WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Zhong Tian
Case No. D2018-0086
1. The Parties
Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Associati, Italy (hereinafter "Complainant").
Respondent is Zhong Tian of Fuzhou, Fujian, China (hereinafter "Respondent").
2. The Domain Name and Registrar
The disputed domain name <goldengoosesp.com> 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 January 16, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 16, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on February 20, 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
Complainant, founded in 2000, designs and offers for sale apparel and accessories under the GOLDEN GOOSE DELUXE BRAND mark. The international trademark GOLDEN GOOSE DELUXE BRAND (word mark) No. 1242357 was first registered on July 11, 2014 (Complaint, Annex 4c), and the government of Italy first issued the GOLDEN GOOSE trademark (word mark) No. 0001657474 on November 24, 2015 (Complaint, Annex 4d).
Complainant offers its wares in the high fashion market, and is featured in industry and in publications devoted to fashion alongside well-known marks in the field, such as Lanvin, Givenchy, Fendi and Ferragamo (Complaint, Annex 5). Complainant's products are offered in more than 690 prominent retail fashion outlets around the world. Complainant's domain name, <goldengoosedeluxebrand.com> resolves to a web site at which it offers for sale its trademarked goods (Complaint, Annex 6).
Respondent registered the disputed domain name on March 8, 2017 (Complaint, Annex 1). Respondent is using the disputed domain name to resolve to a web site at which counterfeit goods designed to look like those of Complainant are offered for sale using copyrighted images taken from Complainant's web site (Complaint, Annex 9).
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to its trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith, in that Respondent is using the disputed domain name to resolve to a web site at which Respondent is using Complainant's copyrighted images from its official web site to make it appear to a user that the web site is affiliated with Complainant and that Respondent is offering for sale at the web site counterfeited goods.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent has taken the essential distinctive elements "Golden Goose" from Complainant's registered trademark GOLDEN GOOSE DELUXE BRAND and appended to them the letters 's' and 'p' to constitute the disputed domain name. The addition of the two letters contribute nothing to the meaning or understanding of the disputed domain name, and the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a web site which uses copyrighted images and designs taken from Complainant's retail web site at which Complainant offers its goods for sale online. On the web site to which the disputed domain name resolves, Respondent is offering for sale counterfeit goods designed so as to deceive the user into believing that the user is purchasing goods designed and manufactured by Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <goldengoosesp.com>, be transferred to the Complainant.
M. Scott Donahey
Date: February 22, 2018