WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Whoisguard Inc. / Wei Zhang
Case No. D2017-2444
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 Henan, China.
2. The Domain Name and Registrar
The disputed domain name <goldengooseoutlete.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 December 12, 2017. On December 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 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 December 15, 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 December 15, 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 December 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on January 15, 2018. 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 markets its apparel and accessories under the GOLDEN GOOSE DELUXE BRAND trademark, for which it has obtained a number of registrations, including International Trademark No. 881244, registered on December 12, 2005. The Complainant markets its goods around the world, with flagship and corner stores in multiple locations in Europe, Asia and the Middle East. Because of its marketing, sales, distribution channels and impressive client base (including celebrities), the GOLDEN GOOSE DELUXE BRAND trademark is well-known around the world.
The Respondent registered the disputed domain name on November 3, 2017. It has used the disputed domain name to develop a website selling counterfeit goods bearing the Complainant’s marks. The Respondent has developed its website to imitate the official website of the Complainant, including by copying images taken from the official website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
All three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark GOLDEN GOOSE DELUXE BRAND. The mark is well known around the world and is subject to trademark registrations issued well before the Respondent registered the disputed domain name. The disputed domain name is confusingly similar to this mark. The dominant portion of the Complainant’s mark – “golden goose” appears in the disputed domain name. See La Quinta Worldwide, L.L.C. v. PrivacyProtect.org / Pantages, Inc., WIPO Case No. D2011-1530 (the disputed domain name <quintainns.com> was found to be confusingly similar to the complainant’s LA QUINTA trademarks). The word “outlete” (presumably a variation of the word “outlet”) (along with the generic Top-Level Domain “.com”) does nothing to meaningfully distinguish the disputed domain name from the Complainant’s mark for purposes of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not discharge its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(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.
In this case, the purported offering for sale of unauthorized products cuts against a finding that the Respondent is engaged in a bona fide offering of goods or services. Had the Respondent submitted a response to the Complaint, it might have submitted evidence that the products offered at the disputed domain name were genuine, and advanced an argument casting it as a “reseller” or “distributor”. Absent any such evidence, however, the Panel credits the Complainant’s assertions that the products on the Respondent’s website are counterfeit. In any event, it appears that the website does not accurately and prominently disclose the registrant’s relationship with the trademark holder. Therefore, the relevant criteria for determining whether the Respondent may have rights or legitimate interests as a “reseller” or “distributor” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) have not been met in this case.
Further, it does not appear that the Respondent is commonly known by the disputed domain name. Nor does it appear that use of the disputed domain name is noncommercial or otherwise a fair use – the website to which the disputed domain name resolves offers to sell counterfeit products.
The Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name and accordingly has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location”.
The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to sell counterfeit products and misrepresent itself as the Complainant using a disputed domain name that incorporates the Complainant’s mark is a clear example of bad faith registration and use under 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 <goldengooseoutlete.com> be transferred to the Complainant.
Evan D. Brown
Date: January 17, 2018