WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Whoisguard Inc. / wei zhang
Case No. D2017-1654
1. The Parties
The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Whoisguard Inc. of Panama, Panama / wei zhang of Hua, China.
2. The Domain Name and Registrar
The disputed domain name <goldengooseoutlets.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 1, 2017.
The Center verified that the Complaint together with the amended 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 September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Center received an email communication from the Respondent on September 8, 2017. The Respondent did not submit a formal Response.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 5, 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 the business of apparel and accessories, marketing its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB>. It is the owner, amongst several others, of the following trademark registrations:
- Italian Trademark Registration No. 0000983654 for the word mark GOLDEN GOOSE DELUXE BRAND filed on September 8, 2005 and registered on November 11, 2005 in classes 3, 14, 18 and 25, and
- International Trademark Registration No. 881244 for the word mark GOLDEN GOOSE DELUXE BRAND registered on December 12, 2005 in classes 3, 14, 18 and 25.
The disputed domain name <goldengooseoutlets.com> was registered on June 21, 2017 and was used in connection with a website operating as an online store depicting what appear to be counterfeit products. Currently it resolves to an active webpage that displays the contents of one of the Complainant’s competitors’ webpage.
5. Parties’ Contentions
The Complainant was founded in 2000 and asserts to have immediately stood out for the high quality of its products which became well-known for the urban, vintage feel of its designs, together with a combination of relaxed yet refined image and Italian sartorial tradition under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB (the acronym for GOLDEN GOOSE DELUXE BRAND).
At present, the Complainant alleges to operate a vast sales network including more than 690 of the most prestigious retail stores in the world amongst which Biffi Boutique in Milan, L´Eclaireur Marais in Paris, Browns Focus and Harvey Nichols in London, Barneys in New York City and Lane Crawford in Hong Kong, China. In addition to its main website “www.goldengoosedeluxebrand.com”, the Complainant’s products are also available at flagship and corner stores in Milan, Seoul, Paris, Tokyo, Beirut and Amsterdam.
The Complainant further asserts that its trademarks are well-known worldwide given the marketing, sales, distribution channels and client base as well as by the endorsement of its products by celebrities such as Jude Law, Keira Knightley and Sarah Jessica Parker as well as by several international magazines such as Vogue, Elle. Marieclaire, L´Officiel, Harper Bazzar’s, Cosmopolitan, Vanity Fair, Esquire and GQ.
The Complainant submits that the disputed domain name is confusingly similar to its trademark. The suffix “outlets” in the disputed domain name, under the Complainant’s view, does not disassociate it from the Complainant or the Complainant’s trademark in any sufficient manner since it could be associated with a genuine website offering original products – such an impression being exacerbated by the reproduction of the Complainant’s trademark as well as texts and images from the Complainant’s original website.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent is not a licensee, distributor or authorized agent of the Complainant and is not known by the disputed domain name;
ii. the Respondent used the disputed domain name to sell counterfeit goods what cannot be considered a bona fide offering of goods or services, or fair or noncommercial use of the disputed domain name;
iii. the website that resolved from the disputed domain name shows undisputed knowledge of the Complainant’s trademark and products.
The registration and use of the disputed domain name in bad faith, according to the Complainant, arises from the Respondent’s use of the disputed domain name who intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and products.
On September 8, 2017 an email sent by the Respondent in reply to the Center’s notification of Complaint merely read: “what do you mean?”. In spite of further messages from the Center no other communication was received from the Respondent.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the GOLDEN GOOSE DELUXE BRAND trademark.
The disputed domain name includes the relevant part of the Complainant’s trademark. The addition of the “outlets” suffix does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
In that sense, the Complainant indeed states that the Respondent is not a licensee, distributor or authorized agent of the Complainant.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name in connection with an online store in which the Complainant’s trademarks as well as texts and images from the Complainant’s original website and products were reproduced, offering for sale what appear to be counterfeit goods cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which operated as an online store in which the Complainant’s trademarks as well as texts and images from the Complainant’s original website and products were reproduced, offering for sale what appear to be counterfeit goods.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Also, the present use of the disputed domain name in connection with an active webpage that displays the contents of one of the Complainant’s competitor’s webpage cannot be understood under this Panel’s view and in view of the facts of this case as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Other factors corroborate a finding of bad faith such as the use of privacy protection service; incorrect information in the WhoIs records (non-existing address relating to the Respondent after the privacy shield was removed), non-active email addresses and the absence of a formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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, <goldengooseoutlets.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: October 18, 2017