WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Antje Bar
Case No. DRO2020-0014
1. The Parties
The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is Antje Bar, Germany.
2. The Domain Name and Registrar
The disputed domain name <gucciromania.ro> (the “Domain Name”) is registered with ROTLD (the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2020. On November 23, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On November 24, 2020, the Registry 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 November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 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
The Complainant is Guccio Gucci S.p.A., an Italian company which belongs to the international conglomerate company Kering (previously Pinault-Printemps-Redoute, PPR), a global group in apparel and accessories. The Complainant was in 33rd place 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.
The Complainant owns numerous trademark registrations worldwide, consisting of the element “GUCCI”, through amongst others:
- Italian Trademark Registration No. 362016000132789 for GUCCI (word mark), filed on December 30, 2016, and registered on September 6, 2017, in all classes, last renewal of the Italian trademark originally filed on January 13, 1977, and 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 Trade Mark Registration No. 121988 for GUCCI (word mark), filed on April 1, 1996 and registered on November 24, 1998, in all classes (Annex 4.3);
The above mentioned trademarks are hereinafter in singular referred to as the “Trademark”.
Furthermore, the Complainant owns more than 1,600 domain names containing the Trademark. Most of these domain names resolve to the website “www.gucci.com”.
The Domain Name was registered on July 20, 2019. The Domain Name resolves to a website under the domain name <romaniarecenzii.com> (the “Website”). On the Website, clothing and bags, bearing the element “Gucci” are offered for sale.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Domain Name is confusingly similar to the Trademark. The Domain Name <gucciromania.ro> incorporates the whole of the Complainant’s Trademark along with the addition of the geographical term “romania”. The addition of this geographical term in the Domain Name is not sufficient to establish dissimilarity.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not a licensee or authorized agent of the Complainant, nor in any other way authorized to use the Trademark. The Respondent is not commonly known by the Domain Name as an individual, business, or other organization. The Respondent has not provided the Complainant with any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the Website the Trademark is displayed along with official images of the Complainant and prima facie counterfeit products of the Complainant are offered for sale. Furthermore, no disclaimer has been published on the Website. The described use of the Domain Name cannot be considered a legitimate noncommercial or fair use without intent for commercial gain.
The Domain Name was registered and is being used in bad faith. In light of the fact that the Trademark is certainly well known and used since as early as 1921, it is inconceivable that the Respondent was unaware of the existence of the Complainant or the Trademark, to which the Domain Name is identical. Furthermore, the Respondent’s express references to the Trademark and products on the Website, indicate that the Respondent was fully aware of the reputation of the Trademark and the association with the Complainant. The Respondent’s use of the Domain Name in connection with the Website where counterfeit products are offered for sale, indicates the use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns trademark rights in GUCCI for the purposes of the Policy.
As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the element “gucci”, which is identical to the Trademark, and is accompanied by the geographical term “romania” as a suffix. The addition of the geographical term “romania” does not avoid a finding of confusing similarity for purposes of the first element. See WIPO Overview 3.0, section 1.8, which it is set out that if the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element and see, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services, has to be assessed in light of the Panel decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In order for the use to be qualified as a “bona fide offering of goods”, the offering of the goods must meet several requirements, according to the consensus view in UDRP decisions, often referred to as the “Oki Data criteria”.
Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website of the domain name to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name; and,
- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211.
The Panel finds that the Respondent does not meet the above mentioned requirements.
Based on the evidence, the Panel ascertained that the Website lacks a clear and prominent disclaimer and in fact conveys the impression that the Respondent is an authorized reseller of the Complainant’s products. Therefore, the Respondent tries to provide the impression that the Respondent is affiliated to the Complainant.
Furthermore, given the high probability that the goods on offer through the Domain Name are counterfeit, noting that the goods are offered disproportionately below market value, and the use of the Complainant’s official images on the Website, the Respondent’s use of the Domain Name cannot be considered a bona fide offering of goods or services. The Panel also notes the composition of the Domain Name, which carries a risk of implied affiliation with the Complainant.
Given the circumstance of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which is unrebutted due to the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel refers to its findings under section 4.B of this decision and finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a response, the Panel finds that the Trademark is, as well as the activities of the Complainant, internationally well known. Furthermore, the Domain Name was registered many years after the registration date of the Trademark. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name, which is a requisite for a finding of registration of the Domain Name in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026). Moreover, as GUCCI branded products are being offered on the Website and lacking a Response, it can be assumed that the Respondent had the Trademark in mind when registering the Domain Name.
The Panel finds that, in accordance with section 3.1.4 of WIPO Overview 3.0, the facts of the case point to an intent on the part of the Respondent to unfairly profit from the Complainant’s rights in this regard. Therefore, the Panel finds that the Respondent has registered the Domain Name in bad faith.
Furthermore, the Panel finds that the registration of the Domain Name incorporating the Trademark in its entirety, the use thereof for the purpose of selling what appears to be counterfeit Gucci products, and the creation of the Website which seems to be intended to pass off as the authentic or official website of the Complainant, leads to a finding of use of the Domain Name in bad faith.
The above described use and registration of the Domain Name is typically the kind of cybersquatting and illegitimate activity that the Policy is intended to address and deal with in paragraph 4(b)(iv). By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Website and the products offered for sale on the Website.
Finally, although the previously mentioned lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
Therefore, the Panel finds that the Respondent uses the Domain Name in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met.
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 <gucciromania.ro> be transferred to the Complainant.
Willem J. H. Leppink
Date: January 4, 2021