WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Contact Privacy Inc. Customer 1244422423 / Bernard Mulholland
Case No. D2020-1209
1. The Parties
Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero, Italy.
Respondent is Contact Privacy Inc. Customer 1244422423, Canada / Bernard Mulholland, United Kingdom (“UK”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <gucci.llc> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 14, 2020.
The Center verified that the Complaint, together with the amendment to 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 May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. On May 28, 2020, Respondent contacted the Center requesting an extension to the Response due date in light of the ongoing COVID-19 conditions. Pursuant to paragraphs 5(b) and 5(e) of the Rules, the Center notified the Parties on May 28, 2020, that the Response due date was extended until June 14, 2020, and invited Complainant to submit its comments relating to the Response extension. Complainant contacted the Center in regard to the Response extension on May 30, 2020. The Response was filed with the Center on June 13, 2020.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 17, 2020. 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 is an Italian Public Limited Company and is a member of the international conglomerate company Kering (previously Pinault-Printemps-Redoute, PPR), which is a global apparel and accessories company.
Complainant owns many trademark registrations worldwide, including the following:
Italian Trademark Registration No. 362016000132789 for GUCCI (word mark), filed on December 30, 2016, and registered on September 6, 2017, in all classes, registered on March 30, 1977, with registration number 302066 (Annex 4.1);
International Trademark Registration No. 429833 for GUCCI (word mark), registered on March 30, 1977, in classes 3, 14, 18, and 25 (Annex 4.2);
European Union Trademark Registration No. 121988 for GUCCI (word mark), filed on April 1, 1996, and registered on November 24, 1998, in all classes (Annex 4.3);
UK Trademark Registration No. UK00001108183 for GUCCI (word mark), filed on January 24, 1979, in class 18 (Annex 4.4.);
UK Trademark Registration No. UK00001108184 for GUCCI (word mark), filed on January 24, 1979, in class 25 (Annex 4.5).
Respondent is an individual residing in the UK. On April 30, 2019, the Domain Name was registered with the Registrar. The Domain Name resolved initially to a commercial website and now resolves to webpage indicating that it is “under construction”.
5. Parties’ Contentions
Complainant begins its Complaint with a recitation of the history of the GUCCI brand. Complainant alleges as follows:
The Gucci Fashion House was founded in 1921 by Guccio Gucci, who opened a leather goods company and a small luggage store in Florence, Italy. The brand rapidly achieved great success, attracting a sophisticated international clientele fascinated by the equestrian-inspired collection of bags, trunks, gloves, shoes, and belts. The horse bit and stirrup motifs became enduring symbols of the fashion house. During the 1950s, the trademark green-red-green web, derived from saddle girths, was a great success and has endured as one of the most familiar identifiers of the brand. With stores opening in Milan, Italy, and New York, United States of America (“U.S.”), Gucci was building a global presence symbolizing modern luxury.
During the 1960s, Complainant introduced products cherished by some of the most iconic figures of the time and became renowned for timeless design: Jackie Kennedy used Gucci shoulder bags, known today as the “Jackie O.”, and Liz Taylor, Peter Sellers, and Samuel Beckett used the unstructured, unisex “Hobo Bag”. The Flora silk print scarf was created for Grace Kelly. The classic moccasin with horse bit hardware was included in the permanent collection at the Costume Institute of the Metropolitan Museum of Art in New York, U.S.
Gucci continued its expansion abroad with stores opening in London, United Kingdom; Palm Beach, Florida, U.S.; Paris, France; and Beverly Hills, California, U.S., and, in the mid-1960s, Gucci adopted the famous interlocking double “G” logo. During the 1970s and years following, Complainant continued its global expansion targeting the Far East, opening stores in Tokyo, Japan, and Hong Kong, China.
In 1995, Complainant successfully converted into an entirely publicly-owned company and was elected as the “European Company of the year” by the European Business Press Federation for its economic and financial performance, strategic vision, and quality of management. In 1999, Complainant entered into a strategic alliance with Pinault-Printemps-Redoute and transformed itself from a single-brand company into one of the world’s leading multi-brand luxury goods companies.
As of 2015, Alessandro Michele was appointed as Creative Director of Complainant. Responsible for all of Gucci’s collections, product categories, and the company’s global brand image, Alessandro Michele’s unique understanding and appreciation of the historical codes of the House, combined with his contemporary sensibility, has created a new narrative for the brand.
Complainant alleges that it is the owner of numerous trademark registrations worldwide for the GUCCI trademark, both alone and in combination with other word and/or device elements. Complainant asserts that it has used the GUCCI trademark for more than 80 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. Complainant points out that GUCCI is ranked 33rd amongst all brands according to the Interbrand “Best Global Brands” ranking in 2019 and was ranked 30th in the 2019 World’s Most Valuable Brands list provided by Forbes, with a brand value of USD 18.6 Billion. Complainant further asserts that the GUCCI trademark was and is supported by substantial advertising campaigns worldwide, with campaigns appearing in important international magazines with broad circulation such as Vogue, Vanity Fair, GQ, and Glamour and on most popular social media, such as Facebook, Twitter, Instagram, YouTube, Google+, and Pinterest. As a result, Complainant contends that GUCCI is a famous trademark and that Complainant enjoys a worldwide reputation as one of the leading manufacturers of fashion products. At the very least, Complainant asserts that due to its substantial investments in advertising, its marketing and sales, its consistent use of the logo GUCCI for decades, and its impressive client base across all product groups, GUCCI is a well-known trademark worldwide.
Complainant alleges that it is the owner of more than 1600 domain names identical to or containing the mark GUCCI and that its main website at “www.gucci.com” is where most of Complainant’s registered domain names are redirected. Complainant contends that this large domain name presence generates a significant number of visits by Internet users and is used by Complainant to promote its brand and advertise and offer for sale its GUCCI products.
Complainant asserts that it became aware of the registration of the Domain Name on May 2, 2019, when it received a notice from its Trademark Clearinghouse agent informing that the Domain Name was registered in the name of Contact Privacy Inc. Customer 1244422423. Complainant alleges that because of the identical match of the Domain Name with the trademark GUCCI, on May 10, 2019, Complainant instructed its representative to verify the status and ownership of the Domain Name. Complainant asserts that at this time the Domain Name was redirected to a website operating at “www.irish.healthcare” that was promoting the business of an entity named “Dunleath Fashion”, which engaged in the online sale of GUCCI and competing products. Complainant next asserts that, as of May 13, 2019, the Domain Name was redirected to a website located at “www.dunleath-fashion.com”, which was displaying the same content as described at “www.irish.healthcare”. Complainant contends that the website operating at “www.dunleath-fashion.com” to which the Domain Name was redirected, is operated by Respondent, which was ascertained via the contact information published on the “www.dunleath-fashion.com” website. In addition, it is alleged that this website contained the statement “Our founder is historian Dr. Bernard J. Mulholland” displayed in the “About us” section of the “www.dunleath-fashion.com” website. Complainant asserts that Respondent’s website claimed that “Dunleath Fashion Ltd is an established and reputable online fashion company supplying iconic American fashion brands and European designer label clothes, shoes, handbags, watches and accessories” and that Respondent’s main collections include “GUCCI, Valentino, Prada, Dolce & Gabbana, Versace, Armani” and many other fashion brands.
Complainant asserts that it instructed its representative to recover the Domain Name and that a letter was addressed, on May 14, 2019, by email, to the shielded email address published in the WhoIs records of Respondent’s domain name <dunleath-fashion.com> and to the email address previously displayed on the website “www.irish.healthcare”, as well as via the Contact Privacy Inc. online form, requesting Respondent to cease any use of the Domain Name and transfer it to Complainant. Complainant asserts that no response was ever received.
After several additional attempts, on June 26, 2019, Respondent reverted to Complainant’s representative indicating that Respondent did not intend to comply with Complainant’s demands. Moreover, Respondent also mentioned that it had filed a trademark application for GUCCI.LLC in June 2019 and admitted to be selling GUCCI products on its website. As a result, on August 9, 2019, Complainant’s representative sent a new email communication to Respondent in an effort to settle the matter amicably requesting Respondent to transfer the Domain Name to Complainant and withdraw its trademark application for GUCCI.LLC in the United Kingdom. Complainant asserts that Respondent then sent a new email communication on September 2, 2019, stating, “It seems likely that ownership of the domain <gucci.llc> will prove pivotal to the Trade Mark application, don’t you think, Luca? (...) The question then, Luca, is will the successful award of a Trade Mark substantially increases the value of the domain and brand, and will additional publicity attract investors with deep pockets?” Complainant asserts that a final communication was sent to Respondent on September 20, 2019, and that no response has been received.
With respect to the first element of the Policy, Complainant points out that the Domain Name is identical to the well-known GUCCI trademark in which Complainant owns valid trademark rights.
With respect to the second element of the Policy, Complainant asserts that Respondent is not a licensee, authorized agent of Complainant, or in any other way authorized to use Complainant’s GUCCI trademark. In addition, Compliant contends that Respondent is not commonly known by the Domain Name as an individual, business, or other organization, and “Gucci” is not Respondent’s family name. Complainant argues that the existence of Respondent’s GUCCI.LLC trademark application does not automatically confer rights or legitimate interests on Respondent, as “panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)”. Complainant also alleges that Respondent has not provided Complainant with any evidence of the use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute. As to any claim that Respondent is an authorized reseller with legitimate interests, Complainant points out that Respondent has not sold only Complainant’s GUCCI-branded products and has redirected the Domain Name to a website featuring Complainant’s trademarks and products without providing any disclaimer about the lack of affiliation with Complainant.
With respect to the third element of the Policy, in light of the fact that the trademark GUCCI is well-known and used since as early as 1921, Complainant asserts that it is inconceivable that Respondent was unaware of the existence of Complainant or Complainant’s trademark GUCCI, to which the Domain Name is identical. Complainant asserts that, given the distinctiveness and reputation of Complainant’s trademark, Respondent clearly acted in opportunistic bad faith by registering the Domain Name with full knowledge of Complainant’s trademark for the purpose of taking commercial advantage of Complainants’ trademark. Complainant alleges that such use of the Domain Name clearly indicates that Respondent's purpose in registering the Domain Name was to capitalize on the reputation of Complainant's trademark by diverting Internet users seeking GUCCI branded products to its own website for financial gain, by intentionally creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website and/or the goods offered or promoted through said websites according to paragraph 4(b)(iv) of the Policy. Lastly, Complainant asserts that the current content and disclaimer of Respondent’s website does not prevent confusion or a finding of bad faith and, in fact, may be considered an admission by Respondent of the deceptive nature of its website located at the Domain Name.
Respondent asserts that he purchased the Domain Name on April 30, 2019, from Google Domains with the purpose of developing a “unique brand of that name” to be sold online through Respondent’s own website with that name. Respondent acknowledged that Google Domains works with the Trademark Clearinghouse to protect trademark owners, but points out there were no restrictions placed on his ability to purchase the Domain Name. In May 2019, Respondent asserts that he created the Gmail address, “[...]@gucci.llc”. Respondent claims that on June 13, 2019, Bernard Mulholland Ltd. applied for the mark “gucci.llc”, UK Trade Mark No. UK00003406669, and that this application was published on June 28, 2019, in the Trade Marks Journal, No 2019/026. Respondent reiterated that it has always been Respondent’s stated bona fide intention to develop and market “gucci.llc” as an independent brand initially targeting a specific market demographic.
With respect to Respondent’s alleged trademark for “gucci.llc”, Respondent contends that the word, “gucci”, is a generic or descriptive word citing to an article interviewing Lenny Kravitz, Merriam-Webster Dictionary, the Urban Dictionary, and Dictionary.com among others. Respondent also points out that in the U.S. the abbreviation “llc” stands for “limited liability company”. Respondent further claims that his “gucci.llc” trademark was a carefully chosen “to blend the English adjective ‘gucci’ together with the ‘llc’ of American corporate culture to form a unique and distinctive Anglo-American entity that communicates with its target demographic: Gangsta, Gen Z and a sophisticated Anglo-American urban culture”.
Respondent also claims that the English language adjective “gucci.llc” forms a rhyming couplet that makes it suitable for brand marketing. To illustrate this point, Respondent points to “dozens of songs that use the English language adjective ‘gucci’ in their titles, and many more that integrate the English language adjective ‘gucci’ within their lyrics”.
Respondent next alleges that Dunleath Fashion Ltd. was formed to market a range of quality apparel and clothing online to gain experience in current digital marketing practices and e-commerce relating to an educational program Respondent was enrolled for 2019-2020 academic year. Respondent explains that his intent has always been to develop and market “gucci.llc” as an independent brand.
Respondent acknowledges that his United Kingdom Trademark application was opposed by Complainant and this proceeding is still ongoing. Respondent contends that he has communicated with counsel for Complainant regarding his bona fide intentions to use the Domain Name and his belief that he is being harassed by Complainant and its counsel.
With respect to the first element of the Policy, Respondent denies any allegations that the Domain Name is identical or confusingly similar to the GUCCI trademark because (i) the word “gucci” is a common adjective; (ii) Complainant has registered “.gucci” as new generic top-level domain (gTLD); (iii) Complainant does not have a trademark for GUCCI in lowercase; (iv) the Registrar did not warn or stop him from registering the Domain Name; and (v) trademarks registered in the name “gucci” are commonplace, for example, there allegedly is a limited liability company named Gucci LLC (Business ID: 1231617) registered in Connecticut in the U.S..
With respect to the second element of the Policy, Respondent contends that before his knowledge of this dispute, Respondent was commonly known by the Domain Name because (i) he was the registered owner of the Domain Name; and (ii) he had applied for the trademark “gucci.llc”, Trade Mark No. UK00003406669 certified, and he believes he has owned the resulting trademark registration for more than a year. Respondent also alleges that he has legitimate rights because “gucci” is a word used in everyday language and was selected as the Domain Name to target “a specific market demographic that commonly uses ‘gucci’ in its lyrics, song titles, and in everyday usage, and which a totally different demographic to that pursued by the brand GUCCI”.
With respect to the third element of the Policy, Respondent reiterates and realleges that (i) the word “gucci” is a common adjective that can be found in a dictionary; (ii) the abbreviation “llc” means “limited liability company in the U.S.; (iii) the Domain Name’s designed construction blends the English adjective ‘gucci’ together with the ‘llc’ of American corporate culture to form a unique and distinctive Anglo-American entity that communicates with sophisticated Anglo-American urban culture; and (iv) the Domain Name forms a rhyming couplet that makes it suitable for brand marketing.
Respondent concludes by making a claim of Reverse Domain Name Hijacking. As support, Respondent alleges that Complainant has admitted to be the owner of more 1600 domain names and the “.gucci” TLD. Respondent contends that Complainant’s actions in this matter amount to another “attempt to block legitimate use of the generic English language adjective ‘gucci’ anywhere on the Internet”.
6. Discussion and Findings
Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant shows that the Domain Name in question is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As an initial matter, 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. Section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided substantial evidence that it is the owner of numerous trademark registrations throughout the world for the GUCCI trademark.
Respondent contends that Complainant does not have trademark rights in the GUCCI trademark because it is an adjective. However, Respondent produces no evidence that the term “gucci” is commonly referenced as an “adjective”. In a light most favorable to Respondent, arguments are presented that the GUCCI brand has become a slang term in pop culture. However, even if true, such assertions by Respondent do not rise to the level of rendering the GUCCI trademark generic leaving Complainant without valid trademark rights.
Respondent’s other arguments are equally unavailing. Complainant’s trademark rights are not impacted because the Registrar did not warn or stop Respondent from registering the Domain Name. In addition, Respondent has produced no evidence that trademarks registered in the name “gucci” are commonplace.
In sum, the Domain Name is confusingly similar to Complainant’s GUCCI trademark because it contains Complainant’s GUCCI trademark in its entirety and with no other words or characters. Respondent’s argument that the Domain Name differs from Complainant’s GUCCI trademark because the Domain Name is in lowercase letters is without merit and does not prevent the confusing similarity between the Domain Name and the GUCCI trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s GUCCI trademark in which Complainant has valid trademark rights under the UDRP. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that Complainant has not authorized Respondent to use the GUCCI trademark. Respondent does not dispute this assertion.
Instead, Respondent contends that he has been commonly known by the Domain Name because he is the registered owner of the Domain Name and because he applied for the trademark “gucci.llc”, Trade Mark No. UK00003406669. There is no support that being the registered owner of the Domain Name means that one is commonly known by the domain name. Such circular logic would render an analysis of the second element of the Policy meaningless. Section 2.3 of the WIPO Overview 3.0 explains that “[i]nsofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence”. Respondent has not come forward with anything but mere assertions that he is commonly known by the Domain Name.
Respondent also alleges that he applied for “gucci.llc” as a United Kingdom trademark, which provides a legitimate interest. However, the existence of a trademark application or registration does not automatically confer rights or legitimate interests on Respondent, as “panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)”. See WIPO Overview 3.0, section 2.12.2; Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin, WIPO Case No. D2013-1568 (“it appears likely to the Panel that the Respondent has applied for and has registered its trademark in attempt to secure to himself trademark rights in the term ‘vcene’ and thus to legitimize its ownership of the disputed domain name and circumvent the application of the Policy”). Here, the GUCCI trademark was well-known globally and it is inconceivable that Respondent was unaware of Complainant when he applied for “gucci.llc” as a United Kingdom trademark. At this time, the GUCCI trademark had been in use for more than 80 years and was one of the top-50 brands with a brand value of USD 18.6 Billion. In fact, Complainant’s GUCCI trademark has been recognized as a famous trademark by prior UDRP panels. See, Guccio Gucci S.p.A. v. Zhao Ke / Yeli / Corporate Domains, Inc / Li Ye, WIPO Case No. D2012-0357, citing, Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170 (“The GUCCI mark is a famous luxury brand”); and Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196 (acknowledging evidence that “GUCCI has become internationally famous as a luxury fashion brand”). The Panel finds that Respondent’s trademark application is not evidence of being commonly known by the name “gucci.llc” or that the trademark application, which has been opposed by Complainant, confers legitimacy to Respondent’s actions or intentions.
Respondent also contends that prior to the notice of this dispute, he was making demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Specifically, Respondent alleges that he has legitimate rights because “gucci” is a word used in everyday language and was selected as the Domain Name to target “a specific market demographic that commonly uses ‘gucci’ in its lyrics, song titles, and in everyday usage, and which a totally different demographic to that pursued by the brand GUCCI”.
There is no evidence to suggest that Respondent has ever used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Therefore, Respondent cannot establish rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy. The evidence submitted in this matter by Complainant, that was not challenged by Respondent, was that the Domain Name was redirected to a website operating at “www.irish.healthcare” that was promoting the business of an entity named “Dunleath Fashion”, which engaged in the online sale of GUCCI products and competing products. Sometime later the evidence, again undisputed by Respondent, establishes that the Domain Name was redirected to a website located at “www.dunleath-fashion.com”, which continued to sell competing fashion products and claimed that “Dunleath Fashion Ltd is an established and reputable online fashion company supplying iconic American fashion brands and European designer label clothes, shoes, handbags, watches and accessories” and that Respondent’s main collections include “GUCCI, Valentino, Prada, Dolce & Gabbana, Versace, Armani” and many other fashion brands. Here, given that Respondent has used a domain name identical to Complainant’s GUCCI trademark to link to a website purporting to sell various fashion brands is not a bona fide offering of services. See e.g., Six Continents Hotels, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Peiyan Yao, WIPO Case No. D2013-0660 (finding that Respondent who developed a website at “www.hotelindigoshanghai.com” was not using this domain name in connection with a bona fide offering of services where competing hotel reservations could be made for Complainant’s hotel).
To the extent that Respondent may be considered a “reseller” of Complainant’s products, the Panel finds that the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), even if applicable here, could not be met. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
- Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
Here, Respondent has failed to satisfy the second and third elements. Importantly, the evidence showed that Respondent was not selling only Complainant’s products. The website printout purported to offer fashion brands from many of Complainant’s competitors. Respondent also did not take sufficient steps to make it sufficiently clear that Respondent was unrelated to Complainant.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent admits he developed a commercial website under the Domain Name to offer for sale products of competitors of Complainant and Complainant’s products. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair.
Accordingly, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent registered and is using the Domain Name in bad faith as evidenced by the allegations that (i) Respondent knew or should have known of Complainant’s trademark rights in the well-known GUCCI trademark; and (ii) Respondent used the Domain Name to link to a website offering for sale goods that were competitive to Complainant’s goods.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Respondent counters by arguing that “gucci” was a common word that it combined with the “.llc” TLD to create a brand to market Anglo-American urban culture. Given the fame of Complainant’s mark which was established by Complainant, and which has been recognized by other panels, it is inconceivable that Respondent was not aware of Complainant’s trademark rights at the time of the registration of the Domain Name and that he registered the Domain Name with the intention to trade off the goodwill of Complainant’s GUCCI trademark.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”. See Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name). As detailed above, the Panel finds on the record before it that Respondent’s alleged intention in registering the Domain Name was not legitimate and that Respondent acquired the Domain Name primarily to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules states, in relevant part:
“If the Panel concludes that the dispute is not within the scope of paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As the Panel has found in favor of Complainant, it dismisses the request for a finding of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.”)
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gucci.llc> be transferred to Complainant.
John C. McElwaine
Date: June 30, 2020