WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Martin Lee
Case No. D2017-2082
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 Names and Registrar
The disputed domain names <ggdbshoes.com> and <scarpeggdb.net> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on December 12, 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 Italian company. It was founded in 2000 and sells high quality shoes, apparel and accessories. The Complainant sells its goods through a network of more than 690 third party retail stores worldwide. Additionally, the Complainant has opened its own stores in Milan, Seoul, Paris, Tokyo, Beirut and Amsterdam and sells its goods online, through its website at "www.goldengosedeluxebrand.com".
The Complainant's goods have been endorsed by a number of celebrities and have featured in several international publications such as Vogue, Grazia, Vanity Fair and Esquire. The Complainant uses a number of social networks to advertise its goods, among them Twitter, Facebook and YouTube.
The Complainant is the owner of a number of trade marks for GOLDEN GOOSE DELUXE BRAND and GGDB, an acronym of GOLDEN GOOSE DELUXE BRAND. These include the following:
1) International trade mark no. 881244 for GOLDEN GOOSE DELUXE BRAND (word mark), registered on December 12, 2005, in classes 3, 14, 18 and 25;
2) Italian trade mark no. 0000983654 for GOLDEN GOOSE DELUX BRAND (word mark), registered on November 11, 2005, in classes 3, 14, 18 and 25;
3) International trade mark no. 1242357 for GOLDEN GOOSE DELUXE BRAND (word mark), registered on July 11, 2014, in classes 9, 18, 25 and 35.
4) International trade mark no. 1242358 for GGDB (word mark), registered on July 11, 2014, in classes 18 and 25;
5) Italian trade mark no. 0001608971 for GGDB (word mark), registered on October 7, 2014, in classes 18, 25, and 35;
The Complainant's GGDB trade marks are used in connection with the goods and services for which they are registered, in particular shoes and clothing, as well as accessories, such as bags and jewellery.
The disputed domain names <ggdbshoes.com> and <scarpeggdb.net> were registered on October 8, 2016 and July 5, 2017, respectively. They point to websites which prominently display the Complainant's trade marks: the screen prints provided by the Complainant show web pages which are prominently headed GOLDEN GOOSE DELUXE BRAND VENEZIA. The pages also feature copyright images from the Complainant's website as well as offering for sale a range of merchandise bearing the Complainant's trade marks.
5. Parties' Contentions
The Complainant asserts that the disputed domain names are confusingly similar to its GGDB trade marks. It says that the disputed domain names comprise the Complainant's GGDB trade marks in full, coupled with the descriptive words "shoes" and "scarpe" (that is "shoes", in Italian). Adding content to the trade marks which are descriptive of the type of goods the Complainant sells does not prevent the disputed domain names from being confusingly similar to the Complainant's trade marks.
The Complainant states that the websites pointed to by the disputed domain names provide no clear indication of their origin, nor do they contain any disclaimer as to the lack of relationship between the Respondent and the Complainant. The Complainant further states that the websites resolved to by the disputed domain names do not contain any contact information for the Respondent. For these reasons and because the websites pointed to by the disputed domain names display the Complainant's trade marks as well as copyright images taken from the Complainant's Website, they convey the misleading impression to Internet users that they are websites connected to, or authorised by, the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It says that the Respondent is not a licensee, distributor or authorised agent of the Complainant nor is it known by the disputed domain names. There are no demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services. Rather, the Complainant says, the Respondent uses the websites resolved to by the disputed domain names in order to offer for sale counterfeit merchandise purporting to be goods of the Complainant. The Complainant states that no rights or legitimate interests can exist in the use of the disputed domain names for the sale of such goods, and this use is not a bona fide, fair use or non-commercial use of the disputed domain names.
The Complainant asserts that the disputed domain names were registered and are being used in bad faith. It repeats its claim that the Respondent offers counterfeit goods for sale using the Complainant's GOLDEN GOOSE DELUXE BRAND mark through the websites resolved to by the disputed domain names. Such conduct, says the Complainant, is misleading Internet users as to the source of the products offered for sale, because the Respondent's websites display the Complainant's trade marks without any authorization. Further, the Complainant alleges that incomplete and inaccurate contact information on the Respondent's websites is also indicative of bad faith on the part of the Respondent.
Lastly, the Complainant draws the attention of the Panel to previous panel decisions in which it has been a complainant. It says that the cases were strongly similar to the Complaint and that each of them was resolved in the Complainant's favour.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Dealing, first, with the Respondent's failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of its GGDB trade marks, as set out above, and thereby established that it has rights in those trade marks.
In considering whether the disputed domain names are confusingly similar to the Complainant's trade marks, it is established that the applicable generic Top Level Domain ("gTLD") suffixes ".com" and ".net" should be disregarded, as they are technical requirements of registration.
The disputed domain names incorporate in their entirety the Complainant's GGDB trade marks and differ from them only through the addition to them of the descriptive English word "shoes" and its Italian equivalent, namely "scarpe". The Complainant's GGDB trade marks comprise the distinctive and dominant features of both of the disputed domain names.
Where the dominant feature of a domain name is a recognised, relevant mark, that domain name will be considered confusingly similar, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained in the WIPO Overview 3.0. This explains that the consensus view of panelists is that "[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element".
Although the Complainant has alleged that the goods offered for sale by the Respondent are counterfeit, it has not provided any direct evidence to support this assertion and the Panel does not make any finding to this effect. As explained at section 2.13.2 of the WIPO Overview 3.0: "Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default".
Nonetheless, the Panel finds, having regard to what is known about the Respondent, that none of the circumstances set out at paragraph 4(c) of the Policy apply to the Respondent. In particular, the liberal use of the Complainant's trade marks on the Respondent's websites is made without the permission of the Complainant and is not consistent with a bona fide offering of goods and services, whether or not the goods offered for sale are counterfeit. The Panel further notes the Complainant's contention that the websites at the disputed domain names provide no clear indication of their origin, nor do they contain any disclaimer as to the lack of relationship between the Respondent and the Complainant. See, for example, the decision of the panel in Richemont International SA v. brandon gill, WIPO Case No.. D2013-0037: "Complainant contends that Respondent is using the Domain Name to publish websites that offer products for sale that compete directly with Complainant and/or which may be counterfeit copies of Complainant's own products. In the absence of any denial, the Panel infers that through these activities Respondent is using a deliberately similar version of Complainant's very well-known IWC Trademark and Complainant's significant goodwill and reputation to attract Internet traffic. The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible".
Similarly in these proceedings, the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names and the burden shifts to the Respondent to show that he does, in fact, have such interests.
The Respondent has failed to respond to the Complaint and has thereby declined to take the opportunity available to him to provide evidence which might suggest that he has a right or legitimate interest in the disputed domain names, whether on the specific grounds set out at paragraph 4(c) of the Policy or on any other basis.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interest with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has established that its trade marks are distinctive and well-known within the fashion sector. The disputed domain names contain the Complainant's GGDB trade marks in full and add words which are descriptive of the products sold by the Complainant. These features point clearly to an awareness by the Respondent of the Complainant and its GGDB trade marks as at the date of registration of the disputed domain names.
Moreover, the websites to which the disputed domain names point contain the Complainant's GGDB and GOLDEN GOOSE DELUXE BRAND trade marks together with copyrighted images taken from the Complainant's websites and offer for sale goods which it claims to be those of the Complainant. The overall impression created by the websites suggest that the disputed domain names were registered by the Respondent in order that it could establish an online business which deceived Internet users into believing that its websites were operated by, or with the authority of, the Complainant. Whilst the Panel is not prepared to find, on the basis of the evidence submitted, that the goods offered for sale by the Respondent are counterfeit, the Respondent is plainly using the disputed domain names by the Respondent to point to websites which masquerade as being those of the Complainant.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain names falls precisely within these circumstances in that they points to websites which purport to be operated by the Complainant and to offer the Complainant's products for sale. The belief of Internet users that the Respondent's websites are operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain names and the Complainant's GGDB trade marks. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain names. The addition to the Complainant's mark of the words "shoes" and "scarpe", which are descriptive of some of the goods sold by the Complainant, accentuates the false impression of a connection with the Complainant's business and increases the likelihood of confusion to Internet users. Finally, the Respondent has not made any attempt to justify his conduct or to rebut the Complainant's assertions. This clearly points to bad faith registration and use; see, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The Panel accordingly finds that the disputed domain names were both registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) 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 names, <ggdbshoes.com> and <scarpeggdb.net> be transferred to the Complainant.
Date: December 26, 2017