WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Martin Lee
Case No. D2017-1891
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Martin Lee of Parsippany, New Jersey, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <goldengooseoutlet.net> 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 September 28, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was October 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2017.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 8, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is an Italian company, founded in 2000, selling high quality shoes, apparel and accessories at “www.goldengoosedeluxebrand.com” and through more than 690 retail stores worldwide, including (in the United States) Barneys New York in New York City, H. Lorenzo in Los Angeles, and lkram in Chicago, where the Complainant’s products are sold alongside other well-known high-end branded goods.
The Complainant owns various trademarks for GOLDEN GOOSE DELUXE BRAND, GGDB, and GOLDEN GOOSE, including the following international registrations, both designating inter alia the United States, where the Respondent is located according to the verification response by the Registrar: GOLDEN GOOSE DELUXE BRAND, registered December 12, 2005, registration number 881244, classes 3, 14, 18, 25 (the words DELUXE BRAND being disclaimed), and GOLDEN GOOSE DELUXE BRAND, registered September 17, 2012, registration number 1141624, class 18 (the “GOLDEN GOOSE Marks”).
The disputed domain name <goldengooseoutlet.com> was registered on August 31, 2017. It is used in connection with a website which contains product offers for Golden Goose branded footwear as well as product offers related to third parties’ products.
5. Parties’ Contentions
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant contends that each of the three conditions is given in the present case.
(i) The GOLDEN GOOSE Marks are supposed to be well-known worldwide and the disputed domain name is confusingly similar to such marks. The generic term “outlet” does not avoid confusing similarly between the trademark and the disputed domain name as it is, according to the Complainant, designed to confuse users into believing that the products offered on the Respondent’s website are genuine whereas they are purported to be counterfeits.
(ii) The Respondent allegedly has no rights or legitimate interests in respect of the disputed domain name as it is neither a licensee, nor a distributor or authorized agent of the Complainant, and as 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, the Respondent is supposed to be using it for selling counterfeit goods.
(iii) The Complainant alleges that the disputed domain name was registered and is being used in bad faith as the Respondent offers counterfeit goods under the GOLDEN GOOSE Marks and is thus misleading customers as to the source of the products. Moreover, incomplete or inaccurate contact information has supposedly been given, indicating the Respondent’s bad faith. The Complainant further states that it has been awarded the transfer of the domain names <goldengoosescarpe.com>, <goldengoosescarpesale.com>, <scarpegoldengoose.com>, <scarpegoldengooseonline.com> (“scarpe” being Italian for shoes), <goldengoosesneakers.com>, <goldengooseshoe.com>, <sneakersgoldengoose.com>, <goldengoose-outlet.com>, and <goldenoutlet2017.com> in previous cases under the UDRP, and quotes from the corresponding decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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 the GOLDEN GOOSE Marks as it contains their two distinctive elements “golden” and “goose” and the generic addition “outlet”, which merely advertises reduced prices.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
The Respondent is using the disputed domain name in connection with a website offering products similar to the Complainant’s products and using the Complainant’s branding. There is no persuasive evidence on the record of the case file supporting that such goods are counterfeit as repeatedly stated by the Complainant. But even if such goods were genuine, the use of the disputed domain name would not be bona fide under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements with regard to the actual offering of goods, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). According to the evidence on the record of the case file, however, the website at the disputed domain name does not disclose the registrant’s relationship with the trademark holder and also displays headers for third parties’ products (Candice Cooper, Giuseppe Zanotti). Therefore, the use of the disputed domain name does not meet the Oki Data criteria, and cannot convey any rights or legitimate interests on the Respondent’s use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the GOLDEN GOOSE Marks as the Respondent has used the disputed domain name in connection with a website featuring the Complainant’s brands.
As to bad faith use, by fully incorporating the GOLDEN GOOSE Marks into the disputed domain name and by using such domain name in connection with a website advertising the Complainant’s brand as well as third parties’ products, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements 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 <goldengooseoutlet.net> be transferred to the Complainant.
Date: November 13, 2017