WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.p.A. v. Bosbi Niu, Kato

Case No. D2016-2180

1. The Parties

The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.

The Respondent is Bosbi Niu, Kato of Taiwan province of China.

2. The Domain Names and Registrar

The disputed domain names <goldengooseshoe.com> and <sneakersgoldengoose.com> (the “Disputed Domain Names”) are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 2, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 2, 2016. The Respondent did not comment on the language of the 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2016.

The Center appointed Kar Liang Soh as the sole panelist in this matter on December 5, 2016. 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 was founded in 2000 and has an international following for its contemporary apparel and accessories marketed under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. The Complainant’s products are offered for sale with products of other brands like Lanvin, Givenchy, Bottega Veneta and Ferragamo. Its fans include celebrities like Jude Law, Keira Knightley and Sarah Jessica Parker. The Complainant has flagship and corner stores in Milan, Seoul, Paris, Tokyo, Beirut and Amsterdam, and operates a sales network of more than 500 prestigious retail stores in the world as well as online stores. The Complainant’s products are endorsed on international magazines like Vogue, Elle, Marieclaire, L’Officiel, Grazia, Harper’s Bazaar, Cosmopolitan, Vanity Fair, Esquire and GQ. It is noted from the many magazine extracts provided in the evidence that the Complainant’s products are associated with the words “golden goose” without the words “deluxe brand”. The Complainant’s products are available for sale through its main website at “www.goldengoosedeluxebrand.com”. The header on the main website includes the following image which incorporates the trademark GOLDEN GOOSE DELUXE BRAND (“Header Image”):

Trademark registrations for GOLDEN GOOSE DELUXE BRAND include:

Trademark registrations for GGDB include:

The Complainant and its related company have previously filed successful complaints against the domain names <goldengoosescarpe.com> (Golden Goose S.P.A. v. Tang Dan, WIPO Case No. D2015-2016), <goldengoosescarpesale.com>, <scarpegoldengoose.com> and <scarpegoldengooseonline.com> (Golden Goose S.r.l. v. HUAN WANG / WhoisGuard, Inc., WIPO Case No. D2015-0677).

Information in this proceeding relating to the Respondent is largely limited to the Complaint, the WhoIs information of the Disputed Domain Names and the websites resolved from the Disputed Domain Names. The Respondent appears to be an individual from Taiwan Province of China. Not much more is known of the Respondent.

The Disputed Domain Names were both registered on March 25, 2015 and resolve to English language websites offering shoes for sale. The websites also appear to provide shopping cart and user login facilities. On or before the date of the Complaint, the website resolved from <goldengooseshoe.com> displayed an image which appeared identical to the Header Image in its header. On or before the date of the Complaint, the website resolved from <sneakersgoldengoose.com> also offered shoes associated with the trademarks ADDIDAS and NIKE.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Names are confusingly similar to the trademark GOLDEN GOOSE DELUXE BRAND in which the Complainant has rights. The use of descriptive terms “shoe” and “sneakers” in the Disputed Domain Names do not affect confusing similarity with the trademark GOLDEN GOOSE DECLUXE BRAND;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not a licensee, distributor or authorized agent of the Complainant. The Respondent is not known by the Disputed Domain Names. The Respondent is using the Disputed Domain Names for selling counterfeit goods and the Disputed Domain Names are not used in a bona fide offering of goods or services. The Respondent is knowledgeable about the Complainant’s trademarks; and

c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent is offering counterfeit goods under the Complainant’s trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. Customers are being misled as to the source of the products offered on the websites resolved from the Disputed Domain Names. The Respondent has provided incomplete or inaccurate contact information.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

The registration agreements of the Disputed Domain Names are in Chinese. Hence, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted as the language of proceeding instead. In support of this request, the Complainant highlighted that the language of the websites resolved from the Disputed Domain Names are in English. The Complainant also indicated that it would incur substantial translation costs and cause delay to the proceeding if the Complaint were to be filed in Chinese.

Having considered the circumstances, the Panel determines that English shall be the language of the proceeding. In addition to the reasons highlighted by the Complainant above, the Panel also noted the following:

a) The Respondent neither objected to nor commented on the Complainant’s language request;

b) The Respondent did file any response and has not participated in the proceeding;

c) The Respondent could not be contacted with the email, facsimile and postal details provided in the WhoIs information of the Disputed Domain Names and no other means of contacting the Respondent was available; and

d) No apparent benefit may foreseeably be achieved by requiring the Complaint to be filed in Chinese.

6.2 Substantive Matters

In order to succeed in this proceeding, the Complainant must establish all of the following that pursuant to paragraph 4(a) of the Policy:

a) The Disputed Domain Names are confusingly similar to the Complainant’s trademark GOLDEN GOOSE DELUXE BRAND;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

c) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The trademark registrations submitted in the evidence confirms that the Complainant owns rights in the trademark GOLDEN GOOSE DELUXE BRAND in many jurisdictions. In the Panel’s view, since the words “deluxe brand” are essentially descriptive, the key identity element of the trademark is clearly the words “golden goose”. This is corroborated in the evidence of the use of the words “golden goose” by the Complainant on their website quite apart and distinct from the words “deluxe brand”, for example, in the page header. The evidence also shows that the Complainant’s products are often associated with the key identity element “golden goose” alone without the words “deluxe brand”.

The Disputed Domain Names incorporate the words “golden goose”. The only difference between the Disputed Domain Names and key identity element in the Complainant’s trademark is the addition of the descriptive words “shoes” in <goldengooseshoe.com> and “sneakers” in <sneakersgoldengoose.com>. These are descriptive of the Complainant’s products as well as products offered on the websites resolved from the Disputed Domain Names. According to the consensus opinion of past UDRP panels as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), mere addition of generic or descriptive terms to a trademark does not avoid confusing similarly between the trademark and the resulting domain name in general. Although the Disputed Domain Names did not incorporate the Complainant’s registered trademark in its entirety, the Disputed Domain Names have incorporated the key identity element “golden goose” in its entirety. In the circumstances, the Panel is of the view that the Disputed Domain Names are confusingly similar to the registered trademark GOLDEN GOOSE DELUXE BRAND and holds that the first limb of paragraph 4(a) is established on the facts.

B. Rights or Legitimate Interests

It is the consensus view of past UDRP panels that a complainant only needs to establish a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name. Once a prima facie case is made out, the burden shifts to the respondent to show otherwise.

The Complainant has alleged that the Respondent is not a licensee, distributor or authorized agent of the Complainant. There is no evidence to show that the Respondent is not known by either of the Disputed Domain Names or that the Disputed Domain Names are being used in a bona fide offering of goods or services. As such, the Panel is satisfied that there exists in the circumstances a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names.

The Respondent has not responded to deny or refute the Complainant’s prima facie case. In the absence of any evidence or explanation to the contrary, the prima facie case has not been rebutted and the Panel determines that the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy highlights a specific example of bad faith registration and use by a domain name registrant as follows:

“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”

The Complainant’s registrations for the trademark GOLDEN GOOSE DELUXE BRAND date back to at least as early as September 8, 2005. Based on the evidence, the Panel accepts that the trademark as well as the identity element “golden goose” are used extensively by the Complainant in relation to its products. The adoption of the Header Image on the website resolved from <goldengooseshoe.com> is highly suspicious with the most obvious explanation being that the Respondent possesses prior knowledge of the Complainant and the trademark GOLDEN GOOSE DELUXE BRAND. The Panel finds it most unlikely that the Respondent derived the Disputed Domain Names purely by coincidence.

In addition, the Complainant has made a serious albeit bare allegation that the products offered on the websites resolved from the Disputed Domain Names are counterfeit. Although no evidence was submitted to support such an allegation, the absence of a response supports the making of an adverse inference against the Respondent. Nevertheless, quite apart from whether the products are in fact counterfeit, the offering for sale of products on the websites demonstrates without a doubt that the Respondent has an intention to achieve commercial gain by riding on the Complainant’s mark. The Panel finds that the facts of the present case falling within the situation outlined in paragraph 4(b)(iv) in that the Disputed Domain Names are being used to intentionally attract Internet users to the websites resolved from the Disputed Domain Names by creating a likelihood of confusion with the trademark GOLDEN GOOSE DELUXE BRAND and identity element GOLDEN GOOSE as to source, sponsorship, affiliation, or endorsement of products offered on the websites. As such, the Panel holds that the third limb of paragraph 4(a) of the Policy is also established.

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, <goldengooseshoe.com> and <sneakersgoldengoose.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: January 3, 2017