WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Liu Dacheng, Jorn Liu, Jacke Chen
Case No. D2018-0561
1. The Parties
Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
Respondent is Liu Dacheng of Beijing, China; Jorn Liu of Shanghai, China; Jacke Chen of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <getggdb.com> <goldengooseparis.com> and <goldengoosesadil.com> 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 March 14, 2018. On March 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 15, 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 March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 11, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 16, 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 was founded in 2000 and since has become well-known for ready to wear accessories and footwear, combining a refined and modern style with a vintage feeling, all supported by the strong Italian sartorial tradition. 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. Lorenzo in Los Angeles, Ikram in Chicago, Lane Crawford in Hong Kong and many others. Complainant also has a strong presence in online stores and social networks such as Facebook, Twitter and YouTube. Its main website at “www.goldengoosedeluxebrand.com” generates significant visits and offers its products for sale through Complainant’s online store. Complainant’s products have been endorsed by several international magazines such as Vogue, Elle, Marieclaire, L’Officiel, Grazia, Harper’s Bazar, Cosmopolitan, Vanity Fair, Esquire, and GQ.
Complainant has submitted as Annex 4 copies of its Italian trademark registrations, as well as additional international registrations covering various other jurisdictions for the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks, the earliest of which was registered on November 11, 2005 (Italian trademark registration no. 302005901341351). Complainant also owns numerous domain names, including its primary domain name <goldengoosedeluxebrand.com>, which was registered in April 2006 and which is used by Complainant as a forum to promote and disseminate information regarding Complainant’s various goods and services under the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks.
The disputed domain names <getggdb.com> <goldengooseparis.com> and <goldengoosesadil.com> were registered on July 6, 2017, July 31, 2017 and July 31, 2017 respectively, as shown in Annex 1 submitted by Complainant. Currently, the disputed domain names redirect users to websites that display the GGDB and GOLDEN GOOSE DELUXE BRAND marks, and appear to offer for sale unauthorized or counterfeit products under the same marks, and also appear to reproduce images taken from the Complainant’s official website.
5. Parties’ Contentions
Complainant asserts that, due to its marketing, sales, distribution channels and impressive client base, its trademarks are well-known worldwide.
Complainant asserts that the disputed domain names are confusingly similar to its marks because the mere addition of the generic terms “get”, “paris” and “sadil” in the disputed domain names does not avoid confusing similarity between the marks and the disputed domain names. The word “get” is a descriptive and generic verb, usually used referring to obtain, buy, or earn something. The word “paris” is also a descriptive term and the name of the capital and most famous city in France. The word “sadil” is a typographical variation of the Italian generic and descriptive term “saldi” (that means “sale”). Respondent’s websites are all selling counterfeit GGDB products and reproducing, without permission, images taken from the Complainant’s official website protected by copyright. According to Complainant, this behavior confirms Respondent’s awareness of its marks.
Complainant further asserts that Respondent lacks rights or legitimate interests in the disputed domain names because Respondent is not a licensee, distributor or authorized agent of Complainant, and it is not 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. Respondent uses them for selling counterfeit goods. No rights or legitimate interests can exist for the sale of counterfeit goods and such use is clearly not a bona fide use, fair use, or noncommercial use of the disputed domain names.
Finally, Complainant asserts that the disputed domain names were registered in bad faith, and are being used in bad faith, insomuch as Respondent offers counterfeit goods under Complainant’s marks GOLDEN GOOSE DELUXE BRAND and GGDB, and thus is misleading customers as to the source of the products, since it displays Complainant’s trademark without any authorization. Moreover, incomplete or inaccurate contact information has been given, which indicates Respondent’s bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issue: Consolidation of Multiple Respondents
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
(1) Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
(2) The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, the disputed domain names share the same registrant contact information ([…]@hotmail.com); all three disputed domain names were registered with the same Registrar (PDR Ltd. d/b/a PublicDomainRegistry.com); all three disputed domain names were registered on the same day or in the same month in 2017; and all three disputed domain names revolve to similar or identical website content.
Accordingly, the Panel finds that Complainant has established more likely than not that the three disputed domain names are subject to common ownership or control. The Panel finds such common control to justify consolidation of Complainant’s claims against the registrants of the disputed domain names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by Complainant pursuant to paragraph 10(e) of the Rules.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(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 were registered and are being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
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 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks, which have been registered in Italy, and elsewhere internationally, well before Respondent registered the disputed domain names. Complainant has also submitted evidence that the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks are known globally in connection with its products, including various types of clothing, accessories and footwear.
With Complainant’s rights in the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain “.com”) are identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s GGDB and GOLDEN GOOSE marks because they incorporate these marks in their entirety as the dominant element of each disputed domain name. The addition of the descriptive or typographical terms “get”, “paris” or “sadil” before or after the dominant GGDB or GOLDEN GOOSE elements does not distinguish the disputed domain names from Complainant’s marks. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks and in showing that the disputed domain names are identical or confusingly similar to these trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks and does not have any rights or legitimate interests in the disputed domain names. Respondent has not made any bona fide or fair use of the disputed domain names in connection with any product or service. Rather, Complainant contends that Respondent has used the disputed domain names in an attempt to sell counterfeit goods or otherwise commit fraud. Such use of the disputed domain names does not, and cannot, constitute a bona fide use or legitimate interest in the disputed domain names. Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
Given that Complainant has established with sufficient evidence that it owns rights in the GGDB, GOLDEN GOOSE, and GOLDEN GOOSE DELUXE BRAND marks, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 the instant proceeding, Respondent registered three disputed domain names that each fully incorporate Complainant’s GGDB or GOLDEN GOOSE marks with the terms “get”, “paris” and/or “sadil” which may create confusion by suggesting to consumers that the disputed domain names relate to Complainant and its goods or services provided under the GGDB and GOLDEN GOOSE marks. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004.
As noted above, Complainant contends that Respondent is using the disputed domain names to publish websites that offer for sale counterfeit copies of Complainant’s own products. In the absence of any denial by Respondent, and in conjunction with the uncontested assertion that Respondent has misappropriated copyrighted images from Complainant, the Panel infers that through these activities Respondent is using a deliberately similar version of Complainant’s very well-known marks, and the significant goodwill and reputation associated with such marks, to misdirect Internet traffic for its own commercial gain.
Furthermore, Respondent also evidently registered the disputed domain names using non-functional contact information. The use of false registration data in connection with the disputed domain names supports a finding of bad faith registration and use. See, e.g., Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024.
Accordingly, the Panel finds that Complainant succeeds under this element 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, <getggdb.com>, <goldengooseparis.com> and <goldengoosesadil.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: April 27, 2018