WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Bin Lin
Case No. D2018-0171
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy represented by Scarpellini Naj-Oleari & Associati, Italy.
The Respondent is Bin Lin of Porter, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ggdbitaliaoutlet.com>, <ggdbitaliasaldi.com>, <goldengooseitaliaonline.com>, <goldengooseitaliaoutlet.com> and <goldengoosescarpeitalia.com> (together the “Disputed Domain Names”) are registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2018. On January 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 30, 2018, 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 February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 7, 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 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 trademarks for GOLDEN GOOSE DELUXE BRAND and GGDB, an acronym of GOLDEN GOOSE DELUXE BRAND. These are referred to collectively in this decision as the “GGDB trademarks”. They include the following:
1. International Trademark for GOLDEN GOOSE DELUXE BRAND (word mark) No. 881244, registered on December 12, 2005, in classes 3, 14, 18 and 25;
2. International Trademark for GOLDEN GOOSE DELUXE BRAND (word mark) No. 1242357, registered on July 11, 2014, in classes 09, 18, 25 and 35;
3. Italian Trademark for GOLDEN GOOSE (word mark) No. 0001657474, registered on November 24, 2015, in classes 18, 25 and 35;
4. International Trademark for GGDB (word mark) No. 1242358, registered on July 11, 2014, in classes 18 and 25.
The Complainant’s GGDB trademarks 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 were all registered on September 29, 2017. They point to websites which prominently display the Complainant’s trademarks. 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 trademarks.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Names are confusingly similar to its GGDB trademarks, in which the Complainant has rights. Mere addition of the generic terms “italia”, “online”, “scarpe”, “outlet” and “saldi” in the Disputed Domain Names does not avoid confusing similarity between the trademarks and the Disputed Domain Names; the word “italia” is the name of the country in which the Complainant has its registered office, the word “online” is a generic term that, in computer technology and telecommunications, indicates a state of connectivity, specifically an Internet connection, the word “scarpe” is a generic term, it is the Italian translation of the word “shoes”, that refers to the goods offered for sale; “saldi”, is the Italian translation of the word “sale”, it is a generic term that refers to the period in which goods are sold at lower price, and the word “outlet” is a generic term that identify a physical or online store in which manufacturers sell their stock directly to the public.
The Complainant states that the websites linked 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 trademarks 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 authorized 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 noncommercial 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 GGDB trademarks 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 trademarks 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 UDRP decisions in which it has been a complainant. It says that the UDRP cases were strongly similar to the Complaint and that each of them was resolved in the Complainant’s favor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Disputed Domain Names that:
(i) the domain name is identical with 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the GGDB trademarks.
The Disputed Domain Names are each confusingly similar to the GGDB trademarks. They simply involve one of those trademarks combined with dictionary words such as “outlet” (see the Complainant’s submissions above for a full listing of all of the Italian dictionary words involved) and a geographic term (“italia”). Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in each of the Disputed Domain Names:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the GGDB Trademarks. The Complainant has prior rights in the GGDB trademarks which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant has established that its GGDB trademarks are distinctive and well-known within the fashion sector. The Disputed Domain Names contain the GGDB trademarks in full and add dictionary words. These features point clearly to an awareness by the Respondent of the Complainant and its GGDB trademarks as at the date of registration of the Disputed Domain Names. Moreover, the websites to which the Disputed Domain Names resolve contain the Complainant’s GGDB trademarks 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 to establish an online business which deceived Internet users into believing that its websites were operated by, or with the authority of, the Complainant. The Respondent is plainly using the Disputed Domain Names to point to websites which masquerade as being those of the Complainant. In these circumstances the Panel does not need to determine whether or not the goods offered for sale by the Respondent are counterfeit.
The Respondent’s actions are clearly directly within paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
In addition, the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Names.
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, <ggdbitaliaoutlet.com>, <ggdbitaliasaldi.com>, <goldengooseitaliaonline.com>, <goldengooseitaliaoutlet.com> and <goldengoosescarpeitalia.com> be transferred to the Complainant.
Nick J. Gardner
Date: March 12, 2018