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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Girivasan TC

Case No. D2016-2376

1. The Parties

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

Respondent is Girivasan TC of Tamil Nadu, India.

2. The Domain Name and Registrar

The disputed domain name <gucciguiltyblack.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on November 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. Several communications were received from Respondent before and after Notification of Complaint however, no formal Response was filed with the Center. Accordingly, the Center notified the parties of the commencement of panel appointment process.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 29, 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.

A further email communication was submitted by the Respondent on January 16, 2016, which did not address the substance of the Complaint.

4. Factual Background

Complainant is Guccio Gucci S.p.A., an Italian Public Limited Company which belongs to the French conglomerate Kering (previously named Pinault-Printemps-Redoute, “PPR”), one of the leading groups worldwide for apparel and accessories.

The Gucci Fashion House was founded in 1921 by Complainant, who opened a leather goods company and a small luggage store in Florence, which achieved great success, attracting a sophisticated international clientele for its products. With stores opening in Milan and New York, Complainant was building a global presence symbolizing modern luxury. From 1995, Complainant successfully converted into an entirely publicly-owned company and was elected as the “European Company of the year” by the European Business Press Federation for its economic and financial performance, strategic vision, and quality of management. In 1999, Complainant entered into a strategic alliance with PPR and transformed itself from a single-brand company into one of the world’s leading multi-brand luxury goods companies.

Complainant has also been commercially active in India - where Respondent is based - since 2007, when it entered the Indian market with the opening of its store, located in Mumbai, India. Following that moment, the success of Complainant’s GUCCI trademark and products in India has increased.

Complainant is the owner of a broad array of trademark registrations worldwide, including International Trademark Registration for GUCCI, registered under No. 429833 on March 30, 1977.

The trademark GUCCI was and presently is supported by advertising campaigns worldwide. Complainant and its affiliated companies are the owners of more than one thousand domain names identical to or comprising the trademark GUCCI.

Respondent is Girivasan TC, an India based individual, who registered the disputed domain name in March 2016. The disputed domain name resolved to a “coming soon” web page.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions.

The disputed domain name is confusingly similar to the trademarks GUCCI and GUCCI GUILTY in which Complainant has rights, as it incorporates the whole of Complainant’s registered and well known trademark GUCCI. As Complainant contends, the fact that the disputed domain name includes the non-distinctive elements “guilty” and “black” does not affect the confusing similarity, but rather increases the likelihood of confusion and induces Internet users to believe that there is an association between the Domain Name and Complainant, since “Gucci Guilty Black” is the name of Complainant’s widely known fragrances.

Respondent is not an authorized agent of Complainant, or in any other way authorized to use Complainant’s trademark GUCCI. Moreover, there is no evidence showing that the named registrant of the disputed domain name might be commonly known by the disputed domain name as an individual, business or other organization. There is no evidence that Respondent might be actually known by the name corresponding to the disputed domain name and it is apparent that the expression resulting from the combination of Complainant’s distinctive and well-known trademark GUCCI with the terms “guilty” and “black” does not have any common meaning in any language. The disputed domain name resolves to a website under construction, and Respondent has not provided any plausible explanation or evidence that could demonstrate its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute or a legitimate noncommercial or fair use. Respondent’s statement that it put the disputed domain name for sale through an auction via the concerned Registrar and Respondent’s express request for a consideration of USD 100,000 for transferring the disputed domain name to Complainant clarifies that Respondent does not have any legitimate interests in retaining the disputed domain name but, to the contrary, has always intended to derive an illegitimate profit from the sale of the disputed domain name.

The disputed domain name was registered and it is being used in bad faith. In the light of the fact that the registered trademark GUCCI is well-known worldwide and has been used since as early as 1921, it is inconceivable that Respondent was unaware of the existence of Complainant or Complainant’s trademarks GUCCI, with which the disputed domain name is confusingly similar. Respondent was indeed well aware of Complainant’s trademarks and products at the time of the registration of the disputed domain name, and that it registered the disputed domain name with the clear intention to refer to Complainant’s trademarks. The disputed domain name is currently pointed to a coming soon web page and, to best of Complainant’s knowledge, has never been actively used by Respondent since its registration in connection with a dedicated website. As Respondent expressly requested the amount of USD 100,000 for transferring the disputed domain name to Complainant in the exchange of correspondence with Complainant’s representative, it may be inferred that Respondent clearly registered the disputed domain name with the intent to derive profit from its sale.

B. Respondent

Respondent has not provided a formal Response to the Complaint. In several correspondences addressed to the Center, during these procedures, Respondent expressed his willingness to transfer the disputed domain name to Complainant “at a mutually acceptable price that would cover …out of pocket expenses, time and efforts”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy requires that Complainant shows that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.

Based on the contentions of Complainant and the evidence presented in support of these contentions, this Panel finds that Complainant is the owner of a broad array of trademark registrations worldwide, including India, for GUCCI, both alone and in combination with other word and/or device elements, GUCCI being a well-known trademark worldwide.

This Panel also agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s registered trademark GUCCI as the disputed domain name fully incorporates the registered trademark GUCCI, with an addition of two non-distinctive elements “guilty” and “black”. The fact that the disputed domain name includes the non-distinctive elements “guilty” and “black” cannot affect the confusing similarity for the purposes of the Policy. It is a well-established principle that a domain name that wholly incorporates a trademark, in particular one as well-known as GUCCI, is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain descriptive or generic terms. Moreover, the disputed domain name also incorporates the whole of Complainant’s registered trademark GUCCI GUILTY, and the addition of the word “black” to the trademark is not sufficient to exclude the confusing similarity. See, amongst others, MasterCard International Incorporated v. Bob Norton, WIPO Case No. D2008-0703 (“The disputed domain name, contains all of the Complainant’s service mark and adds to it the word “black” and the gTLD, “.com.”) The additional word is a common descriptive word which the Panel believes is subordinate to the first and dominant part of the domain name, i.e., Complainant’s mark. Thus, although the Panel finds no identity between the mark and the name, the Panel is persuaded that Internet users would be confused by the similarity between the two and assume an erroneous connection between Complainant (and its services) and the disputed domain name”). Furthermore, the Panel agrees that the combination of the registered trademark GUCCI GUILTY with the term “black” 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 name and Complainant, since “Gucci Guilty Black” is the name of one of Complainant’s widely known fragrances.

For all the reasons above, the Panel finds that the disputed domain name is confusingly similar to the mark and that Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under this element of the Policy, Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If Complainant makes that showing, the burden of production shifts to Respondent, as indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. This Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by Respondent.

Complainant asserted that Respondent is not commonly known by the name “Gucci” or “Gucci Guilty” and does not own a trademark with the term, there is no link or no affiliation between Respondent and Complainant. By its replies to Complainant’s cease and desist letter, Respondent claimed that its name was “gucciguiltyblack”, which would mean “mischievous boy”. However, as Complainant pointed out, no evidence was offered by Respondent that he might be actually known by the name corresponding to the disputed domain name. The only responses filed by Respondent with the Center express his willingness to transfer the disputed domain name to Complainant “at a mutually acceptable price that would cover … out of pocket expenses, time and efforts”.

In addition, Respondent, has been pointing the disputed domain name to a website under construction, and has not provided any plausible explanation or evidence that could demonstrate its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute or a legitimate noncommercial or fair use, as decided by previous panels in similiar cases (See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195, Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672).

Respondent’s statement itself that it put the disputed domain name for sale through an auction via the concerned Registrar and Respondent’s express request for a consideration of USD 100,000 for transferring the disputed domain name to Complainant indicates, in the opinion of this Panel, that Respondent does not have any legitimate interest in the disputed domain name but, to the contrary, has always intended to derive profit from the sale of the disputed domain name, which is confusingly similar to Complainant’s registered trademarks.

For all the reasons above, this Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the notoriety of the GUCCI trademarks all over the world is a clear indication of Respondent’s bad faith at the time of the registration of the disputed domain name, as he certainly had been aware about the existence of Complainant or Complainant’s trademark GUCCI, with which the disputed domain name is confusingly similar. As stated by previous UDRP panel decisions, in similar cases involving GUCCI trademarks, see Guccio Gucci S.p.A., v. BraviaStoli, WIPO Case No. D2009-1170, Guccio Gucci SpA v. Roberto Baggio, WIPO Case No. D2009-1196, Guccio Gucci SpA v. Zhou Guodong, WIPO Case No. D2010-1695, Guccio Gucci SpA v. Mark O’Flynn, WIPO Case No. D2001-0270, Guccio Gucci S.p.A. v. D T, WIPO Case No. DTV2011-0006, GUCCI mark is a famous luxury brand with a well-known reputation which fact could not have reasonably escaped Respondent’s attention when registering the disputed domain name.

With respect to the use of the disputed domain name, as highlighted in the factual section, it currently pointes to a “coming soon” web page and, to best of Complainant’s knowledge, has never been actively used by Respondent since its registration in connection with a dedicated website. In Sanofi-Aventis v. Gerard Scarretta, WIPO Case No. D2009-0229, the UDRP panel held: “The concept of ‘passive holding’ typically implies complete inaction on the part of the Respondent characterize. The Complainant’s submission, however, is that this may be assimilated with ‘passive holding’ because the website is no more than a temporary parking place for the disputed domain name and in reality constitutes a reservation for some unidentified future use. This Panel accepts this submission on the basis that the website with which Respondent has associated the disputed domain name is clearly a third party service which subsists entirely independently of the configuration of the disputed domain name. It could not in any sense be described as an active site provided by the Respondent himself”. As established in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and in a number of following cases decided along these lines, the fact that a respondent engages in passive holding of a domain name can in certain circumstances be evidence of use in bad faith. In the case at hand, Respondent’s bad faith can be inferred by several circumstances, explained below. First, Complainant’s trademark has a strong reputation, is highly distinctive and is well known, as highlighted, i.e., in the UDRP decisions cited in the paragraphs above. Second, Respondent has not provided any evidence whatsoever of any actual or contemplated good faith use of the disputed domain name and there is nothing in Respondent’s limited action of configuring the disputed domain name to point to a coming soon web page which could be considered to be a good faith use in light of the incorporation of Complainant’s trademark in its entirety within the disputed domain name.

As an additional circumstance evidencing bad faith, as highlighted in Respondent’s replies to the correspondence addressed by Complainant’s representatives, Respondent initially put the disputed domain name for sale through the concerned Registrar GoDaddy and removed it from the online auction only after receipt of Complainant’s cease and desist letter.

Although Complainant could not ascertain the amount at which the bidding was started, it is likely that it was around USD 100,000, since Respondent offered for a very similar domain name registered in its name, at substantially the same amount (USD 99.999, as shown in Annex 12 of the Complaint). Moreover, as mentioned above, Respondent expressly requested the amount of USD 100,000 for transferring the disputed domain name to Complainant in the exchange of correspondence with Complainant’s representative. The above circumstances indicate, in the opinion of this Panel, that Respondent clearly registered the disputed domain name with the intent to derive profit from its sale. See Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195 (“the fact that Respondent offered to license/sell the domain name for amounts, which must be considered as valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, does indeed indicate bad faith on behalf of Respondent”).

Therefore, it is the conclusion of this Panel, that Complainant has proven that the disputed domain name has been registered and is being used in bad faith.

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 name, <gucciguiltyblack.com> be transferred to Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: January 17, 2017

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