WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. ddsidake, sidake

Case No. D2012-2237

1. The Parties

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

The Respondent is ddsidake, sidake of Putian, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <guccihandbagjp.com>, <guccishopjp.com>, <shopguccibags.com>, <shopguccijapan.com>, <shopguccisale.com>, and <storeguccibags.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 November 13, 2012. On November 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 14, 2012, 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.

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 November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2012.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on December 20, 2012. 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 Guccio Gucci S.p.A., an Italian public limited company which is a part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute (PPR). The Complainant has an international reputation in connection with products in the high fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. The Gucci Fashion House was founded in 1921 by Guccio Gucci.

The Complainant is the owner of a large number of national and international trademark registrations worldwide, including an Italian registration of GUCCI filed on January 13, 1977, an international registration of GUCCI registered on March 30, 1977 and a Community Trademark registration of GUCCI registered on November 24, 1998.

The trademark GUCCI is supported by intensive advertising campaigns worldwide, with campaigns appearing in international magazines with broad circulation such as Vogue, Vanity Fair, GQ and Glamour and a strong presence online through popular social media, such as Facebook, Twitter, YouTube and FourSquare. Consequently, the Complainant enjoys a worldwide reputation and goodwill as one of the leading manufacturers of luxury fashion products.

The Complainant and its associated companies belonging to the Gucci Group are the owners of more than one thousand domain names identical to or comprising the mark GUCCI.

The Respondent registered the disputed domain names <guccihandbagjp.com>, <guccishopjp.com>, <shopguccibags.com>, <shopguccijapan.com>, <shopguccisale.com>, and <storeguccibags.com> on January 7, 2012.

On October 15, 2012, the Complainant’s representative emailed a cease and desist letter to the Respondent requesting the Respondent to cease use of the disputed domain names and transfer them to the Complainant. A reminder was emailed on November 6, 2012. The reminder was also sent by email and no responses were received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names registered by the Respondent are confusingly similar to trademarks in which the Complainant has rights especially as they incorporate the whole of the Complainant’s GUCCI trademark. In the Complainant’s view the fact that the disputed domain names include the non-distinctive elements “handbag/s”, “sale”, “store”, “bags” and “shop” differently combined variously with each other does not affect the confusing similarity.

The Complainant argues that the Respondent’s disputed domain names <guccihandbagjp.com>, <guccishopjp.com> and <shopguccijapan.com>, besides the GUCCI mark in its entirety and the generic terms “shop” and "handbag", contain also the geographic indications “japan” and "jp" which stand for Japan. As a consequence, the Complainant asserts that such an indication, while cannot be considered as sufficient to distinguish the Respondent’s disputed domain names from the Complainant’s mark, is apt, due to the presence of the geographic indicators “japan” and "jp", to induce confusion in Internet consumers as to the source and origin of the products.

According to the Complainant it is apparent that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark GUCCI.

The Complainant also argues that the Respondent is not commonly known by the disputed domain names as an individual, business, or other organization, and “Gucci” is not the family name of the Respondent, which is to the contrary a clearly false name (ddsidake, sidake) consisting of a fancy association of letters.

The Complainant affirms that 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.

The Complainant states that despite the fact that the disputed domain names are currently not redirected to any active website, i.e., are passively held, in light of the Respondent's incorporation in the disputed domain names of the trademark GUCCI, which is highly distinctive and exclusively referable to the Complainant, the Complainant cannot conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain names.

The Complainant provided evidence of the Respondent’s use of the disputed domain name <guccihandbagjp.com> demonstrating that it , at least until October 15, 2012, was initially directed to the website “www.guccihandbagjp.com”, where the GUCCI marks were misappropriated, and subsequently redirected to “www.saclonegchampsac2012.com”, where prima facie counterfeit products under the trademark LONGCHAMPS were offered for sale.

In the Complainant’s view it is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names. The Complainant considers the Respondent was indeed well aware of the Complainant’s rights in the famous trademark GUCCI and registered the disputed domain names with clear intentions to refer to the Complainant’s mark.

The Complainant states that the Respondent’s bad faith can be inferred by the fact that the Complainant's trademark has a strong reputation, is highly distinctive and is well-known; the Respondent has not provided the Complainant with evidence whatsoever of any actual or contemplated good faith use of the disputed domain names and there is nothing in the Respondent's limited action of passively holding of the disputed domain names which could be considered to be a good faith use of the incorporation of the Complainant's trademark in its entirety within the disputed domain names.

The Complainant asserts that it cannot conceive of any plausible actual or contemplated active use of the

disputed domain names by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant's rights under trademark law.

Finally, the Complainant states bad faith is further evident through the Respondent’s use of incomplete or false contact information.

B. Respondent

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

6. Discussion and Findings

A. Effect of the Default

The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the reasonable facts asserted and contentions made by the Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy in order to determine whether the Complainant has complied with such requirements:

(i) the disputed domain names are 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 disputed domain names; and

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

B. Identical or Confusingly Similar

The Complainant provided evidence demonstrating that it has had registered rights in the GUCCI trademark since 1977.

The disputed domain names consist of the Complainant’s trademark in its entirety together with the prefix/suffix words “handbags”, “sale”, “store”, “bags” and “shop”, the geographical terms “jp” and “japan”, and all with the extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

In the Panel’s opinion the only difference between the Complainant’s trademark and the disputed domain names is the addition of the generic/descriptive/geographical terms which cannot be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871, the addition of a descriptive term does not typically serve to distinguish a domain name but, may serve to accentuate rather than to diminish the confusing similarity. In fact, the additional words refer to a generic means of marketing, a location of sale, and to a generic product line of the Complainant (handbags) both of which increase the likelihood of confusion (see Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170).

Moreover, the addition of the generic top-level suffix “.com” is typically non-distinctive because it is required for the registration of the domain names. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

In conclusion, as noted in Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 the additional words are too tenuous and insubstantial to detract from the conclusion that the disputed domain names are confusingly similar to the Complainant’s trademark where the latter is included in its entirety in the disputed domain names.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

In accordance to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:

- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or

- has been commonly known by the domain name; or

- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain names. The Respondent has chosen to use the disputed domain names that reflect the Complainant’s trademark in its entirety without authorization by the Complainant.

In addition, the Complainant has denied having any connection with the Respondent or provided any permission to use its trademark. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.

The Panel considers the lack of rights or legitimate interests in this case is similar to the circumstances in Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 where the UDRP panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognized as such.

As stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.

Despite the opportunity provided through this administrative procedure (and through the Complainant’s cease and desist communications) the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain names.

Therefore, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.

Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”. In the Panel’s view the Respondent’s registration of the disputed domain names represents a deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain names. As stated in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100 “It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection of the disputed domain names is so obviously connected to the Complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.

The fact that the disputed domain name <guccihandbagjp.com> was (at least until October 15, 2012) initially directed to the website “www.guccihandbagjp.com”, where the GUCCI marks were misappropriated, and subsequently redirected to “www.saclonegchampsac2012.com”, where prima facie counterfeit products under the trademark LONGCHAMPS were offered for sale, makes this a clear case of intentionally attempting to attract, for commercial gain, Internet users to the website.

The evidence submitted by the Complainant demonstrates that the Respondent has registered and used the disputed domain names in bad faith.

Noting that the Respondent has not rebutted any of the Complainant’s contentions, the Respondent’s use of incomplete or false contact information and the fact that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy.

Under the circumstances and for the foregoing reasons, the Panel considers that the passive holding of the disputed domain names by the Respondent does not prevent the Panel’s finding of bad faith.

In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is also met.

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 <guccihandbagjp.com>, <guccishopjp.com>, <shopguccibags.com>, <shopguccijapan.com>, <shopguccisale.com>, and <storeguccibags.com> be transferred to the Complainant, as requested.

Luiz E. Montaury Pimenta
Sole Panelist
Date: January 3, 2012