that domain names that wholly incorporate a trademark, in particular one as famous as GUCCI, are found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain names may also contain a descriptive or generic term.

The geographical indication “jp” (clearly designating Japan) encompassed in the disputed domain names <cuteguccijp.com>, <guccigoodjp.com> and <guccijpclub.com>, cannot be considered as sufficient to distinguish the Respondent’s disputed domain names from the Complainant’s trademark. Such geographic indication is apt to induce confusion among Internet users as to the source and origin of the products.

With regard to the item (2) above, the Complainant asserts as follows:

The Respondent is not a licensee, authorized agent of Complainant, or in any other way authorized to use the Complainant’s trademark GUCCI. And, the Respondent is not commonly known by the disputed domain names.

It should be sufficient that the Complainant shows a prima facie evidence showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names in order to shift the burden of production on the Respondent. Since the Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.

With regard to the item (3) above, the disputed domain names were registered in bad faith since, at the time of their registration, it is obvious that the Respondent had knowledge of the Complainant’s trademark GUCCI used since as early as 1921 by the Complainant.

And, the disputed domain names have been used in bad faith since they point to websites, where the Complainant’s trademarks and images taken from official advertisement campaigns of the Complainant are published and prima facie counterfeit GUCCI branded products are offered for sale. It should be enough to consider that such use of the disputed domain names in such manner is clear evidence to show the disputed domain names are used in bad faith.

B. Respondent

The Respondent has not submitted any formal Response in formal manner. However, it is noted that, according to the emails from the Respondent to the Center, times between April 16 and May 3, 2013, the Respondent asserted that he did not know anything about the use of the disputed domain names and this might be a result of any web spoofing. The Respondent also stated that he does not know how to use the computer and that he does not own any domain name.

6. Discussion and Findings

According to the Rules, paragraph 15(a), a UDRP panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

(1) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names;

(3) The disputed domain names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The fame of the Complainant’s trademark, GUCCI is obvious to the Panel.

The dispute domain names include the trademark entirely.

The addition of non-distinctive/generic words, “cute”, “bargin”, “fine”, “good”, “club”, “kisetu”, “live”, “live”, “2013”, magic”, “nyu”, “shake”, “super”, “sweet”, “yangu” and “smile” do not detract from the overall impression of the disputed domain names. Incidentally, it seems that “bargin” is a clerical error of “bargain”; “kisetu” means “season” in Japanese; “nyu” and “yangu” represent Japanese local pronunciation of “new” and “young” respectively. And, some of the disputed domain names include “jp”, which designates Japan. Such additions are completely insufficient to dispel user confusion from inevitably occurring. See, for instance, Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033; Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215; Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170 and Guccio Gucci S.p.A. v. Edardy Ou, WIPO Case No. D2011-1028.

The addition of the Generic Top-Level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain names.

The Panel therefore finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. Paragraph 4(a)i) of the Policy is accordingly satisfied.

B. Rights or Legitimate Interests

In the Panel’s view, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.

It is not found that the Respondent has rights or legitimate interests in respect of the dispute domain name. If not, the Respondent should have submitted evidence to show its interests, but it has not.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)ii) of the Policy is accordingly satisfied.

C. Registered and Used in Bad Faith

In consideration of the fame of the Complainant’s trademark, GUCCI, it is highly unlikely that the disputed domain names were registered without knowing the Complainant’s legal rights in the trademark.

The Complainant has made out a prima facie case that the disputed domain names point to websites, where the Complainant’s trademarks and images taken from official advertisement campaigns of the Complainant are published and prima facie counterfeit GUCCI branded products are offered for sale. The Respondent has not rebutted this assertion at all. Indeed, the Respondent appears to claim he is not the owner and did not register or create the disputed domain name, which if true may raise the possibility of identity theft or other such inappropriate use of incorrect registrant and contact information.

However, this may be, even if the titular Respondent has no relation at all with the above fact, the Panel finds that the disputed domain names were registered in bad faith and are being used in bad faith. Who did and does has nothing to do with the determination that the disputed domain names in themselves were registered and is used in bad faith.

For this reason, the Panel finds that paragraph 4(a)ii) of the Policy is accordingly satisfied.

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, <cuteguccijp.com>, <gucci-bargin.com>, <guccifine.com>, <guccigoodjp.com>, <guccijpclub.com>, <guccikisetu.com>, <guccilive2013.com>, <guccimagic.com>, <guccinyu.com>, <guccishake.com>, <guccisuper.com>, <guccisweet2013.com>, <gucciyangu.com>, <smilegucci.com> be transferred to the Complainant.

Masato Dogauchi
Sole Panelist
Date: June 4, 2013

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