WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Privacy Protect, LLC (PRIVACYPROTECT.ORG) / Jason Cheyney
Case No. D2018-0080
1. The Parties
The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Privacy Protect, LLC (PRIVACYPROTECT.ORG) of Burlington, Massachusetts, United States of America / Jason Cheyney of Macon, Georgia, United States of America.
2. The Domain Names and Registrar
The disputed domain names <golden-goosesaldi.com> and <goldengoosesaldi.com> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2018 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 January 22, 2018.
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 January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 23, 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 is the owner of, inter alia, an international trade mark registration for GOLDEN GOOSE DELUXE BRAND registered in 2005 and an Italian trade mark registration for GOLDEN GOOSE registered in 2015. Its main web site is at “www.goldengoosedeluxebrand.com”.
The Domain Names registered in 2017 have been used for a site displaying photographs from the Complainant’s official web site and offering goods which the Complainant says are counterfeit.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant founded in 2000 is the owner of, inter alia, an international trade mark registration for GOLDEN GOOSE DELUXE BRAND registered in 2005 and an Italian trade mark registration for GOLDEN GOOSE registered in 2015. Its goods were featured on the cover of the SS 2014 catalogue of Barney’s New York and enjoy a high profile in social media. Its main web site is at “www.goldengoosedeluxebrand.com”.
The Domain Names are confusingly similar to the trade mark GOLDEN GOOSE DELUXE BRAND and GOLDEN GOOSE. Mere addition of the generic terms ‘saldi’ (Italian for sales) does not avoid confusing similarity between the Complainant’s trade mark and the Domain Names.
<goldengoosesaldi.com> redirects to <golden-goosesaldi.com> which sells counterfeit Golden Goose products and reproduces without permission images taken from the official Golden Goose web site.
The Respondent intentionally attempts to attract for commercial gain misleading Internet users into believing that the Respondent’s web site is the Golden Goose official web site.
The Respondent lacks any rights or legitimate interests in the Domain Names, is not authorised by the Complainant and is not known by the Domain Names. No rights or legitimate interests can exist for the sale of counterfeit goods. This is not bona fide use, fair use or noncommercial use.
The Domain Names were registered and are being used in bad faith. The Respondent offers counterfeit goods under the Complainant’s trade mark and this is misleading as to the source of the products. Incomplete contact information has been given which also indicates bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Identical or Confusingly Similar
The Domain Names combine the Complainant’s GOLDEN GOOSE trade mark, the generic word “saldi” (Italian for “sale”) and the generic Top-Level Domain (“gTLD”) “com”. <golden-goosesaldi.com> also contains a hyphen.
The addition of common commercial generic terms such as “saldi” meaning “sale” does not serve to distinguish the Domain Names from the Complainant’s GOLDEN GOOSE trade mark which is still identifiable within the Domain Names. Nor does the addition of a hyphen as a punctuation mark.
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s GOLDEN GOOSE mark.
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Names. The Complainant has not authorised the Respondent to use its marks. The use of the Domain Names is commercial and so cannot be legitimate noncommercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the name to divert Internet users to a web site competing with the complainant under the complainant’s mark. Here the Respondent has, in fact, used the Complainant’s name and official photographs from the Complainant’s web site attached to the Domain Names to appear to be an a site authorised by the Complainant in an act of passing off which cannot be bona fide use.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way and has not denied the allegation it is selling counterfeit goods. As such, the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent's use of the site attached to the Domain Names is commercial and it is using its site to compete in a confusing manner. The usage of the Complainant’s official photographs on the web site attached to the Domain Name is a misrepresentation and because of this use with the Domain Names confusingly similar to the Complainant’s GOLDEN GOOSE mark, the Respondent’s site is highly likely to be confused as a site belonging to or connected with the Complainant. The use of the Complainant’s official photographs on the web site attached to the Domain Names indicates the Respondent was aware of the Complainant’s rights at the time of registration and throughout use of the Domain Names the subject of this Complaint.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of that web site under paragraph 4(b)(iv) of the Policy. This is also clearly designed to be competitive and disruptive and constitutes bad faith under paragraph 4(b)(iii) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb 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, <golden-goosesaldi.com> and <goldengoosesaldi.com> be transferred to the Complainant.
Date: February 28, 2018