WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Patrick Terry
Case No. D2018-0640
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Patrick Terry of Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ggdbsneaker.top> is 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 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 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 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 a number of trade marks for GOLDEN GOOSE DELUXE BRAND and GGDB including the following:
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. International trade mark number 1242358 for the word GGDB registered on July 11, 2014.
The disputed domain name was registered on February 2, 2018. The Complainant states that the disputed domain name resolves to a website apparently selling counterfeit versions of the Complainant's products.
5. Parties' Contentions
The Complainant contends as follows:
1 The disputed domain name is confusingly similar to the Complainant's GOLDEN GOOSE DELUXE BRAND and GGDB Marks in which the Complainant has registered rights. In particular:
1.1 the addition of the term "sneaker" does not avoid confusing similarity between the Complainant's GOLDEN GOOSE DELUXE BRAND and GGDB marks and the disputed domain name;
1.2 the term "sneaker" is descriptive of the Complainant's products as well as of the products offered on the website to which the disputed domain name resolves;
1.3 the website to which the disputed domain name resolves sells counterfeit versions of the Complainant's products;
1.4 the disputed domain name is designed to confuse users into believing that the products offered on the website to which it resolves are genuine products when they are in fact counterfeits; and
1.5 the website to which the disputed domain name resolves does not contain a disclaimer, nor does it give any indication of their origin or provide any clear contact information, therefore giving customers the impression of being the Complainant's website.
2 The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular:
2.1 the Respondent is not a licensee, distributor or authorized agent of the Complainant, and is not known by the disputed domain name;
2.2 the Respondent uses the disputed domain name for selling counterfeit goods; and
2.3 the Respondent is aware of the Complainant's GOLDEN GOOSE DELUXE BRAND and GGDB marks since the website to which the disputed domain name resolves includes images of the Complainant's products which feature its trade marks.
3 The disputed domain name was registered and is being used in bad faith. In particular:
3.1 the Respondent offers counterfeit goods under the Complainant's GOLDEN GOOSE DELUXE BRAND and GGDB marks without authorization, thereby misleading customers;
3.2 the Respondent provides incomplete or inaccurate contact information; and
3.3 the Complainant was awarded with a number of transfer decisions bearing strong similarities with the case at hand.
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 and GGDB mark.
The disputed domain name incorporates the distinctive and dominant part of the Complainant's GGDB mark, or the abbreviation of GOLDEN GOOSE DELUXE BRAND mark, namely the element "GGDB".
The Top-Level Domain in the disputed domain name (".top") should be disregarded since it is a technical requirement of registration of the disputed domain name and does not serve to distinguish the disputed domain name from other domain names.
The Panel finds that the term "sneaker" in the disputed domain name is descriptive of the goods or services that the Respondent purports to offer.
The Panel therefore finds that the Complainant has established that the disputed domain name is 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 authorized agent of the Complainant, and accepts that the Respondent is not known by the disputed domain name.
According to the Complainant, the disputed domain name resolves 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 legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("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). UDRP 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 the 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 interests 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
The disputed domain name incorporates the Complainant's GGDB Mark in circumstances which are likely to give the impression that it is associated with the Complainant. Moreover, the disputed domain name redirects 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.
Accordingly, the Panel accepts the Complainant's submission that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves by creating confusion with the Complainant's GGDB marks. Therefore, the requirement under paragraph 4(1)(iii) of the Policy is satisfied.
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 <ggdbsneaker.top> be transferred to the Complainant.
Date: May 18, 2018