WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Wen Ben Zhou, Xiao Feng

Case No. D2014-1972

1. The Parties

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

The Respondents are Wen Ben Zhou of Xiamen, China and Xiao Feng of Hangzhou, China.

2. The Domain Names and Registrar

The disputed domain names <cheapguccinewzealand.com>, <gucciaus.com>, <guccibaghot.com>, <guccibags1-1.com>, <guccicanadaoutlets.com>, <gucci-dubai.com>, <guccifashion.com>, <gucciindiaonline.com>, <guccimalaysiaoutlet.com>, <guccimexicos.com>, <guccioutlet-sg.com>, <gucciphile.com>, <guccisalebags.com>, <guccisingaporeoutlet.com>, <guccisouthafrica.com>, <gucciza.com>, <gucci778.com>, <sacguccipascherefrance.com>, <sacguccipascherefr.com>, <sacsguccipaschere2014.com> and <sale-guccibag.com> (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 November 7, 2014. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on November 10, 2014, confirming that it is the registrar of all of the Domain Names, that the Respondents are the registrants, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Names will remain locked during this proceeding, that the language of the registration agreement is English, and that the Domain Names were registered to the Respondents on March 12, 2014. The Registrar also provided the full contact details held in respect of the Domain Names on its WhoIs database.

The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2014.

The Center appointed Jonathan Turner as the sole panelist in this matter on December 15, 2014. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is part of the Gucci Group, a leading international fashion business founded by Guccio Gucci in 1921. The Complainant owns numerous national and international trademark registrations for the mark GUCCI, including Italian trademark registration no. 801958, International trademark registration no. 429833 and Community trademark registration no. 000121988. The Complainant also has over 1,000 domain names incorporating the word “gucci”, most of which are directed to its website at “www.gucci.com”. The mark GUCCI has been extensively used and advertised by the Gucci Group and has been promoted by celebrity figures using its products.

The Domain Names are registered in the name of the first Respondent, Wen Ben Zhou, with the exception of <sacguccipascherefr.com> and <sacsguccipaschere2014.com>, which are registered in the name of the second Respondent, Xiao Feng.

The postal addresses of the registrants and other contacts in the WhoIs data for all of the Domain Names contain the same street address, the same postal code and the same country, albeit different cities and provinces. For 18 of the Domain Names the city and province are given as Xiamen and Fu Jian respectively; for the remaining 3 Domain Names, namely <sacguccipascherefr.com>, <sacsguccipaschere2014.com> and <sacguccipascherefrance.com>, these are given as Hangzhou and Zhejiang respectively.

The telephone number of the registrants and other contacts in the WhoIs data for all of the Domain Names is the same.

The email address of the registrant and other contacts in the WhoIs data for 17 of the Domain Names is the same. Three of the remaining Domain Names, namely <sacguccipascherefr.com>, <sacsguccipaschere2014.com> and <sacguccipascherefrance.com>, share a different email address in their WhoIs data. The remaining Domain Name, <gucci778.com>, has a different email address in its WhoIs data for the registrant and other contacts.

The Domain Names other than <gucci778.com>, <gucciaus.com>, <gucciza.com>, <sale-guccibag.com>, <sacguccipascherefr.com>, <sacsguccipaschere2014.com> and <sacguccipascherefrance.com> are directed to websites containing multiple references to the mark GUCCI and a device mark used by the Gucci Group, together with photographs of GUCCI products and offer to sell them at low prices.

The Domain Names <sacguccipascherefr.com>, <sacguccipascherefrance.com> and <sacsguccipaschere2014.com> are directed to a website on which products bearing the trademarks of companies competing with the Gucci Group are offered for sale.

The Domain Name <gucciza.com> is directed to a holding web page. The Domain Names <gucci778.com>, <gucciaus.com> and <sale-guccibag.com> are not directed to websites.

After learning of the registration and use of some of the Domain Names the Complainant instructed its representative to send a cease and desist letter. The letter was sent to the Respondents at the email addresses identified in the WhoIs data for the Domain Names on April 23, 2014, with reminders on May 8, 2014, June 19, 2014, and September 26, 2014. The second and third reminders included additional Domain Names which the Complainant had by then discovered and were sent to email addresses indicated on some of the Respondents’ websites as well as those in the WhoIs data. No reply was received to any of these communications.

5. Parties’ Contentions

A. Complainant

The Complainant first requests consolidation of the claims against the two Respondents in a single proceeding. The Complainant points out that it has been held in previous UDRP decisions that consolidation may be appropriate where the disputed domain names or the websites to which they resolve are under common control and consolidation would be procedurally efficient and fair and equitable to all parties.

The Complainant submits that common control has been found to exist for this purpose where different registrants were alter egos of the same beneficial holder, as indicated by commonality in registration information; or where a single person or entity registered multiple domain names using fictitious names; or where the disputed domain names resolved to common servers; or where the disputed domain names all contained the Complainant’s mark in its entirety together with a descriptive term.

The Complainant then draws attention to the commonalities identified in section 4 above in the WhoIs data for the Domain Names and in the websites to which they resolve. The Complainant further points out that the Domain Names all incorporate its trademark in its entirety together with descriptive terms.

On this basis, the Complainant submits that the Domain Names are under common control of the same person or a small group of individuals acting in concert, and that the proceedings should be consolidated. Alternatively, if this be rejected by the Panel, the Complainant asks that it not be precluded from bringing separate proceedings in respect of those Domain Names that cannot be consolidated.

The Complainant further submits that its submissions on consolidation should not be taken into account in the application of the word limit in paragraph 10 of the Supplemental Rules.

As regards the substantive issues, the Complainant contends that it has rights in the trademark GUCCI and that all of the Domain Names are confusingly similar to this mark, in that they all contain this mark in its entirety together with descriptive terms and/or geographical indications.

The Complainant submits that the Respondents do not have any rights or legitimate interests in respect of the Domain Names. It states that the Respondents are not its licensees or authorized agents or authorized to use its trademark in any other way. It states on information and belief that the Respondents are not commonly known by the Domain Names. It adds that the Respondents have not provided any evidence of use of the Domain Names in connection with a bona fide offering of goods or services or preparations for such use before notice of the dispute.

The Complainant contends that most of the Domain Names are directed to websites selling counterfeit goods and that this does not constitute a bona fide offering of goods or services nor legitimate noncommercial or fair use. The Complainant infers that the goods are counterfeit from the low prices at which they are offered for sale by reference to its trademarks and pictures of its products. As regards the other Domain Names, the Complainant states that it cannot conceive of any legitimate use. The Complainant also draws attention to the Respondents’ failure to respond to cease and desist letters.

The Complainant alleges that the Domain Names were registered and are being used in bad faith. It submits that it is inconceivable that the Respondents were not aware of the Complainant’s rights in the GUCCI trademarks, and that they must have registered the Domain Names with the intention of referring to these marks. The Complainant reiterates that most of the Domain Names are being used to locate websites selling counterfeit goods. The Complainant contends that this clearly indicates that the Respondents’ purpose in registering the Domain Names was to capitalize on the reputation of the Complainant’s mark by diverting Internet users seeking products under the GUCCI mark to their 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 their websites and/or of goods offered or promoted on them.

The Complainant alleges that the remaining Domain Names, that are not directed to active websites, are being held passively in bad faith. The Complainant also refers to the Respondents’ provision of incomplete or inaccurate information in registering the Domain Names and their failure to reply to the cease and desist letters and to dispute the allegations in them as further evidence of bad faith.

The Complainant requests a decision that the Domain Names be transferred to it.

B. Respondent

As stated above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. On the basis of the commonalities in the registration information and use of the Domain Names mentioned in section 4 above, the Panel is satisfied on the balance of probabilities that the Domain Names are in fact registered by the same domain name holder using different names and that the Complaint is admissible under paragraph 3(c) of the Rules.

In any event, the Panel has power to consolidate proceedings under paragraph 10(e) of the Rules. The Panel is satisfied that this is clearly an appropriate case for consolidation in view of the evidence of common control and the fact that consolidation is procedurally efficient, fair and equitable in the circumstances.

The Panel also accepts that the Complainant’s submission on consolidation should not be taken into account in applying the word limit in paragraph 10 of the Supplemental Rules. This paragraph refers to paragraph 3(ix) of the Rules, which applies to the grounds of the complaint, and in particular the three substantive requirements of the UDRP discussed below. The Panel considers that the word limit does not apply to procedural submissions which do not constitute the grounds on which the Complaint is made. Panels have power to exclude or curtail unduly prolix procedural submissions under paragraph 10(a) of the Rules, but there is no cause to do so in this case.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has registered rights in the trademark GUCCI.

The Panel further finds that all of the Domain Names are confusingly similar to this mark. All of them contain this distinctive mark in its entirety. All but one of them contain this mark together with descriptive terms in English or French and/or geographical indications in the form of names of countries or abbreviations for them (such as “aus” for Australia, “fr” for France, or “za” for Zuid-Afrika (South Africa)). The addition of such descriptive terms is insufficient in the Panel’s view to avoid confusion deriving from the use of the Complainant’s distinctive mark.

The one exception is <gucci778.com>, in that the number “778” is not apparently descriptive. However, in the Panel’s view, the addition of the number “778” does not sufficiently distinguish this Domain Name from the Complainant’s mark. Many Internet users would assume that this Domain Name also belongs to the Complainant or another member of the Gucci Group.

The first substantive requirement of the UDRP is therefore satisfied in relation to all of the Domain Names.

C. Rights or Legitimate Interests

The Panel finds that the Respondents have not used any of the Domain Names for any bona fide offering of goods or services or preparations for such use.

The Respondents have used most of the Domain Names to attract Internet users by confusion with the Complainant’s mark to websites apparently selling counterfeit or competing goods. In this regard, the Panel accepts the Complainant’s undisputed evidence that the Respondents are not selling genuine GUCCI products. The Panel does not regard this as a bona fide offering of goods.

The Respondents have not used or made preparations to use the remaining Domain Names for any offering of goods or services. Nor have the Respondents made any legitimate noncommercial or fair use of any of the Domain Names. Such use as they have made has been commercial, illegitimate and unfair, and with intent misleadingly to divert consumers for commercial gain.

It is evident that the Respondents are not commonly known by any of the Domain Names. On the available record, there is no other basis on which the Respondents could claim any rights or legitimate interests in respect of any of the Domain Names or any corresponding name.

The Panel concludes that the Respondents have no such rights or legitimate interests. The second substantive requirement of the UDRP is satisfied in relation to all of the Domain Names.

D. Registered and Used in Bad Faith

The Panel finds on the evidence that all but four of the Domain Names are directed to websites apparently selling counterfeit or competing goods. The Panel is satisfied that by so using these Domain Names the Respondents have intentionally attempted to attract Internet users to these websites for commercial gain by creating a likelihood of confusion with the Complainant’s GUCCI mark as to the source of these websites and/or of the products on them.

In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of these Domain Names in bad faith. There is no material in the file that contradicts this presumption. The Panel accordingly finds that these Domain Names were registered and are being used in bad faith.

Although the other Domain Names, namely <gucciza.com>, <gucci778.com>, <gucciaus.com> and <sale-guccibag.com>, have not yet been directed to websites as described above, the Panel infers from their similar nature to those which have been used to sell counterfeit or competing products that the Respondents registered them and are holding them for the same bad faith purposes. The Panel regards the holding of the Domain Names with such intent as a form of passive use in bad faith for the purpose of paragraph 4(a)(iii) of the UDRP, in line with many previous decisions.

In all the circumstances, the Panel finds that all of the Domain Names have been registered and are being used in bad faith.

All three substantive requirements of the UDRP are satisfied in relation to each of the Domain Names and it is appropriate to order transfer all of the Domain Names to the Complainant.

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 Domain Names <cheapguccinewzealand.com>, <gucciaus.com>, <guccibaghot.com>, <guccibags1-1.com>, <guccicanadaoutlets.com>, <gucci-dubai.com>, <guccifashion.com>, <gucciindiaonline.com>, <guccimalaysiaoutlet.com>, <guccimexicos.com>, <guccioutlet-sg.com>, <gucciphile.com>, <guccisalebags.com>, <guccisingaporeoutlet.com>, <guccisouthafrica.com>, <gucciza.com>, <gucci778.com>, <sacguccipascherefrance.com>, <sacguccipascherefr.com>, <sacsguccipaschere2014.com> and <sale-guccibag.com> be transferred to the Complainant.

Jonathan Turner
Sole Panelist
Date: December 22, 2014