WIPO Arbitration and Mediatin Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.p.A. v. Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si

Case No. D2017-0067

1. The Parties

The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.

The Respondent is Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <goldengoosesneakers.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2017, 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 January 18, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. 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 English and Chinese, and the proceedings commenced on January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 21, 2017. 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 an apparel and accessories business founded in 2000. The Complainant markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. The Complainant operates a vast sales network, including more than 690 retail stores around the world, such as 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, and Lane Crawford in Hong Kong, China, among others. The Complainant also has a strong presence in online stores and social networks, such as Facebook, Twitter and YouTube. The Complainant advertises and offers for sale its Golden Goose products on its main website “www.goldengoosedeluxebrand.com”.

The Complainant’s Golden Goose products were featured on the cover of the Barneys New York spring‑summer 2014 catalog. They have also been endorsed by several international magazines, including Vogue, Vanity Fair, Esquire, and GQ. The Complainant’s sneakers were featured in musician Noel Gallagher’s “Everybody’s on the Run” music video in 2012. Additionally, the Complainant’s products have been worn by well-known celebrities, such as Jude Law, Keira Knightley and Sarah Jessica Parker.

The Complainant owns several registrations for its GOLDEN GOOSE DELUXE BRAND trademark, including, among others, Italy Registration Nos. 0001608972 (registered October 7, 2014) and 0000983654 (registered November 11, 2005) and International Registration Nos. 881244 (registered December 12, 2005) and 1141624 (registered September 17, 2012), which designate China, European Union, Japan, Republic of Korea, Switzerland, United States of America, and other jurisdictions.

The Respondent registered the disputed domain name on April 14, 2016. At the time the Complaint was filed, the disputed domain name resolved to an online retail website prominently featuring the GOLDEN GOOSE DELUXE BRAND and GGDB trademarks as well as the Complainant’s logos and promoting and offering for sale footwear products. Currently, the disputed domain name redirects to a similar online retail website at “www.goldengoosedb.com”, which also prominently displays the Complainant’s trademarks and promotes and offers for sale footwear products. Both websites reproduce (or previously reproduced) images taken from the Complainant’s advertising campaign and website. Both websites are written in English. The Complainant states, and the Respondent does not deny, that the goods offered for sale on the websites are counterfeits.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its GOLDEN GOOSE DELUXE BRAND trademark. The use of the descriptive term “sneakers” with “golden goose”, which is the heart of the Complainant’s trademark, does not affect confusing similarity because the term refers to the Complainant’s products and activity. Additionally, the website associated with the disputed domain name gives consumers the impression that it is a website of the Complainant because the website contains no company name or clear contact information, the website displays the GOLDEN GOOSE DELUXE BRAND and GGDB trademarks, and reproduces, without permission, images taken from the Complainant’s own advertising campaign and website.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, distributor or authorized agent of the Complainant and 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 uses the disputed domain name to sell counterfeit goods. No rights or legitimate interests can exist for the sale of counterfeit goods and such use is not bona fide use, fair use, or noncommercial use of the disputed domain name. Furthermore, knowledge of the Complainant’s trademark is demonstrated by the Respondent’s website showing images of the Complainant’s products bearing the Complainant’s trademarks.

The disputed domain name was registered and is being used in bad faith. The Respondent offers counterfeit goods under the Complainant’s GOLDEN GOOSE DELUXE BRAND trademark without authorization, which misleads customers with respect to the source of the products. That the Respondent’s provides incomplete or inaccurate contact information further indicates the Respondent’s bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name itself comprises English words and also resolves to a website that contains English words. Finally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. In light of these circumstances, it is appropriate for the Panel to exercise its discretion and allow the proceeding to be conducted in English.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is 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 name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

The Complainant is the owner of the GOLDEN GOOSE DELUXE BRAND trademark and owns several trademark registrations for the mark. The Panel accepts that the Complainant’s mark is well known.

The disputed domain name comprises the phrase “golden goose”, the term “sneakers”, and the generic Top‑Level Domain (“gTLD”) “.com”. The key identifying element of the Complainant’s trademark is GOLDEN GOOSE because the phrase “deluxe brand” is descriptive. Although the disputed domain name does not reproduce the Complainant’s trademark in its entirety, it reproduces the key identifying element of the Complainant’s trademark and is therefore confusingly similar to the Complainant’s trademark. The term “sneakers” is descriptive of the Complainant’s products as well as the products sold on the Respondent’s website. The addition of this dictionary word does not impact the overall commercial impression of the disputed domain name and is insufficient to prevent Internet user confusion. See Compagnie Générale des Éstablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414. Additionally, the “.com” gTLD extension, being a technical part of the domain name, does not affect the assessment of whether the disputed domain name is confusingly similar to the Complainant’s trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name.

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

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

(ii) The respondent 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.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant states, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the GOLDEN GOOSE DELUXE BRAND trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to publish a website offering services and goods that compete directly with the Complainant’s services and goods and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Moreover, the Complainant contends, and the Respondent does not deny, that the goods sold via the Respondent’s website are counterfeits. There can be no legitimate interest in the sale of counterfeit goods. See, e.g., Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 such website or location or of a product or service on such website or location.

The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Respondent was undoubtedly aware of the Complainant and its trademarks at the time of registration of the disputed domain name. The Complainant’s trademark registrations, including in China where the Respondent is located, predate the Respondent’s registration of the disputed domain name by more than a decade. The Respondent must have had the Complainant’s well-known trademarks in mind when the Respondent registered the disputed domain name. This is evidenced by the Respondent’s use of the disputed domain name to sell counterfeits of the Complainant’s goods, the Respondent’s unauthorized reproduction of images from the Complainant’s advertising campaign and websites on the Respondent’s website, and the prominent use of the Complainant’s trademarks and logos. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Panel finds that the Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith.

The Respondent uses the disputed domain name to direct Internet users to a website advertising and selling counterfeit goods. “The use of the disputed domain name for an online [retail] site on which the Respondent sells […] counterfeit products […] clearly indicates that Respondent’s primary intent was to redirect Internet users to [Respondent’s] website and thus capitalizing on the goodwill of Complainant’s trademark[s].” See Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419; see also Chrome Hearts LLC v. James Hart, WIPO Case No. DCC2011-0005 (“The fact that counterfeit goods are being sold through this medium indicates that the disputed domain name is being used in bad faith.”). These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 name <goldengoosesneakers.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: February 28, 2017