WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Kangda, Zhangdashuai

Case No. D2014-0452

1. The Parties

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

The Respondent is Kangda, Zhangdashuai of Putian, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names:

<allguccisale.asia>, <allguccisaleoutlet.asia>, <bestguccisaleoutlet.asia>, <freeguccisaleoutlet.asia>, <gucciauctionoutlet.asia>, <gucciautosaleoutlet.asia>, <gucciboatsaleoutlet.asia>, <guccidirectsaleoutlet.asia>, <gucciequipmentsaleoutlet.asia>, <gucciestatesaleoutlet.asia>, <guccigaragesaleoutlet.asia>, <guccihomesaleoutlet.asia>, <guccioutletsalejobs.asia>, <guccioutletsaleletter.asia>, <guccisaleexpert.asia>, <guccisaleissue.asia>, <guccisalejapan.asia>, <guccisalejobsoutlet.asia>, <guccisaleonlineoutlet.asia>, <guccisaleotlt.asia>, <guccisaleoutletblog.asia>, <guccisaleoutletcenter.asia>, <guccisaleoutletclub.asia>, <guccisaleoutletdesign.asia>, <guccisaleoutletgroup.asia>, <guccisaleoutlethomes.asia>, <guccisaleoutletinc.asia>, <guccisaleoutletmall.asia>, <guccisaleoutletshop.asia>, <guccisaleoutletsite.asia>, <guccisaleoutletstore.asia>, <guccisaleoutletusa.asia>, <guccisaleoutlt.asia>, <guccisaleoutl3t.asia>, <guccisalerelease.asia>, <guccisalerep.asia>, <guccisalesoutlets.asia>, <guccisaletaxoutlet.asia>, <guccisaletrainingoutlet.asia>, <guccisale0utlet.asia>, <guccisal3outlet.asia> <guccishortsaleoutlet.asia>, <guccisleoutlet.asia>, <guccis4leoutlet.asia>, <guccitrailersaleoutlet.asia>, <guccitrucksaleoutlet.asia>, <gucciyachtsaleoutlet.asia>, <gucciyardsalejapan.asia>, <gucciyardsaleoutlet.asia>, <homeguccisaleoutlet.asia>, <hotguccisaleoutlet.asia>, <myguccioutletsale.asia>, <myguccisaleoutlet.asia>, <newguccisaleoutlet.asia>, <theguccisaleoutlet.asia>, <webguccisaleoutlet.asia>, <yourguccisaleoutlet.asia> are registered with Todaynic.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2014. On March 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 1, 2014, 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 sent a Notification of Complaint Deficiency to the Complainant on April 9, 2014 and an amendment to the Complaint was filed by the Complainant on April 14, 2014.

On April 9, 2014, the Center transmitted an email in both English and Chinese to the parties regarding the language of the proceedings. On April 14, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments within the specified due date.

The Center verified that the Complaint together with the amendment to 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 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 19, 2014. 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 company which business consists of design and sale of luxury goods, namely, leather goods, luggage and handbags, clothing, eyewear and perfumes, which are sold worldwide.

The Complainant has been using the GUCCI mark in connection with its goods for over 90 years.

The Complainant is the owner of multiple trademark registrations for the mark GUCCI around the world. For example: 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 Registration Nos. 177030, 177031, 177032, 177033, 177034 and 177035 for GUCCI (word mark), filed on April 15, 1982 and registered on May 15, 1983.

Through extensive use and advertising around the world, the GUCCI trademark has generated vast good will and has become famous in connection with luxury goods.

The Complainant also developed a significant presence on the Internet and is the owner of multiple domain names, which contain GUCCI, for example: <gucci.com>.

The disputed domain names were registered between June 7, 2013 and June 17, 2013.

Until recently, the disputed domain names led Internet users to websites that offered for sale, prima facie counterfeit goods bearing the Complainant’s GUCCI mark.

Currently, some of the disputed domain names resolve into inactive websites and some of the disputed domain names redirect into websites displaying legal complaints.

Prior to the filing of its Complaint, the Complainant sent the Respondent a cease and desist letter, to which no response was received.

A. Complainant

The Complainant argues that the disputed domain names are identical or confusingly similar to the GUCCI trademark, in which the Complainant has rights, seeing that they incorporate the GUCCI trademark as a whole.

The Complainant further argues that the fact that the disputed domain names include the non-distinctive elements “japan”, “usa”, “all”, “ outlet”, “ best”, “sale”, “free”, “auction”, “auto”, “boat”, “design”, “direct”, “equipment”, “estate”, “garage”, “home”, “inc”, “jobs”, “letter”, “s4le”, “sal3, “0utlet”, “expert”, “group”, “help”, “homes”, “issue”, “online”, “leads”, “letter”, “otlt”, “outl3t”, “blog”, “center”, “club”, “design”, “group”, “homes”, “inc”, “mall”, “shop”, “site”, “store”, “outlt”, “release”, “rep”, “sales”, “outlets”, “tax”, “training”, “short”, “sle”, “trailer”, “truck”, “yacht”, “yard”, “home”, “hot” , “my”, “new”, “the”, “web” and “your” does not affect the confusing similarity that exists between the disputed domain names and the GUCCI trademark.

The Complainant further argues that the geographical indications “japan” and “usa” encompassed in some of the disputed domain names cannot be considered as sufficient to distinguish the disputed domain names from Complainant’s mark.

The Complainant further argues that the substitution of the letter “e” with “3” in the disputed domain names <guccisal3outlet.asia> and <guccisaleoutl3t.asia>, of the “a” with “4” in the disputed domain name <guccis4leoutlet.asia> and of the “o” with “0” in the disputed domain name <guccisale0utlet.asia> does not exclude confusing similarity and is another demonstration of the Respondent’s bad faith in registration and use of the disputed domain names.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its GUCCI trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain names, or has acquired trademark rights in GUCCI.

The Complainant further argues that it sells its goods worldwide, including in China, where the Respondent is located, and is the owner of multiple trademarks for GUCCI.

The Complainant further argues that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent’s sale of prima facie counterfeiting GUCCI branded products, under the Complainant’s trademark, amounts to bad faith.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the GUCCI trademark and products at the time it registered the disputed domain names.

The Complainant further argues that the fact that the Respondent registered multiple domain names all including the Complainant’s GUCCI trademark can be considered as evidence that the Respondent has registered and used the disputed domain names for the purpose of disrupting the Complainant’s business.

The Complainant further argues that the Respondent’s lack of response to the cease and desist letters sent by the Complainant, further support the Respondent’s bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain names appears to include an English version.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain names consist of Latin letters, rather than Chinese characters;

b) The disputed domain names used to resolve to websites that operated in English;

c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings.

B. Domain Names Registered by the Same Registrant

There are multiple domain names in this case. Under the Rules, paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case, the disputed domain names have all been registered by the same registrant, as confirmed by the Registrar. Therefore the Panel finds that this case complies with paragraph 3(c) of the Rules according to which “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

C. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark GUCCI around the world. For example: 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 Registration Nos. 177030, 177031, 177032, 177033, 177034 and 177035 for GUCCI (word mark), filed on April 15, 1982 and registered on May 15, 1983.

The disputed domain names differ from the registered GUCCI trademark by additional non distinctive elements, including: “japan”, “usa”, “all”, “outlet”, “best”, “sale”, “free”, “auction”, “auto”, “boat”, “design”, “direct”, “equipment”, “estate”, “garage”, “home”, “inc”, “jobs”, “letter”, “s4le”, “sal3”, “0utlet”, “expert”, “group”, “help”, “homes”, “issue”, “online”, “leads”, “letter”, “otlt”, “outl3t”, “blog”, “center”, “club”, “design”, “group”, “homes”, “inc”, “mall”, “shop”, “site”, “store”, “outlt”, “release”, “rep”, “sales”, “outlets”, “tax”, “training”, “short”, “sle”, “trailer”, “truck”, “yacht”, “yard”, “home”, “hot”, “my”, “new”, “the”, “web” and “your”.

The disputed domain names integrate the Complainant’s trademark GUCCI in its entirety, as a dominant element, with additional non-dominant elements that do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s well-known GUCCI trademark.

The mere addition of a generic term or a geographical term to a complainant’s mark is insufficient to affect the impression of confusing similarity.

The Respondent substituted the letter “e” with “3” in the disputed domain names <guccisal3outlet.asia> and <guccisaleoutl3t.asia>, the letter “a” with “4” in the disputed domain name <guccis4leoutlet.asia> and the letter “o” with “0” in the disputed domain name <guccisale0utlet.asia>. These substitutions also do not eliminate confusing similarity.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

“The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of a generic Top-Level Domain (gTLD) “.asia” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.asia” is without legal significance in this case since its use as a simple technical requirement to operate the disputed domain names does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights.

D. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its GUCCI trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

E. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant used the GUCCI trademark as early as 1921 and owns a registration for the GUCCI trademark since the year 1977. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain names. The fact that the Respondent registered multiple domain names which include the well-known GUCCI trademark therefore demonstrates the Respondent’s bad faith in this case.

Indeed, “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The disputed domain names used to lead Internet users to a website that engaged in the marketing of prima facie counterfeit GUCCI goods. The Respondent’s use of the trademark GUCCI to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making in its GUCCI trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".

Furthermore, the disputed domain names are confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, previous UDRP panels have also established that attracting Internet traffic for commercial gain by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent’s lack of response to the cease and desist letters sent by the Complainant, are a further indication of the Respondent’s bad faith.

Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant’s mark, the Panel draws the inference that the disputed domain names were registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 following disputed domain names:

<allguccisale.asia>, <allguccisaleoutlet.asia>, <bestguccisaleoutlet.asia>, <freeguccisaleoutlet.asia>, <gucciauctionoutlet.asia>, <gucciautosaleoutlet.asia>, <gucciboatsaleoutlet.asia>, <guccidirectsaleoutlet.asia>, <gucciequipmentsaleoutlet.asia>, <gucciestatesaleoutlet.asia>, <guccigaragesaleoutlet.asia>, <guccihomesaleoutlet.asia>, <guccioutletsalejobs.asia>, <guccioutletsaleletter.asia>, <guccisaleexpert.asia>, <guccisaleissue.asia>, <guccisalejapan.asia>, <guccisalejobsoutlet.asia>, <guccisaleonlineoutlet.asia>, <guccisaleotlt.asia>, <guccisaleoutletblog.asia>, <guccisaleoutletcenter.asia>, <guccisaleoutletclub.asia>, <guccisaleoutletdesign.asia>, <guccisaleoutletgroup.asia>, <guccisaleoutlethomes.asia>, <guccisaleoutletinc.asia>, <guccisaleoutletmall.asia>, <guccisaleoutletshop.asia>, <guccisaleoutletsite.asia>, <guccisaleoutletstore.asia>, <guccisaleoutletusa.asia>, <guccisaleoutlt.asia>, <guccisaleoutl3t.asia>, <guccisalerelease.asia>, <guccisalerep.asia>, <guccisalesoutlets.asia>, <guccisaletaxoutlet.asia>, <guccisaletrainingoutlet.asia>, <guccisale0utlet.asia>, <guccisal3outlet.asia>, <guccishortsaleoutlet.asia>, <guccisleoutlet.asia>, <guccis4leoutlet.asia>, <guccitrailersaleoutlet.asia>, <guccitrucksaleoutlet.asia>, <gucciyachtsaleoutlet.asia>, <gucciyardsalejapan.asia>, <gucciyardsaleoutlet.asia>, <homeguccisaleoutlet.asia>, <hotguccisaleoutlet.asia>, <myguccioutletsale.asia>, <myguccisaleoutlet.asia>, <newguccisaleoutlet.asia>, <theguccisaleoutlet.asia>, <webguccisaleoutlet.asia>, <yourguccisaleoutlet.asia> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: June 2, 2014