WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. D T
Case No. DTV2011-0006
1. The Parties
The Complainant is Guccio Gucci S.p.A., of Italy, represented by Studio Barbero, Italy.
The Respondent is D T, of Australia.
2. The Domain Name and Registrar
The Domain Name <gucci.tv> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 15, 2011, the Center transmitted by email to eNom. a request for registrar verification in connection with the Domain Name. On June 15, 2011, eNom transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2011. The Center received informal communications from the Respondent on June 16, June 17, and July 8, 2011. However, the Respondent did not submit a formal response by the due date for Response. Accordingly, the Center notified the Respondent’s default on July 8, 2011.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on July 22, 2011. 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 is an Italian company engaged in business of manufacturing, marketing and selling of luxury goods under the trademark GUCCI. The Complainant owns thousands of trademarks for GUCCI worldwide including Italian trademark registration No. 801958, international registration No. 429833 and Community trademark registration No. 000121988. The Complainant’s trademark is heavily promoted and advertised, and is well-known.
The Respondent registered Domain Name <gucci.tv> on June 28, 2004.
5. Parties’ Contentions
The Complainant contends that the Domain Name <gucci.tv> is identical to its trademark.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Domain Name and failed to establish any rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bath faith. The Respondent knows the Complaint’s well-known trademark and registered it as the Domain Name. Further, the Respondent engages in passive holding of the Domain Name with bad faith. The Respondent also thinks that the Respondent has registered the Domain Name for the purpose of selling or transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the documents produced by the Complainant, the Panel is satisfied that the Complainant has proven that it is the owner of the trademark GUCCI.
The substantive part of the Domain Name is GUCCI, which is identical with the Complainant’s trademark. The suffix <.tv> shall not be considered when comparing the Domain Name with the trademark.
The Panel holds that the Domain Name is identical with the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark GUCCI.
The Complainant asserts that the Respondent is not commonly known by the Domain Name. And the Respondent cannot demonstrate any bona fide use of the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
It is noted that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. For all the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Through extensive marketing and advertising efforts, the Complainant has established significant goodwill and well-known reputation in its mark. The Complaint provides evidence and also UDPR precedents involving the trademark to prove the mark’s reputation, in which the Panel accepts that the trademark GUCCI enjoys well-known reputation as a famous luxury brand.
From past communication between the Complainant and the Respondent, the Respondent argues that the Domain Name is his family name. But compared to the public information on Internet provided by the Complainant, the Respondent did not seem to give the true clarification and statement. Considering the high reputation of the trademark, it is highly unlikely that the Respondent did not know the Complainant’s trademark at the time of registration of the Domain Name. The Respondent “knew or should have known” of the registration and use of the trademark prior to registering the Domain Name, which constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The Panel accepts that the Respondent engages in passive holding of the Domain Name and its behavior satisfies the situations clarified in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and constitutes bad faith.
From past communications between the Complainant and the Respondent, the Respondent requested EUR 5,000 for the Domain Name to the web agency entrusted by the Complainant and the representative of the Complainant. This is evidence of bad faith under paragraph 4b(i) of the Policy.
In light of the above facts and reasons, the Panel therefore finds that the Domain Name has been registered and is being used in bad faith pursuant to the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gucci.tv> be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: August 12, 2011