WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. Whoisguard Inc. / Wei Zhang
Case No. D2018-1027
1. The Parties
The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Whoisguard Inc. of Panama / Wei Zhang of Henan, China.
2. The Domain Name and Registrar
The disputed domain name <goldengooseoutletit.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 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 May 18, 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 proceeding commenced on May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 19, 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 a company incorporated in Italy and the owner of various registrations in jurisdictions worldwide for the trade marks GOLDEN GOOSE DELUXE BRAND and GOLDEN GOOSE (the "Trade Mark(s)"), including International registration No. 881244 for the GOLDEN GOOSE DELUXE BRAND Trade Mark, registered on December 12, 2005 (and designating China); and Italian registration No. 0001657474 for the GOLDEN GOOSE Trade Mark, registered on November 24, 2015.
The Complainant has been using the Trade Marks since 2000 in respect of clothing, footwear, and accessories.
The Respondent is apparently a resident of China.
C. The Disputed Domain Name
The disputed domain name was registered on August 1, 2017.
D. Use of the Disputed Domain Name
The disputed domain name is resolved to an English and Italian language website which (i) reproduces prominently the Trade Marks together with the "®" (registered trade mark) sign; (ii) reproduces copyright images of the Complainant's products taken from the Complainant's official website; (iii) offers for sale heavily discounted Golden Goose footwear; and (iv) contains the website footer "Copyright (c) 2018 Golden Goose Online" (the "Website").
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name incorporates (1) the entirety of the Complainant's GOLDEN GOOSE Trade Mark; and (ii) dominant features of the GOLDEN GOOSE DELUXE BRAND Trade Mark (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7) together with the commonly used acronym for Italy (the country in which the Complainant is based), "it".
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see, WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which offers for sale heavily discounted or counterfeit footwear under the Trade Marks; reproduces the Complainant's Trade Marks, without authorisation; reproduces copyright images of the Complainant's footwear taken from the Complainant's official website; and contains a website footer "Copyright (c) 2018 Golden Goose Online".
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <goldengooseoutletit.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: July 3, 2018