WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Webster Francis
Case No. D2017-1197
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Webster Francis of Miami, Florida, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ggdbsaldi.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2017. On June 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 27, 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 in the business of apparel and accessories, and markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB (the initials of GOLDEN GOOSE DELUXE BRAND).
The Complainant is the owner of an International and Italian trade mark registrations for GOLDEN GOOSE DELUXE BRAND and GGDB.
The disputed domain name is being used by the Respondent for an online store that appears to be selling allegedly GGDB/Golden Goose Deluxe Brand products.
The disputed domain name was registered on August 27, 2016.
5. Parties’ Contentions
The Complainant was founded in the year 2000 and over the years developed a vast international reputation. 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 other well-known brands. The Complainant operates a vast sales network.
The disputed domain name <ggdbsaldi.com> is confusingly similar to the trade mark GGDB in which the Complainant has rights.
The use of the Italian word “saldi” which means “sale” together with the Complainant’s trademark GGDB in the disputed domain name does not affect the confusing similarity with the trademark as the term is descriptive.
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 as indicated in Annex 6 of the Complaint.
With respect to the rights and legitimate interest, the Complainant states:
- 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.
With respect to bad faith registration and use of the disputed domain name, the Complainant states:
- 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 trademarks are being offered for sale on the Respondent’s website.
- Incomplete or inaccurate contact information has been given by the Respondent in its disputed domain name registration, which indicates bad faith.
- Complainant was awarded with several cases bearing similar facts to the present case.
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 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 Complainant has shown it has registered trademark rights for GOLDEN GOOSE DELUXE BRAND and GGDB.
The disputed domain name comprises the Complainant’s trademark GGDB with the addition of the Italian word, “saldi” (“sale” in English).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered GGDB trademark. The addition of the generic term “saldi” in the disputed domain name does not serve whatsoever to remove the confusing similarity with the Complainant’s mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
The Panel also finds that the second element of paragraph 4(a) of the Policy has been satisfied.
The Panel visited the website at the disputed domain name and was able to verify that 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 since the design of the website imitates an online store of the Complainant.
Such activity 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 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 the second element of paragraph 4(a) of the Policy has been established by the Complainant.
C. 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 was clearly familiar with the Complainant’s trademarks and products. Its intention in registering the disputed domain name comprising a copy of the Complainant’s registered mark GGDB in combination with the Italian word “saldi” 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 also notes that the disputed domain name contains a website designed to look like a Complainant online store, where its trademark appears prominently together with Complainant’s products.
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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website 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 <ggdbsaldi.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: August 4, 2017