WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. yuejuan, maoyuejuan

Case No. D2015-2089

1. The Parties

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

The Respondent is yuejuan, maoyuejuan of Shaoguan, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names are <guccibeltsoutlet.com>, <guccifactoryoutlet.com>, <guccioutletsonline.com>, <guccioutletonlinesua.com>, <guccioutletstoresonline.com>, <guccisneakers.com>, <guccisunglassesoutlet.com> and <gucciwalletoutlet.com> (collectively, the "disputed domain names"). They are all registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 19 and 20, 2015, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

On November 20, 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 Chinese and English, and the proceeding commenced on November 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 18, 2015.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 28, 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 is Guccio Gucci S.p.A., an Italian Public Limited Company. It is the owner of multiple trademark registrations for GUCCI in multiple jurisdictions around the world. These include International Registration No. 429833, registered on March 30, 1977, in respect of goods in classes 3, 14, 18, and 25. The goods in respect of which the trademark is registered include leather goods, watches, footwear and clothing.

The Respondent is an individual in China. She is the registrant of all the disputed domain names. The disputed domain name <guccioutletonlinesua.com> was registered on August 1, 2014 and all the other disputed domain names were registered between February 2 and 4, 2015.

All the disputed domain names resolve to websites that display the GUCCI trademark in connection with the offering for sale of handbags, shoes, watches and other goods. All those websites redirect to a webpage at the site "http://gc.wholesaleshop.info" that displays the GUCCI trademark in connection with the offering for sale of a wide range of clothing and accessories.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. The disputed domain names incorporate the whole of Complainant's GUCCI trademark. The other terms selected by the Respondent within the disputed domain names are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the disputed domain names and the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant's GUCCI trademark. As far as the Complainant is aware, the Respondent is not commonly known by the disputed domain names as an individual, business, or other organization. All the websites corresponding to the disputed domain names contain links redirecting Internet users to the same website where prima facie counterfeit GUCCI products are offered for sale.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. Given that the GUCCI trademark is well known and has been used since as early as 1921, it is inconceivable that Respondent was unaware of its existence at the time of registration of the disputed domain names. The use of all the disputed domain names for commercial websites where the Complainant's trademark is misappropriated and prima facie counterfeit GUCCI branded products are promoted for sale, clearly indicates that the Respondent's purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking GUCCI branded products to her own websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademark as contemplated by paragraph 4(b)(iv) of the Policy.

The Complainant also submits that the Respondent has registered the disputed domain names in order to prevent Complainant from reflecting its trademark GUCCI in corresponding domain names and that by registering at least eight such domain names, the Respondent has engaged in a pattern of such conduct, within the meaning of paragraph 4(b)(ii) of the Policy. Further, the Respondent's use of the disputed domain names is apt to disrupt the Complainant's business within the meaning of paragraph 4(b)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural issues

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 Registrar confirmed that the Registration Agreement for the disputed domain names is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are (i)

requiring the Complainant to translate the Complaint and all documents into Chinese would cause undue delay; (ii) the Respondent in this case has demonstrated that she understands English since the disputed domain names redirect users to websites published entirely in English and all the disputed domain names are all made up of letters in ASCII characters, pronounced phonetically in English; and (iii) the Respondent did not indicate any issue related to the language of the Complainant's cease and desist letter and a reminder, both of which were written in English.

The Panel notes that all the Center's email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant's request that English be the language of the proceeding but the Respondent did not in fact object nor did she express any wish to respond to the Complaint.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English. The screenshots of the Respondent's websites provided in evidence are also in English and it is therefore reasonable to believe that the Respondent is familiar with that language. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

B. Consolidation of Multiple Domain Name Disputes

The Complaint in this proceeding initiated disputes regarding eight different domain name registrations. The Panel observes that the Respondent is the registrant of all the disputed domain names and that all the disputed domain names incorporate the Complainant's GUCCI trademark. Further, the content of the websites to which the disputed domain names resolve is partly or wholly identical and the disputed domain names all redirect to the same website. Therefore, in accordance with paragraph 10(e) of the Rules, the Panel decides that it is appropriate to consolidate these eight domain name disputes in a single proceeding.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the word "Gucci".

The disputed domain names all incorporate the Complainant's GUCCI trademark in its entirety. The Complainant's trademark is the dominant element of the disputed domain names. Most of the additional elements are merely generic words, namely "belts", "factory", "outlet", "outlets", "online", "stores", "sneakers", "sunglasses" and "wallet". A generic word is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant's trademark. (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). The Panel finds that the combination of two or more of these generic words with the Complainant's GUCCI trademark is not sufficient to dispel the confusing similarity either. One additional element in one of the disputed domain names is not a word but rather the letters "sua", which may or may not be a misspelling of the acronym "USA". In any case, the Panel finds that this element, even in combination with two generic words, does not dispel the confusing similarity to the Complainant's trademark either.

Another additional element in each disputed domain name is the generic Top-Level Domain ("gTLD") suffix ".com". A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). Consequently, the only distinctive element of the disputed domain names for the purposes of this comparison is the Complainant's GUCCI trademark.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the evidence shows that the Respondent is using the disputed domain names in connection with the offering for sale of handbags, shoes, watches and other accessories. The issue is whether that offering is bona fide. The only distinctive element of the disputed domain names is identical to the Complainant's trademark yet, according to the Complaint, the Respondent has no connection to the Complainant. The websites to which the disputed domain names resolve state that the handbags, shoes and watches are "replica" products, that is, they are not genuine. This indicates that the reason for choosing the disputed domain names was to misleadingly divert Internet users to the Respondent's sites with intent for commercial gain and that the Respondent's use of the disputed domain names in connection with the offering of goods or services was not bona fide. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent's name is "yuejuan, maoyuejuan". There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain names resolve to websites that offer goods for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain names covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden now shifts to the Respondent to show that she does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."

The Respondent registered the disputed domain names in 2014 and 2015, many years after the Complainant obtained its trademark registrations. The dominant element of the disputed domain names is identical to the Complainant's GUCCI trademark. The websites to which the disputed domain names resolve display the Complainant's trademark and offer for sale replicas of the Complainant's products. This indicates to the Panel that the Respondent intentionally chose to register the Complainant's trademark and use it in the disputed domain names.

The Respondent uses the disputed domain names, including the Complainant's trademark, with the websites to offer accessories for sale. The Respondent has no connection with the Complainant. The generic words added to the Complainant's trademark in the disputed domain names describe the Complainant's types of products ("belts", "sneakers", "sunglasses" and "wallet") and possible channels of distribution of the Complainant's products ("factory", "online", "outlet", "outlets" and "stores"). Yet the handbags, shoes and wallets offered on those websites are not genuine, as indicated by the statement that they are replicas. Given these facts, the Panel considers that the Respondent's use of the disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or of the products on that websites.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. Accordingly, it is unnecessary to consider the other circumstances in paragraph 4(b) 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 disputed domain names <guccibeltsoutlet.com>, <guccifactoryoutlet.com>, <guccioutletsonline.com>, <guccioutletonlinesua.com>, <guccioutletstoresonline.com>, <guccisneakers.com>, <guccisunglassesoutlet.com> and <gucciwalletoutlet.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 31, 2015