WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Hu Ziliu
Case No. D2013-0681
1. The Parties
The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Hu Ziliu of Shijiazhuang, Hebei Province, China.
2. The Domain Names and Registrar
The following disputed domain names (hereafter the “Domain Names”)
are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 12, 2013, 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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Jon Lang as the sole panelist in this matter on May 27, 2013. 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 (Guccio Gucci S.p.A.) is an Italian Public Limited Company which is part of the Gucci Group and belongs to the French conglomerate, Pinault-Printemps-Redoute (PPR). It is the owner of thousands of national and international trademark registrations worldwide, including Italian Registration No. 801958 for GUCCI (word mark), filed on January 13, 1977; International Registration No. 429833 for GUCCI (word mark), registered on March 30, 1977 and Community Trademark Registration No. 000121988 for GUCCI (word mark), filed on April 1, 1996 and registered on November 24, 1998. The Complainant is also the owner of several trademark registrations for GUCCI in China, where the Respondent is based, including the Chinese Trademark Registrations Nos. 177030, 177031, 177032, 177033, 177034 and 177035 for GUCCI (word mark), filed on April 15, 1982 and registered on May 15, 1983.
The trademark GUCCI is supported by intensive advertising campaigns worldwide, with campaigns appearing in important international magazines with broad circulation such as, inter alia, Vogue, Vanity Fair, GQ and Glamour. The brand has a strong presence online through social media such as Facebook, Twitter, YouTube and FourSquare (see “www.facebook.com/gucci”, “www.twitter.com/gucci, http://youtube.com/gucci” and “http://foursquare.com/gucci”), and has dedicated websites such as the main site “www.gucci.com”, and “www.gucciconnect.com” and “www.gucciparfums.com”. As a result of the Complainant’s substantial investment in advertising, and marketing and sales, and its consistent use of the GUCCI logo over decades, GUCCI is a well-known trademark worldwide.
The Complainant and its associated companies in the Gucci Group are also the owners of more than one thousand domain names identical to or comprising the mark GUCCI and the website “www.gucci.com”, to which most of the Complainant’s registered domain names are redirected, generates a significant number of visits by Internet users.
The Respondent registered all the Domain Names on October 26, 2012. When the Complainant became aware of the registrations a cease and desist letter was sent on March 21, 2013, to which no response was received. A further letter was sent on April 11, 2013, which was also disregarded.
5. Parties’ Contentions
The Respondent has been redirecting the Domain Names to websites where the Complainant’s trademarks and images (taken from the Complainant’s advertising campaigns) are misappropriated and prima facie counterfeit products bearing GUCCI marks are offered for sale.
In view of Internet users' presumption of trustworthiness in domain names consisting of or incorporating registered trademarks, it is likely that users could be mislead as to the source, sponsorship or affiliation of the Respondent’s activities through its websites. The risk of confusion is increased by the fact that the Respondent has published (on the websites) misleading text suggesting that it is a genuine Gucci website. For instance, at “www.guccibagsales.org”, the Respondent claims “Some stars wear new Gucci in important occasions, and perhaps some people wear it in wedding. Celebrity endorsement has made discount Gucci more popular. Buy Gucci at Gucci store online is often a new trendy on the earth. If you’ve been paying any attention to celebrity fashion lately, you’ve probably noticed a proliferation of new Gucci bags and other Gucci sales in our Gucci Australia store”. At “www.guccihandbagsau.net” it is claimed that “All of our Gucci bags, handbags, shoes and sunglasses come from famous factory directly. We assure our customers of reliable quotations, prompt deliveries and stable supplies.”
The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Names are confusingly similar to trademarks in which the Complainant has rights leading Internet users to believe that there is an association between the Domain Names and the Complainant.
The Domain Names incorporate the whole of the Complainant’s GUCCI trademark. The fact that the Domain Names include non-distinctive elements – “authentic”, “wallet”, “buy”, “store”, “cheap”, “purses”, “discount”, “backpacks”, “bag”, “sale(s)”, “handbags”, “online”, “loafers”, “formen”, “outlet”, “shop”, “sneakers”, “onsale”, “fake”, “belt”, “forsale”, “iiphonecases”, “replica”, “handbags” and “sukey”, does not affect their confusing similarity to the Complainant’s GUCCI mark. In fact, given the product descriptions used by the Respondent in many of the Domain Names (“handbags”, “purses” etc.) and other descriptive terms (“online”, “outlet”, “shop”), some of the terms that the Respondent has combined with the Complainant’s GUCCI mark are likely to increase the likelihood of confusion. Moreover, the geographical indicators used by the Respondent in the body of some of the Domain Names e.g. “us”, “uk”, “au”, “mx”, “hk” (clearly designating, respectively, United State of America, United Kingdom of Great Britain and Northern Ireland, Australia, Mexico and Hong Kong, China ), along with full location names “chicago”, “hongkong” and “mexico” in others, also may serve to increase confusion rather than distinguish the Respondent’s Domain Names from the Complainant’s mark, given that GUCCI is an internationally well-known mark, with retail stores and shops worldwide.
The Respondent has no rights or legitimate interests in respect of the Domain Names.
The Respondent has no rights or legitimate interests in respect of the Domain Names.
The mere registration of a domain name does not establish rights or legitimate interests.
The Respondent is not a licensee or authorised agent of the Complainant, or authorized to use the Complainant’s trademark, GUCCI.
The Respondent is not commonly known by the Domain Names and has not provided any evidence of use, or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute the subject of these proceedings. In fact the Domain Names have been and are still pointed to websites which use the Complainant’s figurative trademarks and images taken from official GUCCI advertising campaigns and, prima facie, counterfeit Gucci branded products are offered for sale.
The Respondent's use can be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names. Such wilful conduct clearly demonstrates that the Respondent did not intend to use the Domain Names in connection with any legitimate purpose.
Furthermore, the Respondent’s use of the Domain Names cannot be considered a legitimate noncommercial or fair use without intent for commercial gain because the Respondent has attempted to gain from the sales of prima facie counterfeit products.
The Domain Names were registered and are being used in bad faith.
The GUCCI trademark is extremely well-known and has been used since as early as 1921. It is inconceivable that the Respondent was unaware of the existence of the Complainant or the Complainant’s GUCCI trademark at the time of registration of the Domain Names which were registered with the clear intention of referring to the Complainant’s mark.
Therefore, it is inconceivable that the Respondent was not aware of the Complainant’s trademark rights. On the contrary, the Respondent was well aware of the Complainant’s rights in the famous trademark
Use of the Domain Names for commercial websites on which the Complainant’s trademarks have been misappropriated and on which prima facie counterfeit Gucci products are offered for sale, indicates that the Respondent's purpose in registering the Domain Names was to capitalise on the reputation of the Complainant's mark. This was achieved by diverting Internet users seeking products under the GUCCI mark to the Respondent’s own websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through such websites.
The Respondent, apart from free-riding on the goodwill of the Complainant’s mark for commercial gain, is using its websites to attract Internet users to sell prima facie counterfeit products. The prices at which products are offered for sale are much lower than those of the corresponding genuine products which suggests that they are in fact counterfeit.
The fact that the Domain Names comprise 33 confusingly similar domain names all including the Complainant's GUCCI trademark, can be considered as evidence that the Respondent has registered and used the Domain Names for the purpose of disrupting the Complainant’s business. Such conduct cannot be considered a bona fide registration or use.
Moreover, the Respondent failed to reply to the cease and desist letters sent by the legal representative of the Complainant, further supporting an inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its GUCCI trademarks.
The Domain Names incorporate the Complainant’s GUCCI mark in its entirety and is very much their dominant element, being a widely-known famous mark.
However, as the Complainant’s mark and the Domain Names are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given that the GUCCI mark, whilst not always placed first in the Domain Names, is still readily recognizable within them, the Panel is satisfied that the Domain Names are confusingly similar to the Complainant’s GUCCI trademark.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Names and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Names may well give rise to the possibility that Internet users may think that the owner of the Domain Names is in fact associated in some way with the Complainant. The inclusion of descriptive/generic/geographical terms in the Domain Names, far from distinguishing them from the Complainant and its mark (and thus reducing the likelihood of confusion), may well serve to increase the likelihood of confusion given that such terms describe many of the products sold by the Complainant and countries in which it operates.
The Panel holds that the Domain Names are confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, as previous UDRP panels have held, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so by way of a Response and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Names.
Nevertheless, in the circumstances of this case, the Panel considers it appropriate to comment on the issue of rights or legitimate interests in a little more detail.
A respondent can show that it has rights or legitimate interests in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services.
Here, there is little doubt that the Respondent has put the Domain Names to commercial use. Moreover, the Domain Names are confusingly similar and so it would be difficult to maintain that there is no risk of a misleading diversion of consumers. It would also be difficult to maintain that there was no risk of tarnishment of the GUCCI mark given the nature of the website to which the Domain Names resolve. As to a bona fide offering of goods or services, while the Panel makes no finding as to whether the GUCCI branded products offered for sale on the Respondent’s website are, or are not, counterfeit products, there is clearly a question mark over their authenticity, particularly given the prices at which they are offered for sale compared to the prices the Respondent’s own website suggests they should be or once were offered for sale. The Respondent has not come forward to deal with this or any other issue raised by the Complainant. In the absence of any explanation, it is difficult to conclude that there is anything bona fide about the offerings on the Respondent’s websites, particularly given that they (the websites) are linked to Domain Names which, in the Panel’s view, so obviously take advantage of the fame of the trademark to which they are confusingly similar.
Finally, paragraph 4(c)(ii) of the Policy provides that rights to or legitimate interests in a domain name can be established if it is found by the panel to be proved that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”.
It cannot be the case of course, that use of a domain name as a business name will always establish rights or legitimate interests in that domain name for if that were the position, respondents could always avoid the consequences of their otherwise wrongful actions by doing something the Policy was designed to prohibit, namely taking unfair advantage of another’s mark to build a business. As the panel stated in Drexel University v. David Brouda, WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant’s GUCCI mark at the time of registration of the Domain Names. No legitimate explanation for the Respondent’s choice of Domain Names has been advanced or seems likely. In these circumstances, it appears clear to the Panel that the reason for the Respondent’s choice was to unfairly capitalise on or otherwise take advantage of the Complainant’s mark.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once Internet users arrive at the respondent’s website it is clear (perhaps because of the heavy discounting of products or some of the language used), that it is unconnected with the trademark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. In this case however, it is quiet possible, given the get up of the Respondent’s websites, that it will not be immediately obvious to some Internet users that it is not the Complaint’s website or associated with the Complainant in some way. In any event, in all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names
be transferred to the Complainant.
Date: June 7, 2013