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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.p.A. v. Privacy Protect LLC / P de Ree, David Lomas

Case No. D2018-0592

1. The Parties

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

The Respondent is Privacy Protect LLC of Burlington, Massachusetts, United States of America ("United States") / P de Ree of Baltimore, Maryland, United States / David Lomas of Essex Junction, Vermont, United States.

2. The Domain Names and Registrar

The disputed domain names <golden-goosesneakers.com>, <golden-gooseoutlet.com> and <goldengoose‑sale.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 16, 2018. On March 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 20, 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 the Complainant on March 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 3, 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2018.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 4, 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 which was founded in 2000. It sells high quality shoes, apparel and accessories via a website hosted at "www.goldengoosedeluxebrand.com" and through more than 690 retail stores worldwide. The Complainant's GOLDEN GOOSE DELUXE BRAND products have been advertised in high fashion magazines including Vogue, Elle, Marieclaire, L'Officiel, Grazia, Harper's Bazar, Cosmopolitan, Vanity Fair, Esquire and GQ.

The Complainant is the proprietor of the following registered trade marks:

1. International trade mark number 881244 for the word GOLDEN GOOSE DELUXE BRAND registered on December 12, 2005;

2. Italian trade mark number 0000983654 for the word GOLDEN GOOSE DELUXE BRAND registered on November 11, 2005;

3. International trade mark number 1242357 for the word GOLDEN GOOSE DELUXE BRAND registered on July 11, 2014; and

4. Italian trade mark number 00001657474 for the word GOLDEN GOOSE registered on November 24, 2015.

The first and second disputed domain names were registered on October 13, 2016. The third disputed domain name was registered on April 24, 2016. The Complainant states that the second and third disputed domain names redirect to the website at the third disputed domain name (<goldengoose-sale.com>), a website apparently selling counterfeit versions of the Complainant's products. Having made further investigations, the Panel finds that the disputed domain names now redirect to <golden-goose-outlet.com>, a domain which is not included in the Complaint. The Panel finds that the facts and circumstances of the website to which this domain name resolves are substantially the same as is the case in the Complaint, specifically that this domain also resolves to a website apparently selling counterfeit versions of the Complainant's products.

5. Parties' Contentions

A. Complainant

The Complainant contends as follows:

1. The disputed domain names are confusingly similar to the Complainant's GOLDEN GOOSE DELUXE BRAND mark in which the Complainant has registered rights (the "Complainant's GOLDEN GOOSE DELUXE BRAND Mark"). In particular:

1.1. the addition of the terms "outlet", "sale" and "sneakers" do not avoid confusing similarity between the Complainant's GOLDEN GOOSE DELUXE BRAND Mark and the disputed domain names;

1.2. the term "outlet" is a generic term identifying physical or online stores in which manufacturers sell their stock directly to the public;

1.3. the term "sale" is a generic term that refers to the period in which goods are sold at a lower price;

1.4. the term "sneakers" is descriptive of the Complainant's products as well as of the products offered on the website to which the disputed domain names resolve;

1.5. the website to which the disputed domain names resolve sells counterfeit versions of the Complainant's products;

1.6. the website to which the disputed domain names resolve reproduces images taken from the Complainant's official website at "www.goldengoosedeluxebrand.com" without permission; and

1.7. the websites to which the disputed domain names resolve do not contain disclaimers, give any indication of their origin nor provide any clear contact information, therefore giving customers the impression of being the Complainant's websites.

2. The Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

In particular:

2.1. the Respondent is not a licensee, distributor or authorised agent of the Complainant, and is not known by the disputed domain names;

2.2. the Respondent uses the disputed domain names for selling counterfeit goods; and

2.3. the Respondent is aware of the Complainant's GOLDEN GOOSE DELUXE BRAND Mark since the website to which the disputed domain names resolve includes images of the Complainant's products which feature its trade marks.

3. The disputed domain names were registered and are being used in bad faith. In particular:

3.1. the Respondent offers counterfeit goods under the Complainant's GOLDEN GOOSE DELUXE BRAND Mark without authorisation, thereby misleading customers; and

3.2. the Respondent provides incomplete or inaccurate contact information.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:

(i) the domain name is identical or confusingly similar to a trade mark 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.

Paragraph 5(f) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has submitted sufficient evidence demonstrating its rights in the GOLDEN GOOSE DELUXE BRAND Mark.

Each of the disputed domain names incorporates the distinctive and dominant part of the Complainant's GOLDEN GOOSE DELUXE BRAND Mark, namely the element "GOLDEN GOOSE".

The Top-Level Domain in the disputed domain names (".com") should be disregarded since it is a technical requirement of registration of the disputed domain names.

The Panel finds that the phrases "sneakers", "outlet" and "sale" in the disputed domain names have little distinctive character and/or are descriptive of the goods or services that the Respondent purports to offer. On the other hand, the first part of each of the disputed domain names, "golden goose", has acquired a high level of distinctiveness over the Complainant's 18 year history (see, for instance, Golden Goose S.P.A. v. Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si, WIPO Case No. D2017-0067; Golden Goose S.p.A. v. Domain Admin, c/o ID#10760 Privacy Protection Service Inc. d/b/a Privacyprotect.org / P de Ree, WIPO Case No. D2017-1260).

The Panel therefore finds that the Complainant has established that each of the disputed domain names are confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel notes that the Respondent is not a licensee, distributor or authorised agent of the Complainant, and accepts that the Respondent is not known by the disputed domain names.

According to the Complainant, the disputed domain names resolve to a website which sells counterfeit versions of the Complainant's products. Previous UDRP Panels have categorically held that the use of a domain name for illegal activity (e.g. the sale of counterfeit goods) can never confer rights or a legitimate interest on a respondent (see section 2.13.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and, among others, Richemont International SA v. brandon gill, WIPO Case No. D2013-0037; Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750). Panels have also found that circumstantial evidence can support a complainant's otherwise credible claim of illegal respondent activity, including evidence that the goods are offered disproportionately below market value, that respondent has misappropriated copyrighted images from the complainant's website and that a respondent has improperly masked its identity to avoid being contactable have each been found relevant in this regard (see section 2.13.2 of WIPO Overview 3.0 and, for instance, Golden Goose S.p.A. v. Andy Low, WIPO Case No. D2017-1484 in which the Panel noted that the discounts purportedly offered on the Respondent's website were so large that the products are unlikely to be genuine merchandise). The Panel notes that the Complainant has provided such supporting evidence.

On this basis, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name such that the burden of production shifts to the Respondent, who must rebut that prima facie case.

The Respondent has not responded to the Complaint. The Panel therefore finds that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see for instance, Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447; Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315). In this case, this presumption is supported by the fact that the disputed domain names redirect to a website that is used for the sale of counterfeit products, a use that can only be considered as obvious bad faith for the reasons outlined above.

Further, the Panel is satisfied that a finding of registration in bad faith in this case is supported by the fact that at the date of registration of the dispute disputed domain names, the Complainant's GOLDEN GOOSE DELUXE BRAND Mark was well-known.

Accordingly, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain names resolve by creating confusion with the Complainant's GOLDEN GOOSE DELUXE BRAND Mark. Therefore, the requirement under paragraph 4(a)(iii) of the Policy is satisfied.

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 <golden-goosesneakers.com>, <golden-gooseoutlet.com> and <goldengoose-sale.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: May 18, 2018

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