WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Tang Dan
Case No. D2015-2016
1. The Parties
The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Tang Dan of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <goldengoosescarpe.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2015. On November 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2015, 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.
On November 10, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on December 10, 2015. 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 (formerly known as Alessandro Gallo S.n.c.) is in the business of apparel and accessories, and markets its products under the trade marks GOLDEN GOOSE DELUXE BRAND and GGDB (the initials of GOLDEN GOOSE DELUXE BRAND). It submitted evidence of its International and Italian trade mark registrations for GOLDEN GOOSE DELUXE BRAND.
The disputed domain name was registered on July 7, 2015.
5. Parties’ Contentions
The Complainant was founded in 2000 and over the years developed a vast international following, effectively putting it among the most sought-after brands in the fashion world.
Images of the Complainant’s Golden Goose Deluxe Brand products were published on the cover of the Spring Summer 2014 catalogue of Barneys New York, appearing alongside the products of other well-known brands such as Lanvin, Givenchy, Maison Martin Margiela, Bottega Veneta, Ferragamo, Borsalino and Fendi. Celebrities such as Jude Law, Keira Knightley and Sarah Jessica Parker are fans of the Complainant’s Golden Goose Deluxe Brand products.
The Complainant operates a vast sales network, including more than 500 among the most prestigious retail stores in the world: e.g., Biffi Boutique in Milan, L’Eclaireur Marais in Paris, Browns Focus and Harvey Nichols in London, Barneys New York in New York City, H. Lorenzo in Los Angeles, Ikram in Chicago, Lane Crawford in Hong Kong, China, amongst others.
The Complainant also sells its products via its main website at “www.goldengoosedeluxebrand.com”, with significant visitor hits and is active on social networks such as Facebook, Twitter and YouTube.
After a financial investment by the Italian private equity fund, DGPA Capital, the Complainant commenced on an international expansion project, with the opening of flagship and corner stores in Milan, Seoul, Paris, Tokyo, Beirut and Amsterdam.
The Complainant’s products have been endorsed by several international magazines such as Vogue, Elle, Marieclaire, L’Officiel, Grazia, Harper’s Bazar, Cosmopolitan, Vanity Fair, Esquire, and GQ. As a result of its marketing, sales, distribution channels and impressive client base, its trade marks are well known worldwide.
The Respondent’s website to which the disputed domain name resolves is an online store selling counterfeit GGDB/Golden Goose Deluxe Brand products and reproduces, without permission, images taken from the Complainant’s catalogues and website.
The disputed domain name is confusingly similar to the trade mark GOLDEN GOOSE DELUXE BRAND in which the Complainant has rights. The use of the Italian term “scarpe” which means “shoes” together with the Complainant’s trade mark GOLDEN GOOSE does not affect the confusing similarity with the trade mark as the term refers to the Complainant’s products.
The Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not a licensee, distributor or authorized agent of the Complainant, and it is not known by the disputed domain name. There are no demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. Instead, the Respondent is using the disputed domain name to sell counterfeit goods.
The disputed domain name was registered and is being used in bad faith and this is supported by the fact that counterfeit goods under the Complainant’s GGDB and GOLDEN GOOSE DELUXE BRAND marks are offered for sale on the Respondent’s website. Moreover, incomplete or inaccurate contact information has been given by the Respondent in its disputed domain name registration, which indicates bad faith.
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 stipulates 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 Panel finds it appropriate, in the exercise of its discretion under paragraph 11 of the Rules, to hold that English shall be the language of the administrative proceeding. The disputed domain name contains an English term and trade mark, GOLDEN GOOSE, as well as an Italian word, “scarpe”. The combination of words as well as evidence as to how the Respondent’s website appears to reflect a familiarity and comfort with the English language. It also reflects an intention to target European customers. On an evaluation of the circumstances, the Panel finds it would unduly delay the proceeding if the Complainant were required to have the Complaint and exhibits translated into Chinese, which does not appear to be merited in light of the apparent familiarity of the Respondent with the English language. Paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. The Respondent would have been apprised of the essence, requirements and relevant deadlines pertaining to the administrative procedure since all communications from the Center to the parties were in English and Chinese. If there were grounds to object to the Complainant’s request for English to be the language of the proceeding, the Respondent had the opportunity to do so but did not take it up.
B. Identical or Confusingly Similar
The Complainant has shown it has registered trademark rights in GOLDEN GOOSE DELUXE BRAND. The disputed domain name comprises the first two words, GOLDEN GOOSE, and the Italian word, “scarpe”. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered GOLDEN GOOSE DELUXE BRAND as GOLDEN GOOSE forms the distinctive and primary portion of the said trade mark. Moreover, it can be envisaged that customers or those familiar with the Complainant’s brand of shoes would refer to them as Golden Goose shoes. The trade mark GOLDEN GOOSE appears on items shown in the Complainant’s website. The addition of the generic term “scarpe” in the disputed domain name does not serve whatsoever to remove the confusing similarity with the Complainant’s mark, in particular since shoes are what the Complainant sells under its trade marks.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been established.
C. Rights or Legitimate Interests
The Panel also finds that the second element of paragraph 4(a) of the Policy has been satisfied. There is a clear attempt by the Respondent to present its website as a genuine website of, or one that is related to or endorsed by, the Complainant. Such manner of use does not constitute the making of a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers (paragraph 4(c)(iii) of the Policy). Neither is there is evidence from which the Panel can find there to be a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name (paragraph 4(c)(i) and (ii) of the Policy).
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted.
D. Registered and Used in Bad Faith
Following from the above findings, the Panel also concludes that the registration and use of the disputed domain name have been in bad faith. The Respondent is clearly familiar with the Complainant’s trade marks and products. Its intention in registering the disputed domain name comprising the distinctive portion of the Complainant’s registered mark, namely the words “golden goose” in combination with the Italian word for shoes (the Complainant’s brand and products originating as they do, from Italy), was clearly to capitalize on the reputation and popularity of the Complainant’s products and brand name and to attract customers by misleading them. The Panel notes that whether or not the Respondent’s goods are in fact counterfeit, whilst asserted to be so by the Complainant, has not been proven in evidence. In any case, the Respondent has not refuted this assertion of the Complainant and one can draw a negative inference from its silence.
The Panel finds that the Respondent has, by using the disputed domain name, “intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy).
The third element of paragraph 4(a) of the Policy has therefore been satisfied.
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 name <goldengoosescarpe.com> be transferred to the Complainant.
Date: December 18, 2015