WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golden Goose S.p.A. v. qingqing ai
Case No. D2020-3489
1. The Parties
Complainant is Golden Goose S.p.A., Italy, represented by LCA Studio Legale, Italy.
Respondent is qingqing ai, China.
2. The Domain Name and Registrar
The disputed domain name <goldengoosei.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2020, 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 Complainant on December 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a letter amendment to the Complaint updating it with the same registrant and contact information disclosed by the Registrar on December 30, 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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on February 10, 2021. 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 fashion brand that produces high-end quality shoes, apparel and accessories. Complainant owns valid and subsisting registrations for the GOLDEN GOOSE and GOLDEN GOOSE DELUXE BRAND trademarks (hereinafter the “GOLDEN GOOSE Trademarks”) in most countries, including in Australia, China, the European Union, Italy, Japan, Russia, Singapore, South Korea, Turkey, and the United States of America, with the earliest priority dating back to September 8, 2005.
Respondent registered the disputed domain name on October 27, 2020. At the time of this Complaint, the disputed domain name resolved to a dual Italian and English-language website that impersonates Complainant and contains putative offers to sell Complainant’s branded products.
5. Parties’ Contentions
Complainant asserts ownership of the GOLDEN GOOSE Trademarks and has adduced evidence of trademark registrations in numerous regions and countries around the world, with earliest priority dating back to September 8, 2005, including in China where registration data suggests Respondent is located.
The disputed domain name is confusingly similar to Complainant’s GOLDEN GOOSE Trademarks, according to Complainant, because it comprises the GOLDEN GOOSE Trademarks with only the addition of the letter “i”, a minor alteration which is clearly not sufficient to distinguish the two.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any authorized reseller or distributor relationship between Complainant and Respondent; the lack of any evidence that Respondent is known by the term “golden goose”; and the lack of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s use of the disputed domain name to sell counterfeit products at rock-bottom prices; Respondent’s unauthorized use of photographs taken from Complainant’s website; and Respondent’s clear intent to deceive consumers into believing Respondent’s website belongs to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
Procedural Issue: Language of the Proceedings
Pursuant to paragraph 11 of the Policy, absent an agreement to the contrary between the parties and subject to the authority of the Panel to determine otherwise, the default language of the proceeding is the language of the registration agreement. SeeWIPO Overview 3.0, section 4.5.1. In this case, Complainant asserts it “does not know the language of the Registration Agreement” and “requests that the language of proceedings be in English, given that English is the primary language for ‘international relations.” However, the Panel finds this argument and request unnecessary because English was further confirmed to the WIPO Arbitration and Mediation Center by the Registrar as the language of the Registration Agreement. Accordingly, the Panel finds that English is the appropriate language of these proceedings per paragraph 11 of the Policy.
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the GOLDEN GOOSE Trademarks have been registered in numerous regions and countries around the world with priority dating back to September 8, 2005, more than 15 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the GOLDEN GOOSE Trademarks have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s GOLDEN GOOSE trademarks. In this Complaint, the disputed domain name is confusingly similar to Complainant’s GOLDEN GOOSE Trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the entire GOLDEN GOOSE trademark is (and the most distinctive elements of the GOLDEN GOOSE DELUXE BRAND trademark are) wholly contained in the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview, section 1.9 (Relevant to this Complaint, “[e]xamples of such typos include … (vi) the addition or interspersion of other terms or numbers”). See e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic … In fact, the domain name comprises Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant “s” at the end.”) In view of the evidence in this particular Complaint, it is clear that the addition of the letter “i” in the disputed domain name represents an intentional addition of a meaningless term to Complainant’s GOLDEN GOOSE trademarks.
In view of Complainant’s registration for the GOLDEN GOOSE trademark, Respondent’s incorporation of that trademark in its entirety in the disputed domain name, and Respondent’s clear attempt at typosquatting on the GOLDEN GOOSE trademark, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1 . Indeed, it is evident that Respondent, identified by registration data for the disputed domain name as “qingqing ai”, is not commonly known by the disputed domain name or Complainant’s GOLDEN GOOSE trademarks.
Moreover, UDRP panels have categorically held that use of a domain name for illegal activity—including the impersonation of the complainant, the sale of counterfeits, and other types of fraud—can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. In the present Complaint, taking into consideration the default of Respondent, this Panel finds that Complainant has submitted a sufficient prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case. In fact, the evidence shows that the disputed domain name has been associated in the sale of what appear to be counterfeit products using Complainant’s GOLDEN GOOSE Trademarks.To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Complainant’s credible argument that Respondent uses the disputed domain name to pass itself off as Complainant and sell counterfeit products, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
UDRP panels have categorically held that registration and use of a domain name for illegal activity—including impersonation, passing off, sale of counterfeits, and other types of fraud—is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain). Circumstantial evidence can support Complainant’s otherwise credible claim of illegal respondent activity, including evidence that: (i) the goods at issue are offered disproportionately below market value; (ii) goods are ordinarily only sold with Complainant’s authorization; (iii) images of the goods used by a respondent suggest they are not genuine; (iv) the respondent has misappropriated copyrighted images from the complainant; (v) the goods at issue are extremely rare; (vii) the goods at issue have prompted consumer complaints; (viii) the respondent has masked its identity to avoid being contactable; and (ix) so-called “trap purchases” demonstrate illegal respondent activity. WIPO Overview 3.0, section 2.13.2.
In this Complaint, corroborating circumstantial evidence establishes that: (i) Respondent’s putative website offers to sell GOLDEN GOOSE branded shoes are deeply discounted, typically less than one third the listed MSRP; (ii) Respondent’s website does not purport to sell second hand GOLDEN GOOSE products, and Respondent is not one of Complainant’s authorized resellers or distributors; and (iii) Respondent’s website includes unauthorized reproductions of images from Complainant’s website, most likely in furtherance of Respondent’s attempts to impersonate Complainant.
Finally, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. WIPO Overview, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”). See also Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. It is evident that Respondent registered and used the disputed domain name with a typographical letter “i” added to Complainant’s GOLDEN GOOSE trademarks, to intentionally attract, for commercial gain, Internet users to the website linked to disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers Respondent’s bad faith based on the fact that Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the added letter “i” to Complainant’s GOLDEN GOOSE trademark into a web browser.
In view of Complainant’s credible argument that Respondent’s website impersonates Complainant in an attempt to sell counterfeit products, all corroborating circumstantial evidence, and Respondent’s typosquatting on Complainant’s GOLDEN GOOSE Trademarks, the Panel concludes that Complainant has established the third element of the Policy.
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 <goldengoosei.com> be transferred to Complainant.
Phillip V. Marano
Date: February 24, 2021