WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.P.A. v. Domain Admin, c/o ID#10760 Privacy Protection Service Inc. d/b/a Privacyprotect.org / P de Ree

Case No. D2017-1260

1. The Parties

Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Associati, Italy.

Respondent is Domain Admin, c/o ID#10760 Privacy Protection Service Inc. d/b/a Privacyprotect.org of Queensland, Australia / P de Ree of Baltimore, Maryland, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <goldengoose-outlet.com> is 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 June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 7, 2017.

The Center verified that the Complaint together with the amended 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 July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. On July 17, 2017, the Center received an email from a third party stating that its identity was stolen. Respondent did not submit any response. Accordingly, the Center commenced the Panel Appointment Process on August 2, 2017.

The Center appointed David Perkins as the sole panelist in this matter on August 8, 2017. 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.A Complainant

4.A.1. Complainant is in the business of apparel and accessories, which it markets under the trade marks GOLDEN GOOSE DELUXE BRAND and the acronym GGDB. Exhibited to the Complaint are particulars of the following registrations of those marks.

- IR 881224 designates the European Union; Japan; the Republic of Korea; Singapore; the United States; Azerbaijan; Switzerland; China; Kazakhstan; and Russian Federation. The words DELUXE BRAND are disclaimed.

- IR 1141624 designates the European Union, Japan and the United States.

4.A.2. Complainant, formerly Alessandro Gallo S.n.c., was founded in 2000 in collaboration with a long established Venetian tailor. Complainant says that its clothing and accessories immediately became well known for “the urban, vintage feel of its designs”. As illustrative of the international reach and reputation of the GOLDEN GOOSE DELUXE BRAND, exhibited to the Complaint is the Spring/Summer 2014 Catalogue of Barneys New York which depicts Complainant’s products on the cover. The Catalogue features Complainant’s brand along with other well known international fashion brands including Lanvin; Givenchy; Bottega Veneta; Ferragamo; Borsalino and Fendi. Complainant also operates a worldwide sales network of more than 600 outlets, which include such prestigious stores as Biffi Boutique (Milan, Italy); L’Eclaireur (Paris, France); Browns Focus and Harvey Nichols (London, United Kingdom of Great Britain and Northern Ireland); Barneys (New York, United States); H. Lorenzo (Los Angeles, United States); Ikram (Chicago, United States); and Lane Crawford (Hong Kong, China). Complainant also exhibits pages from its website at “www.goldengoosedeluxebrand.com” and illustrations of endorsement of its products by well known magazines including Marieclaire, Vogue, Elle, L’Officiel, Grazia, Harper’s Bazar, Cosmopolitan, Vanity Fair, Esquire and GQ. In the light of the foregoing, Complainant asserts that its GOLDEN GOOSE DELUXE BRAND and GGDB trade marks are well known worldwide. Complainant is currently owned by The Carlyle Group.

4.B Respondent

4.B.1. In the absence of a response, what is known of Respondent is derived from the Complaint and its exhibits. First, the disputed domain name was registered on October 13, 2016.

4.B.2. Second, exhibited to the Complaint are pages from the website to which the disputed domain name resolves. Those pages illustrate clothing and shoes for men, women and children, which Complainant says are counterfeits. The pages also bear Complainant’s GOLDEN GOOSE DELUXE BRAND and GGDB trade marks. Complainant says that the images used in Respondent’s website have been taken without authorisation from its own genuine GOLDEN GOOSE website, pages from which are – as noted in paragraph 4.A.2 above – exhibited to the Complaint.

5. Parties’ Contentions

5.A Complainant

Identical or Confusingly Similar

5.A.1. Complainant’s case is that the disputed domain name incorporates as its dominant element what it describes as the heart of Complainant’s trade mark, namely “Golden Goose”. Addition of the suffix “outlet” in the disputed domain name is merely, Complainant says, designed to confuse users into believing that the products offered on Respondent’s website are genuine whereas, as noted above, they are in fact counterfeits. Respondent’s website provides no clear indication of its origin, nor does it contain a disclaimer. Accordingly, Complainant says that the disputed domain name is confusingly similar to its GOLDEN GOOSE DELUXE BRAND trade mark.

Rights or Legitimate Interests

5.A.2. Complaint’s case is that Respondent cannot bring himself within any of the circumstances demonstrating rights or legitimate interests under paragraph 4.c of the Policy. First, Complainant has not licensed or otherwise authorised Respondent to use Complainant’s trade mark. Second, clearly Respondent is not commonly known by the disputed domain name. Third, since the products offered at the website to which the disputed domain name resolves are counterfeits, Complainant says that Respondent cannot claim that such offering is a bona fide offering. Fourth, Respondent’s use of the disputed domain name is, Complainant says, plainly not a legitimate noncommercial or fair use. It is manifestly designed to misleadingly divert consumers.

Registered and used in Bad Faith

5.A.3. In the light of the facts summarised in paragraph 4.B.2 above, Complainant’s case is that Respondent’s conduct falls fair and square under paragraph 4(b)(iv) of the Policy. Complainant also cites three decisions under the Policy where bad faith registration and use was held in respect of the following disputed domain names. They are <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); and <goldengoosesneakers.com> (Golden Goose S.p.A. v. Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si, WIPO Case No. D2017-0067). “Scarpe” is Italian for shoes.

5.B Respondent

As noted above, Respondent has submitted no Response.

6. Discussion and Findings

6.1. The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.

6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. Complainant has demonstrated its rights in the GOLDEN GOOSE DELUXE BRAND trade mark: paragraph 4.A.1 above.

6.6. The “heart” – as Complainant terms it – of that trade mark is “Golden Goose”. Put another way, it is the distinctive element. The suffix “deluxe brand” merely indicates the high end of the market nature of Complainant’s products sold under that brand/mark. The dominant feature of the disputed domain name is “Golden Goose”. The suffix “outlet” is merely a term commonly used in relation to the retail of such products. In the Panel’s view, the disputed domain name is obviously confusingly similar to Complainant’s trade mark. That view is consistent with the circumstances described in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as indicative of confusing similarity. Namely, the dominant feature of Complainant’s mark is recognisable in the disputed domain name. Further, the content of the website to which the disputed domain name resolves is clearly trading off Complainant’s reputation in its trade mark.

6.7. In the circumstances, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.8. Complainant’s case summarised in paragraph 5.A.2 above is well made out and, consequently, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.

Registered and used in Bad Faith.

6.9. Again, Complainant’s case under paragraph 4(b)(iv) of the Policy, which is summarised in paragraph 5.A.3 above, is well made out and, consequently, the Complaint satisfies paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <goldengoose-outlet.com> be transferred to Complainant.

David Perkins
Sole Panelist
Date: August 11, 2017