WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.r.l. v. HUAN WANG / WhoisGuard, Inc.

Case No. D2015-0677

1. The Parties

The Complainant is Golden Goose S.r.l. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.

The Respondent is HUAN WANG of Hefei, Anhui, China / WhoisGuard, Inc. of Panama.

2. The Domain Names and Registrar

The disputed domain names <goldengoosescarpesale.com>, <scarpegoldengoose.com> and <scarpegoldengooseonline.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2015, 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 April 20, 2015 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 April 24, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2015.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on May 28, 2015. 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 in the business of apparel and accessories, and it markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND, GGDB and others. Details of some of its trademark registrations are:

- EU Trademark for GOLDEN GOOSE DELUXE BRAND (word mark) No. 0881244, registered on December 12, 2005, in classes 3, 14, 25 (Annex 4a to the Complaint);

- EU Trademark for GOLDEN GOOSE DELUXE BRAND (word mark) No. 1141624, registered on September 17, 2012, in class 18 (Annex 4b to the Complaint);

- Italian Trademark for GGDB (word mark) No. 0001608971, registered on October 7, 2014, in classes 18, 25, 35 (Annex 4c to the Complaint);

- Italian Trademark for GOLDEN GOOSE DELUXE BRAND (word mark) No. 0001608972, registered on October 7, 2014, in classes 09, 35 (Annex 4d to the Complaint);

- Italian Trademark for GOLDEN GOOSE DELUXE BRAND No. 0000983654, registered on November 11, 2005, in classes 03, 14, 18, 25 (Annex 4g to the Complaint);

The Complainant (formerly Alessandro Gallo S.n.c.) states it was founded in 2000 by Francesca Rinaldo and Alessandro Gallo, after a collaboration with a long-established Venetian tailor.

The disputed domain names <goldengoosescarpesale.com>, <scarpegoldengoose.com> and <scarpegoldengooseonline.com> were registered on June 20, 2014; June 12, 2014; and June 30, 2014, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it stands out for the high quality of its models, and has rapidly become well-known for the urban, vintage feel of its designs. The Complainant asserts that its relaxed yet refined image, balancing experimentation with Italian sartorial tradition, earned it a vast international following, effectively putting it among the most sought-after brands in the contemporary fashion industry. In the S/S 2014 catalogue of Barneys New York, Golden Goose products were on the cover and offered for sale with Lanvin, Givenchy, Maison Martin Margiela, Bottega Veneta, Ferragamo, Borsalino and Fendi products (Annex 5 to the Complaint). Allegedly, celebrities such as Jude Law, Keira Knightley and Sarah Jessica Parker proved to be fans of the Complainant’s products, and its sneakers were featured prominently in Noel Gallagher’s 2012 hit “Everybody’s on the run” music video.

At present, the Complainant operates a vast sales network, including more than 500 among the most prestigious retail stores in the world: Biffi Boutique in Milan, L’Eclaireur Marais in Paris, Browns Focus and Harvey Nichols in London, Barneys New York in New York City, H. Lorenzo in Los Angeles, Ikram in Chicago, Lane Crawford in Hong Kong, China and many others. The Complainant also has a strong online presence in online stores and social networks such as Facebook, Twitter, and YouTube. Its main website at “www.goldengoosedeluxebrand.com” generates significant visits and offers its products for sale through the internal online store (Annex 6 to the Complaint).

After a financial investment by the Italian private equity fund DGPA Capital, the Complainant started a project of international expansion, with the opening of flagship and corner stores in Milan, Paris, Tokyo, Beirut, Amsterdam and also in Seoul.

The Complainant’s products have been endorsed by several international magazines such as Vogue, Elle, Marieclaire, L’Officiel, Grazia, Harper’s Bazar, Cosmopolitan, Vanity Fair, Esquire, and GQ (Annexes 7a, 7b, 7c to the Complaint). Due to its marketing, sales, distribution channels and impressive client base, the Complainant asserts its trademarks are well-known worldwide.

The Complainant submits that the disputed domain names <goldengoosescarpesale.com>, <scarpegoldengoose.com> and <scarpegoldengooseonline.com>are confusingly similar to the trademark GOLDEN GOOSE DELUXE BRAND, in which the Complainant has rights. The use of the descriptive terms “scarpe” (Italian for “shoes”), “sale” and “online” together with the heart of the Complainant’s trademark “Golden Goose” would not affect confusing similarity with the trademark as the terms refer to the Complainant’s products. The Complainant points out that the Respondent has provided no company name or clear contact information on its websites. Since no disclaimers are posted on the websites, and the websites display the GOLDEN GOOSE trademark, they give customers an impression of being Complainant’s websites. Besides that, the Respondent’s websites are, or have been, online stores selling counterfeit GOLDEN GOOSE products and reproducing, without permission, images taken from the Complainant’s catalogues.

The Complainant submits that the Respondent lacks any right or legitimate interest in the disputed domain names, as the Respondent is not a licensee, distributor or authorized agent of the Complainant, and it is not known by the disputed domain names. There are no demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services, but the Respondent uses, or has used, them for selling counterfeit goods. No rights or legitimate interests can exist for the sale of counterfeit goods and such use is clearly not a bona fide use, fair use, or noncommercial use of the disputed domain names. Knowledge of the Complainant’s trademark is demonstrated by the Respondent’s websites featuring the Complainant’s products bearing its trademarks (Annex 9a, 9b, 9c to the Complaint).

The Complainant states that the disputed domain names were registered and are being used in bad faith. The Respondent offers counterfeit goods under the Complainant’s trademark and, thus, is misleading customers as to the source of the products, because it displays the Complainant’s trademarks, without any authorization. Furthermore, the Respondent has engaged in a pattern of conduct because at least three confusingly similar domain names consisting of the Complainant’s trademark have been registered. Moreover, incomplete or inaccurate contact information has been given, which indicates the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following requirements to justify the transfer of the disputed domain names:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the Respondent has registered and is using the disputed domain names in bad faith.

By the Rules, paragraph 5(b)(i), it is expected of the respondent to “[r]espond specifically to the statements and allegations contained in the Complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given an opportunity to present its case.

In the event of a default, under the Rules, paragraph 14(b): “[…] the panel shall draw such inferences therefrom as it considers appropriate.” As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law it deems applicable.

A. Identical or Confusingly Similar

The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain names. In this case, the Complainant has demonstrated registered trademark rights in the mark GOLDEN GOOSE DELUXE BRAND (word) in classes 3, 14, 25, 18, 9, 35 which predates the registration of the disputed domain names. The disputed domain names consist of the terms “goldengoosescarpesale”, “scarpegoldengoose”, “scarpegoldengooseonline” and “.com”. Of these, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when addressing confusing similarity.

Thus, the trademarks in which the Complainant has rights and the disputed domain names coincide in the terms “golden goose” but differ in the terms “deluxe brand” on the side of the Complainant and “scarpesale”, “scarpe”, “scarpe”/“online” on the side of the Respondent. Even though the respective textual strings comprising the disputed domain name and the Complainant’s marks differ in these elements, the differing elements “deluxe brand” on the one hand and “scarpesale”, “scarpe” and “scarpe”/”online”, respectively, on the other hand do not dispel confusion. The reason for this is that, with regard to the Complainant’s trademarks, the term “golden goose” is, in relation to the goods and services claimed, the distinctive and dominant element, considering that the term “golden goose” does not have any meaning with regard to the claimed goods and services and, in relation to those, is a clear fantasy term, whereas “deluxe brand” is merely descriptive. Likewise, as far as the disputed domain names are concerned, with regard to the uses made by the Respondent, the term “golden goose” is the distinctive and dominant element of each of the disputed domain names, whereas the terms “scarpe”, which is the Italian word for “shoes”, the word “sale” indicating that the goods are for purchase, and the term “online” indicating an offer on the Internet, are mere descriptive terms which do not serve to dispel confusion. As already found by numerous UDRP panels, the mere addition of generic or descriptive words is insufficient in itself to avoid a finding of confusing similarity (see Credit Lyonnais v Jehovah Technologies Pte LTD, WIPO Case No. D2000-1425; Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314 or Barclays Bank PLC v Above.com Pty Ltd, WIPO Case No. D2012-0093).

Thus, the disputed domain names, due to the coincidence in the distinctive element “golden goose” evoke the impression that the website, to which the disputed domain names resolve, is operated or otherwise authorized by the Complainant.

Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In this case, the Complainant has submitted that the Respondent lacks rights or legitimate interests as he is not a licensee, distributor or authorized agent of the Complainant, and it is not commonly known by the disputed domain names.

The Panel notes that, with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Rather, as the Complainant has stated and is uncontested, the Respondent used the disputed domain names for selling counterfeit goods.

Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names or has acquired trademark rights in a name corresponding to it.

Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain names.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain names.

Hence, the burden of production has shifted to the Respondent to demonstrate, by substantial evidence, its rights or legitimate interests in the disputed domain names in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.

Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain names and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of the Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the complainant, who is the owner of the trade mark or service mark, or to a competitor of the complainant, for valuable consideration in excess of the domain name holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the domain name holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on the domain name holder’s website or location.

In the present case, the disputed domain names are highly similar to the Complainant’s trademarks in that they have taken over their distinctive element “golden goose”, simply indicating by usual additions such as “sale” or “online” or the type of goods, here “scarpe” for shoes, that the websites, to which the disputed domain names resolve, are online presences where branded goods of the Complainant are for sale. Comparing the websites of the Respondent with the original advertising material of the Complainant as presented in the annexes of the Complaint, it is evident that the Respondent has created the website in such a way that an Internet user led to the websites by the disputed domain names would naturally assume in the first place, that the websites are operated, if not by the Complainant himself, by authorized dealers of the Complainant. The Respondent is thereby misleading consumers as to the source of the products for his commercial gain in order to entice the Internet users to order goods at his online locations. The fact that this has been done in bad faith is evidenced by the fact that the websites contain copyrighted material of the Complainant which shows that the Respondent was clearly aware of the Complainant and his trademarks. Furthermore, the registration and use of at least three confusingly similar domain names as in the disputed domain names consisting, essentially, of the Complainant’s trademarks, give further indication of the bad faith of the Respondent in terms of a pattern of conduct.

Therefore, the Complainant has shown that the disputed domain names have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. In the lack of any allegation or evidence to the contrary, the Panel accepts that the Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

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 <goldengoosescarpesale.com>, <scarpegoldengoose.com> and <scarpegoldengooseonline.com> be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: June 10, 2015