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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Wei Zhang

Case No. D2018-0287

1. The Parties

Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Associati, Italy.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Wei Zhang of Hua, Henan, China.

2. The Domain Names and Registrar

The disputed domain names <ggdbonlineoutlet.com>, <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com> (the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 9, 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 Complainant on February 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 15, 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 Respondent of the Complaint, and the proceedings commenced on February 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on March 19, 2018.

The Center appointed John C. McElwaine as the sole panelist in this matter on March 27, 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, an Italian società per azioni founded in 2000, is a designer and provider of high-end apparel and accessories. Complainant owns registrations for the marks GOLDEN GOOSE, GOLDEN GOOSE DELUXE BRAND, GOLDEN GOOSE DELUX BRAND and GGDB (collectively, the “GOLDEN GOOSE Marks”) in numerous jurisdictions around the world, including but not limited to, registrations in the United States of America (“U.S.”), the European Union, Italy, Switzerland, China, Japan, Singapore, and the Russian Federation. Complainant’s rights in the GOLDEN GOOSE Marks date back to at least as early as December 12, 2005, the date on which Complainant first registered its International trademark GOLDEN GOOSE DELUXE BRAND.

Respondent, a Chinese individual, registered the <goldengooseonlineoutlet.com> and <ggdbonlineoutlet.com> disputed domain names on August 30, 2017 and the <goldengooseonlineoutlets.com> disputed domain name on November 29, 2017.

At the time of filing of the Complaint, Respondent was using the Disputed Domain Names to resolve to websites displaying Complainant’s GOLDEN GOOSE Marks in connection with online stores for GOLDEN GOOSE branded products, which may or may not have been counterfeit products.

Respondent is currently using the <goldengooseonlineoutlet.com> disputed domain name to resolve to a website that appears to copy the lifestyle blog of U.S. Olympic gold-medalist figure skater Tara Lipinski found at “www.essentiallytara.com”. Respondent appears to be currently using the <goldengooseonlineoutlets.com> disputed domain name to resolve to a website titled
“Harvey Nichols – Designer, Fashion, Beauty, Food & Wine” that appears to be an attempt to mirror the Harvey Nichols’ website located at “www.harveynichols.com”. Lastly, Respondent is currently using the <ggdbonlineoutlet.com> disputed domain name to resolve to a website displaying Complainant’s GOLDEN GOOSE Marks in connection with online store for GOLDEN GOOSE branded products, which may or may not be counterfeit products.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of the marks GOLDEN GOOSE, GOLDEN GOOSE DELUXE BRAND, and GGDB; that the marks are well-known throughout the world in connection with Complainant’s high-end apparel and accessories; and that the Disputed Domain Names are confusingly similar to Complainant’s GOLDEN GOOSE Marks. Complainant alleges that its GOLDEN GOOSE Marks have been extensively advertised, marketed and promoted worldwide. For example, GOLDEN GOOSE products are sold in some of the world’s most prestigious high-end retail stores, for example, Biffi Boutique in Milan, L’Eclaireur Marais in Paris, Browns Focus and Harvey Nichols in London, Barneys New York in New York City, H. Lorenzo in Los Angeles, Ikram in Chicago, and Lane Crawford in Hong Kong. Furthermore, Complainant’s Golden Goose products have been endorsed by serval internationally well-known magazines such as Vogue, Elle, Marieclaire, L’Officiel, Grazia, Harper’s Bazar, Cosmopolitan, Vanity Fair, Esquire, and GQ.

With respect to the first element of the Policy, Complainant contends that the addition of the terms “online,” “outlet,” and “outlets” in the Disputed Domain Names does not avoid a finding of confusing similarity with Complainant’s GOLDEN GOOSE Marks; rather, the inclusion of these terms enhances the confusing similarity because of the relatedness of the terms to Complainant’s products.

With respect to the second element of the Policy, Complainant contends that the Disputed Domain Names are being utilized to sell counterfeit Golden Goose Deluxe Brand products and reproduce, without any permission, images taken from the official Golden Goose’s website. Complainant further alleges that the content of the Disputed Domain Names gives consumers the impression that the websites hosted at the Disputed Domain Names are Complainant’s sites. In addition, Complainant states that Respondent does not have any legitimate right or interest in the Disputed Domain Names because Respondent is not a licensee, distributor or authorized agent of Complainant, Respondent is not known by the Disputed Domain Names, and Respondent’s use of the Disputed Domain Names is not a bona fide offering of goods or services in that the sale of counterfeit goods is not a bona fide offering of goods.

Lastly, Complainant contends that the Disputed Domain Names were registered and are being used in bad faith based on evidence of Respondent’s use of the Disputed Domain Names to allegedly sell counterfeit goods under the GOLDEN GOOSE Marks, which is misleading to consumers. Complaint further contends that Respondent provided incomplete or inaccurate WhoIs contact information, which also indicates bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to show that each disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of registrations for the GOLDEN GOOSE Marks. Accordingly, the Panel finds that Complainant has sufficiently established it has rights in the GOLDEN GOOSE Marks. Furthermore, the Panel finds that Complainant’s rights in the GOLDEN GOOSE Marks predate the registration date of the Disputed Domain Names.

It is well established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. In this case, the Disputed Domain Names are <ggdbonlineoutlet.com>, <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com>. The addition of “online outlet,” whether singular or plural, in the Disputed Domain Names does nothing to distinguish the Disputed Domain Names from Complainant’s GOLDEN GOOSE Marks.

Accordingly, the Panel finds that Complainant has met its burden of showing that the Disputed Domain Names are confusingly similar to the GOLDEN GOOSE Marks in which Complainant has valid subsisting trademark rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Disputed Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Complainant contends Respondent has not received any license or consent, express or implied, to use the GOLDEN GOOSE Marks in a domain name or in any other manner. Respondent has been properly notified of the Complaint by the Center; however, Respondent failed to submit any response on this point.

Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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.”

The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.

As an initial matter, there is no evidence that Respondent is commonly known by the Disputed Domain Names, as the WhoIs information lists Respondent as Wei Zhang, and that Respondent is not a licensee, distributor or authorized agent of Complainant. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.

As it pertains to whether Respondent’s use of the Disputed Domain Names is a legitimate noncommercial or fair use, the Panel finds that Respondent’s use is neither legitimate, noncommercial nor fair use. According to the evidence in the Complaint, Respondent was using the Disputed Domain Names to host websites displaying Complainant’s GOLDEN GOOSE Marks in connection with online stores for GOLDEN GOOSE branded products, which are alleged counterfeit products. In addition, there is no disclaimer on the websites which accurately and prominently discloses the relationship with Complainant. Respondent is currently using the <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com> disputed domain names to resolve to websites that copy third party websites and contain links to content unrelated to Complainant. The <goldengooseonlineoutlet.com> disputed domain name resolves to a webpage of content that appears to have been copied from Tara Lipinski’s website, a famous American figure skater. The <goldengooseonlineoutlets.com> disputed domain name resolves to a webpage of content that appears to have been copied from Harvey Nichols’ website, a British department store. There is nothing in the evidence which would suggest that Respondent’s copying of content from such third party websites is authorized. For example, numerous links on the websites hosted at the respective disputed domain names are dead. In addition, Respondent is not making any commentary in the nature of information, news, fan, or criticism related to Complainant or Complainant’s services. There is no mention of the term “Golden Goose” on these websites. The Panel agrees with the cases that have found that there must be some plausible nexus between the content of the website alleged to be fair use and the disputed domain name. See Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589, citing, Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (“the right to express one’s views is not the same as the right to use another’s trademark in a confusing manner (in a domain name) to identify one’s self as the source of those views.”) Accordingly, the Panel finds that Respondent’s use of the <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com> disputed domain names are not a legitimate noncommercial or fair use of the disputed domain names.

With respect to the <ggdbonlineoutlet.com> disputed domain name, the Panel finds that Respondent’s use of the disputed domain name hosts a website displaying Complainant’s GOLDEN GOOSE Marks in connection with an online store for GOLDEN GOOSE branded products, which are alleged counterfeit products, as previously found, is not a legitimate noncommercial or fair use or a bona fide offering of goods and services. In addition, there is no disclaimer on the website which accurately and prominently discloses Respondent’s relationship with Complainant.

Accordingly, for the reasons detailed above, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Respondent had the opportunity to put forth evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct amounts to a right or legitimate interest in the Disputed Domain Names under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Disputed Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Disputed Domain Names which are comprised of Complainant’s GOLDEN GOOSE Marks and a descriptive term that is directly related to a channel of sale of Complainant’s products. The addition of the respective terms actually increases the likelihood of confusion because the terms merely describe a manner in which Complainant’s GOLDEN GOOSE branded products could be sold to consumers, i.e. via an online outlet. See Statoil ASA (Statoil) v. Liheng, Just Traffic Supervision Consulting, WIPO Case No. D2016-2115; Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany, WIPO Case No. D2015-0999. There is no explanation for Respondent to have chosen to register the Disputed Domain Names and to use such domain names as Respondent has done and is currently doing other than to trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.

Further with respect to the use of the Disputed Domain Names at the time of the filing of the Complaint and to the current use of the <ggdbonlineoutlet.com> disputed domain name, paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “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.” As discussed herein, Respondent registered the Disputed Domain Names and has linked them to websites that Complainant purports is selling counterfeit products. Moreover, as previously noted nothing on the website informs the Internet user of the relationship of Respondent with Complainant. See Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (November 30, 2000) (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (August 17, 2000) (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019 (January 27, 2005) (finding bad faith where respondent used the disputed domain name at issue to resolve to a website selling counterfeit goods.)

With respect to the current use of the <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com> disputed domain names the Panel finds that this is further evidence of Respondent’s bad faith.

The Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Disputed Domain Names in bad faith.

7. Decision

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 <ggdbonlineoutlet.com>, <goldengooseonlineoutlet.com> and <goldengooseonlineoutlets.com> be transferred to the Complainant.

John C McElwaine
Sole Panelist
Date: April 10, 2018

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