WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.P.A. v. Domain Administrator, See PrivacyGuardian.org / Sergejs Zogota and Francesco Buscicchio
Case No. D2019-0904
1. The Parties
The Complainant is Golden Goose S.P.A., Italy, represented by Studio Legale de Vietro, Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Sergejs Zogota, United Kingdom and Francesco Buscicchio, Italy.
2. The Domain Names and Registrar
The Disputed Domain Names <ggdbeu.com> and <shopggdb.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 23, 2019, 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 May 9, 2019 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 13, 2019.
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 May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on June 19, 2019. 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 corporation doing business in the world of clothing and accessories.
The Complainant is the owner, among many others, of the following trademark registrations:
- Italian trademark registration for GGBD, number 0001608971, registered on October 7, 2014;
- European Union trademark registration for GGDB, number 017640194, registered on May 4, 2018;
- European Union trademark registration for GGDB/SSTAR, number 016908238, registered on October 5, 2017;
- International trademark registration for GGDB, number 1242358, registered on July 11, 2014; and
- International trademark registration for GOLDEN GOOSE DELUXE BRAND, number 1432470, registered June 19, 2018.
The first use of the Complainant´s trademarks back to 2007 with the Spring / Summer 2008 collection.
The Disputed Domain Names resolve to websites where purported GGDB products are sold at a very low price.
The Disputed Domain Names were registered on January 2, 2019.
5. Parties’ Contentions
The Complainant contends that the consolidation of the Disputed Domain Names would be procedurally efficient since there is a common control. As such the same email contact is displayed in both sites.
The Complainant states that on May 29, 2019 it contacted Sergejs Zogota and Francesco Buscicchio in order to settle amicably the dispute. Mr. Zogota, registrant of the Disputed Domain Name <shopggdb.com>, did not reply, and Mr. Buscicchio, registrant of the Disputed Domain Name <ggdbeu.com> replied via email stating that he was not the registrant and attaching a complaint before the police and concluding therefore that he was not interested in reaching an agreement1.
The Complainant asserts that GGDB and GGDB/SSTAR and broken star design are well-known trademarks and are under protection in a number of jurisdictions around the world.
The Disputed Domain Names are identical/similar in a misleading way since they fully contain the GGDB trademark. The addition of a common word, as such, “shop” or “eu” does not allow to distinguis a domain name from the incorporated trademark. Accordingly, the Complainant considers that the Disputed Domain Names are identical and therefore confusingly similar to the Complainant’s marks.
With regard to the second element, the Complainant asserts that the Respondent has no rights or legitimate interest. The Complainant has not licensed or otherwise authorized the Respondent to register the Disputed Domain Names. Further, the Complainant asserts that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names since the Respondent is trying to obtain profit by misleading consumers to its websites. It also states that the use of the Disputed Domain Names by the Respondent tarnishes the Complainant’s trademarks.
Finally, the Complainant alleges that the Respondent registered and use the Disputed Domain Names in bad faith. Complainant’s trademarks are to be considered well known. Besides, the Respondent knowledge arises from the incorporation of the Complainant’s trademarks in the corresponding Disputed Domain Names as well as from the reproduction of its trademarks in the websites where the Disputed Domain Names resolve. It also notes that the Respondent’s websites offers seemingly identical products to those offered in the official Complainant’s website. Accordingly, the Complainant contends that the use of the Disputed Domain Names creates confusion that may led the consumer to believe that the relevant websites are official sites of the Complainant or, at very least are connected somehow.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the Disputed Domain Names to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which
the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the registrant of the Disputed Domain Names as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
A. Procedural issue: consolidation of the Disputed Domain Names and Respondents
The Panel considers WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Panel also takes into account previous WIPO decisions. As such Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 where the learned panelist wisely depicted the panorama under the UDRP where multiple domain names and respondents are at stake.
It is apparent for the Panel that the Disputed Domain Names and corresponding websites are subject to common control. Such a conclusion is based on the following: both Disputed Domain Names were registered on the same day, with the same Registrar and using the same proxy service. Further, both Disputed Domain Names resolve to different websites but with the same design, content and photos. Besides, the website information provided by the Mozilla browser in relation to the sites where the Disputed Domain Names resolve show that the view-port, content type, keywords and description are identical. Moreover, both Disputed Domain Names are resolving to websites in an attempt to impersonate the Complainant by using the Complainant’s trademark at the main page of the websites and purporting to sell Complainant´s products. It should be also noted that both websites bear the same email address “[ ... ]@bcr23.page” as contact.
Being that as it is, the Panel finds that it would be procedurally efficient and fair to the Parties to consolidate the proceedings.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the complainant must establish that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the Complainant has rights”. The Panel finds that the Complainant has demonstrated registered trademark rights in the marks BBGD which are entirely incorporated in the Disputed Domain Names.
The addition of the term “shop” or “eu” do not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Further, it is well established in decisions under the UDRP that generic Top-Level Domains (“gTLDs”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the first requirement is met under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
With regard to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Names.
The Complainant has clearly established that the Respondent is not authorized to use its trademarks or register the Disputed Domain Names. However, the Complainant’s trademarks are displayed on the corresponding websites. Therefore, giving the false impression to be an official site of the Complainant. Such impersonation is heightened by the composition of the Disputed Domain Names which effectively impersonate or falsely suggest sponsorship or endorsement by the Complainant. Moreover, the Respondent did not provide information about the publisher or the relationship with the owner of the GGDB trademarks. Accordingly, with such an omission consumers may believe that the websites belong to the Complainant or are official sites. The Panel refers to the WIPO Overview 3.0 section 2.5 which states that “Fundamentally, a respondent’s use of a domain name will not be considered fair if it falsely suggests affiliation with the trademark owner”.
Furthermore, the websites at the Disputed Domain Names sell apparently identical products to the Complainant’s but at very low prices. The practice to offer goods at such low prices suggests that these products may be fake which would not be considered fair use for the purposes of the UDRP.
To sum up, the Panel is of the opinion that the Respondent has no legitimate interest or rights in the Disputed Domain Names, the Respondent has not registered the Disputed Domain Names in connection with a bona fide offering of goods or services or used them for legitimate noncommercial or fair use purposes.
The Panel takes the view expressed at the WIPO Overview 3.0, section 2.1: “[W]here 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.” However, the Respondent did not reply to the Complainant’s contentions. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the Disputed Domain Names to the satisfaction of the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the Disputed Domain Names have been registered and are being used in bad faith.
The Panel is of the opinion that the Respondent should have known that its registration of the Disputed Domain Names would be confusingly similar to the Complainant’s mark. GGBG is widely known as it happens when someone Googles the acronym and mark in the search machine. Moreover, the composition of the Disputed Domain Names is such that they effectively impersonate or suggest sponsorship or endorsement by the Complainant. Further, the subsequent use of the Disputed Domain Names supports such previous knowledge. Respondent’s websites are used to misleadingly imply that they are affiliated or otherwise connected with the Complainant, whereas it is not the case. Upon these circumstances, the Panel finds that the evidence demonstrates that the Respondent must have had the Complainant and its trademarks in mind when selecting the Disputed Domain Names. See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648 / Chen Yu Chen, HeatShopUSA, WIPO Case No. D2018-0601.
With the evidence produced by the Complainant, the Panel is of the view that the Respondent has used the Disputed Domain Names to attract, for commercial gain, Internet users to its websites by creating confusion in the minds of the public as to an association between the websites and the Complainant. Moreover, as established under the second element, if the products sold on the websites are fake, this would not be considered fair use for the purposes of the UDRP.
Accordingly, the Panel finds that the Disputed Domain Names have been registered and are 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 Names <ggdbeu.com> and <shopggdb.com> be transferred to the Complainant.
Date: June 27, 2019
1 The Panel notes that the Registrar confirmed that Mr. Buscicchio is the registrant of the Disputed Domain Name <ggdbeu.com>.