WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Phillipp Fischer
Case No. D2017-1010
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Phillipp Fischer of Hermersberg, Germany.
2. The Domain Name and Registrar
The disputed domain name <goldenoutlet2017.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2017. On May 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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.
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, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 26, 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, founded in 2000, is in the business of selling high quality goods such as clothes, shoes and accessories. The Complainant's products are sold online and through prestigious retail stores. They have been marketed through the Barneys New York catalogue in company with other well-known high-end trademarks and have been endorsed in international fashion magazines.
The Complainant owns a number of trademarks for GOLDEN GOOSE DELUXE BRAND and GGDB, of which the following are representative:
GOLDEN GOOSE DELUXE BRAND, international trademark, registered December 12, 2005, registration number 881244, classes 3, 14, 18, 25;
GOLDEN GOOSE DELUXE BRAND, international trademark, registered September 17, 2012, registration number 1141624, class 18;
GGDB, international trademark, registered July 11, 2014, registration number 1242358, classes 18, 25.
No background information is available about the Respondent except for the contact details provided to the Registrar in connection with the registration of the disputed domain name, which was created on December 12, 2016.
5. Parties' Contentions
The Complainant has made a number of contentions that include the following.
The Complainant contends that it has rights in the trademarks listed in section 4 above and has appended copies of online documentation to that effect.
The Complainant says the disputed domain name is confusingly similar to the Complainant's trademark and that the terms "outlet" and "2017" are not distinguishing. The website to which the disputed domain name resolves gives the impression of being the Complainant's website without disclaimer but, the Complainant alleges, reproduces the Complainant's copyright material and sells counterfeit products.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not a licensee or otherwise associated with the Complainant, is not known by the disputed domain name and is not using it noncommercially. The Respondent's use of the disputed domain name is not bona fide because of its use for the sale of allegedly counterfeit products.
The Complainant says the disputed domain name was registered and is being used in bad faith. The corresponding website, by trading on the Complainant's trademark, is misleading customers as to the source of the products offered. The contact information provided by the Respondent is inaccurate.
The Complainant says that in previous cases under the Policy it has been awarded the transfer of the domain names <goldengoosescarpe.com> ("scarpe" being Italian for shoes), <goldengoosescarpesale.com>, <scarpegoldengoose.com>, <scarpegoldengooseonline.com>, <goldengoosesneakers.com>, <ggdbsneakers.com>, <goldengooseshoe.com> and <sneakersgoldengoose.com>, and has submitted some quotations from previous decisions.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel accepts on the evidence that the Complainant has rights in the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. The latter trademark need not be considered further.
The interpretation of paragraph 4(a)(i) of the Policy commonly adopted by panels, in the words of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7, involves "a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name".
It might be questioned whether the word "golden" appearing in the disputed domain name, in conjunction with "outlet2017.com", is sufficiently evocative of the dominant phrase of the Complainant's trademark, namely "Golden Goose", to cause confusion in the minds of Internet users. In different circumstances, an argument of innocent usage without confusion on the part of a respondent might well have been persuasive. This Respondent has not so argued, however, or replied at all. Nevertheless the decision is not made by default.
The question is not merely whether Internet users who have reason to seek the Complainant's online presence, and who are confronted with the disputed domain name in, for example, a search result or link, may be confused into believing initially that it belongs to the Complainant. The opposite question must also be asked, i.e., whether an Internet user arriving at the disputed domain name by whatever means, or perusing the website to which it resolves, with its prominent heading GOLDEN GOOSE DELUXE BRAND (as discussed below), may be confused into believing that the trademark GOLDEN GOOSE DELUXE BRAND and the domain name <goldenoutlet2017.com> belong legitimately together and that the disputed domain name is that of the Complainant.
As further reported in WIPO Overview 3.0, section 1.7, "... panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant".
The test under paragraph 4(a)(i) of the Policy remains a comparison of the disputed domain name with the Complainant's trademark. Taking a holistic view of the disputed domain name in the light of the clear purpose of the website to which it resolves, to be expanded upon below, the Panel finds it inescapable that the Respondent has set out to target specifically the Complainant and has acquired the disputed domain name "... precisely because it believed that the domain name was confusingly similar to a mark held by the complainant". The descriptive word "outlet" and date "2017" are found not to detract from but to exacerbate confusing similarity. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has stated that the Respondent is not a licensee or otherwise associated with the Complainant, is not known by the disputed domain name and is not using it noncommercially.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Respondent has not responded in any way and has not asserted rights or legitimate interests in the disputed domain name.
The website pages to which the disputed domain name has resolved, exhibited in screen captures produced in evidence, display the Complainant's trademark GOLDEN GOOSE DELUXE BRAND and are heavily populated with goods branded "Golden Goose", further details of which are provided in section 6C below, dealing with registration and use in bad faith.
The Respondent's offering of goods (especially if counterfeit) or services, by trading on the Complainant's trademark, cannot be considered a bona fide use of the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name or that its use has been noncommercial or fair. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".
The website to which the disputed domain name has resolved, when compared with screen captures of the Complainant's authentic website "www.goldengoosedeluxebrand.com" produced in evidence, shows considerable similarities. Both are headed in similar font and style with the Complainant's trademark GOLDEN GOOSE DELUXE BRAND beneath the Complainant's distinctive logo and above the word "Venezia". Both display exactly the same three evidently professional fashion shots of pairs of models, in the same layout across the page. The Respondent's website displays numerous goods, mainly shoes, with photographs, style names and prices. Most of the goods on the Respondent's website are specifically labelled "Golden Goose", such as "Golden Goose Fancy Scarpe" and "Golden Goose Sneakers Starter". A number of category headings, presumably linking to other pages, are listed in sidebars, for example, "Golden Goose Latest Style", "Golden Goose Hot Sale" and similar.
On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used for commercial purposes with intent to trade in shoes and fashions and with intent to do so by confusion between the Complainant's trademark and the disputed domain name as to the endorsement of the goods displayed on the Respondent's website. In the terms of paragraph 4(b)(iv) of the Policy, the Panel finds the disputed domain name to have been used in bad faith. The Panel further finds the disputed domain name, on the balance of probabilities, to have been registered for the bad faith purpose for which it has been used. Accordingly registration and use of the disputed domain name by the Respondent in bad faith are found in the terms of paragraph 4(a)(iii) of the Policy.
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 <goldenoutlet2017.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: July 4, 2017