WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Theodore Broeck
Case No. D2018-0508
1. The Parties
The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Theodore Broeck of Hudson, Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <goldengooseshop.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 March 6, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 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 March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2018.
The Center appointed Mihaela Maravela as the sole panelist in this matter on April 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
The Complainant is in the business of apparel and accessories, and it markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB (acronym of Golden Goose Deluxe Brand). The Complainant was founded in 2000 by Francesca Rinaldo and Alessandro Gallo, after a collaboration with a long-established Venetian tailor. According to the Complaint, the company immediately stood out for the high quality of its models, and rapidly became well known for the urban, vintage feel of its designs. In the spring/summer 2014 catalogue of Barneys New York, Golden Goose products were on the cover and offered for sale with Lanvin, Givenchy, Maison Martin Margiela, Bottega Veneta, Ferragamo, Borsalino and Fendi products. At present, the Complainant operates a vast sales network, including more than 690 among the most prestigious retail stores in the world: Biffi Boutique in Milan, L’Eclaireur Marais in Paris, Browns Focus and Harvey Nichols in London, Barneys New York in New York City, H. Lorezo in Los Angeles, Ikram in Chicago, Lane Crawford in Hong Kong and many others. The Complainant also has a strong presence in online stores and social networks such as Facebook, Twitter and YouTube.
The Complainant is the owner of a number of registered trademarks consisting of GOLDEN GOOSE DELUXE BRAND or GOLDEN GOOSE, including the following:
- International Trademark for GOLDEN GOOSE DELUXE BRAND (word trademark) No. 881244 registered on December 12, 2005;
- International Trademark for GOLDEN GOOSE DELUXE BRAND (word trademark) No. 1242357, registered on July 11, 2014; and
- Italian Trademark for GOLDEN GOOSE (word trademark) No. 0001657474, registered on November 24, 2015.
The Respondent registered the disputed domain name on November 8, 2016.
The disputed domain name resolves at the date of this decision to an inactive website after being redirected to “www.goldengooseshop.org.uk”. According to evidence put forward by the Complainant, at the date of the Complaint the disputed domain name was used to purport to offer for sale goods under the Complainant’s trademarks.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the trademark GOLDEN GOOSE DELUXE BRAND in which the Complainant has rights. Mere addition of the generic term “shop” in the disputed domain name does not avoid confusing similarity between the trademark and the disputed domain name. The disputed domain name is designed to confuse users into believing that the products offered on the Respondent’s website are genuine whereas they are in fact counterfeits. The Respondent’s website provides no clear indication of its origin, nor does it contain a disclaimer. The Respondent does not provide any company name or clear contact information on its website. Knowledge by the Respondent of the Complainant’s trademark is demonstrated by the Respondent’s website featuring the Complainant’s products bearing its trademarks.
The Complainant also submits that the Respondent lacks any rights or legitimate interests in the disputed domain name, as the Respondent is not a licensee, distributor or authorized agent of the Complainant, and it is not known by the disputed domain name. No rights or legitimate interests can exist for sale of counterfeit goods and such use is clearly not a bona fide use, fair use or noncommercial use of the disputed domain name.
In addition, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Respondent offers counterfeit goods under the Complainant’s trademark GOLDEN GOOSE DELUXE BRANDS, and thus is misleading customers as to the source of the products, since it displays the Complainant’s trademark without any authorization. Moreover, incomplete or inaccurate contact information has been given, which indicates the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“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 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
The Complainant adduced evidence of trademark registrations for GOLDEN GOOSE DELUXE BRANDS and GOLDEN GOOSE in the name of the Complainant.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.
Here the disputed domain name incorporates the distinctive and dominant part of the Complainant’s trademark GOLDEN GOOSE DELUXE BRANDS, respectively the Complainant’s trademark GOLDEN GOOSE in its entirety, in addition to the descriptive term “shop”. The addition of the descriptive term “shop” to the GOLDEN GOOSE trademark of the Complainant does not distinguish the disputed domain name from the Complainant’s trademarks. See Golden Goose S.P.A. v. Liu Dacheng, Jorn Liu, Jacke Chen, WIPO Case No. D2018-0561.
The fact that a domain name wholly incorporates a complainant’s trademark or a relevant part thereof may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The general approach of UDRP panels to the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademarks GOLDEN GOOSE DELUXE BRANDS and GOLDEN GOOSE and claims that the Respondent is not a licensee, distributor or authorized agent of the Complainant. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Golden Goose Deluxe Brands” or “Golden Goose”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
The disputed domain name does not resolve to an active website at the date of this decision. However, from the evidence put forward by the Complainant and not refuted by the Respondent it results that the disputed domain name was used at the date of filing of the Complaint for sale of what appear to be counterfeit goods bearing the Complainant’s trademarks. Such use could not support a finding of rights or legitimate interests. See Golden Goose S.P.A. v. Goldengoose Incs. / GGDBDS Inc., WIPO Case No. D2018-0576.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant’s trademarks and that the said trademarks are used for a long period of time indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. This finding is further supported by the fact that the Complainant’s trademarks are distinctive and well known within the fashion sector (e.g., Golden Goose S.p.A. v. Bin Lin, WIPO Case No. D2018-0171) and also by the fact that the website to which the disputed domain name used to redirect displayed the Complainant’s trademarks. See Golden Goose S.p.A. v. Bin Lin, supra.
As regards the use of the disputed domain name, the Complainant adduced evidence not refuted by the Respondent that the website to which the disputed domain name resolved at the date of filing of the Complaint was used for online sale of presumably counterfeit products marked with the Complainant’s trademarks. This shows in the Panel’s view that the website to which the disputed domain name resolves is used to create a likelihood of confusion as to the Complainant’s affiliation with the site and offers for sale of presumably counterfeit replicas of the Complainant’s goods. For a similar finding see IM Production v. Yan Si, WIPO Case No. D2015-1633.
This Panel agrees that even in the event that the Respondent offered genuine GOLDEN GOOSE goods (e.g., as a non-authorized reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant, indicates bad faith (see Swarovski Aktiengesellschaft v. swarovski-coupon.net swarovski-coupon.net swarovski-coupon.net, WIPO Case No. D2013-1529, and also Swarovski Aktiengesellschaft v. bingbing chen, WIPO Case No. D2011-1524).
As concerns the fact that the disputed domain name is not currently in use by the Respondent, the Panel takes the view that passive holding of the disputed domain does not preclude a finding of bad faith (paragraph 3.3 of WIPO Overview 3.0), nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (see, e.g., Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938).
Also, this Panel agrees with the opinions expressed by previous UDRP panels in the sense that “this is not changed by the fact that the website under the Domain Name has gone offline after the Complainant formally noticed its objections to the website operator, because it may be reactivated at any time and this threat continues to hang over the Complainant’s head” (see, e.g., Etablissement Public du Musée du Louvre v. Domaincolony.com,WIPOCase No. D2014-1405).
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name;
- the Respondent seems to have provided false contact information at the registration of the disputed domain name;
- the apparent change of the content of the websites after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving the complaint was evidence of bad faith), and V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373.
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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, <goldengooseshop.com> be transferred to the Complainant.
Date: May 11, 2018