Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero of Florence, Italy.
Respondent is Hainei Zhou of Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 16, 2011, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 19, 2011. 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 states that it is “a part of the Gucci Group” that evolved from the “Gucci Fashion House,” which was founded in 1921. Today Complainant is “one of the world’s leading multi-brand luxury goods companies,” with a history of products that include leather goods, luggage, gloves, shoes, belts, shoulder bags and scarves.
Complainant states that it is the owner of “thousands” of trademark registrations worldwide, including many that consist of the word “Gucci”. Some of these registrations are supported by copies of trademark registration certificates included with the Complaint, which date back to at least 1977. These trademarks are referred to hereafter collectively as the “GUCCI Trademark.”
Complainant states that it, and its “associated companies,” are the registrants of more than 500 domain names that are “identical to or comprising the mark GUCCI,” including , which is used in connection with a website that “generates a significant number of visits by Internet users” and offers for sale, among other things, jewelry products.
The Disputed Domain Name was originally registered on April 14, 2009, and is used in connection with a website that offers for sale jewelry products, including what Complainant alleges are counterfeit Gucci products such as bangles, bracelets, cufflinks, earrings, mobile phone straps, necklaces, rings, sunglasses and watches. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to the GUCCI Trademark because “the non-distinctive element ‘jewelry’ does not affect the confusing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent’s website at the Disputed Domain Name offers for sale counterfeit Gucci products – an illegitimate activity that is “undoubtedly” commercial in nature; “Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use Complainant’s trademark GUCCI”; and Respondent is “not commonly known by the domain name.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “it is inconceivable that Respondent was unaware of the existence of Complainant or Complainant’s trademark GUCCI” in light of the long history and widespread usage of the GUCCI Trademark; Respondent’s purpose in registering the Disputed Domain Name “was to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking jewelry products under [the] GUCCI mark to its own web site, where consumers may purchase counterfeit goods offered and sold under the GUCCI mark”; Respondent did not reply to demand letters sent by Complainant; and Respondent provided incomplete and/or inaccurate contact information in registering the Disputed Domain Name, as evidenced by the fact that at least one of Complainant’s demand letters was returned to sender. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, as well as the accompanying copies of trademark registration certificates, it is apparent that Complainant has rights in and to the GUCCI Trademark. This conclusion is further supported by previous decisions under the Policy regarding the same complainant and trademark, e.g., Guccio Gucci S.p.A. v. Enon Tyler,WIPO Case No. D2010-1837 (transfer of ); and Guccio Gucci S.p.A. v. Domain Administrator,WIPO Case No. D2010-1836 (transfer of ).
As to whether the Disputed Domain Name is identical or confusingly similar to the GUCCI Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “gucci-jewelry”), as it is well-established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Inclusion of a hyphen in the Disputed Domain Name is irrelevant. See, e.g., Di El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk,WIPO Case No. D2007-0961 (“the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue”) (citing The Coca-Cola Company v. Bernard Peters,WIPO Case No. D2007-0478); see also Diamonique Corporation v. Foley Services,WIPO Case No. D2007-0893 (“the presence of the dash [in the Disputed Domain Name] is irrelevant…. [and] ‘add[s] no distinctiveness whatsoever’” (citing Dr. Grandel GmbH v. West End Internet Services,WIPO Case No. D2005-0853).
Further, the addition of certain words, as here (that is, “jewelry”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “jewelry” is associated with the GUCCI Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
This same conclusion has been reached by other UDRP panels under nearly identical circumstances, that is, disputed domain names that also contained the GUCCI Trademark as well as the word “jewelry” (or a variation thereof). See Guccio Gucci S.p.A. v. Enon Tyler,WIPO Case No. D2010-1837 (transfer of ); and Guccio Gucci S.p.A. v. Domain Administrator,WIPO Case No. D2010-1836 (transfer of ).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent’s website at the Disputed Domain Name offers for sale counterfeit Gucci products – an illegitimate activity that is “undoubtedly” commercial in nature; “Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use Complainant’s trademark GUCCI”; and Respondent is “not commonly known by the domain name.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant 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, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the website used by Respondent in connection with the Disputed Domain Name allegedly offers for sale counterfeit Gucci products – an allegation not denied by Respondent. In at least one previous decision under the Policy involving the same Complainant as here, a UDRP panel found that a website selling counterfeit Gucci products “is strong evidence of bad faith.” Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator,WIPO Case No. D2010-1589. See also, e.g., Cartier International, N.V., Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758 (finding bad faith where “the domain name contains the Complainant's mark and the website offers to sell counterfeit imitations of the Complainant's [jewelry] products”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 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 Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: July 29, 2011
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