The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondents are Liuqing Wu and Feiji Lu (the “Respondent”) of Putian, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names , , are registered with B, Inc. The disputed domain names , , are registered with Jiangsu Bangning Science & technology Co. Ltd. The disputed domain names , , are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 9, 2011, the Center transmitted by email to B, Inc., Jiangsu Bangning Science & technology Co. Ltd., Xin Net Technology Corp. (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On September 13, 2011, September 15, 2011, September 16, 2011, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 16, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on September 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2011.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 25, 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
The Complainant is the owner of numerous national and international trademark registrations worldwide of the GUCCI (word mark), both alone and in combination with other word and/or device elements, as stated in Annex 3 to the Complaint. The GUCCI (word mark) is also registered in China, where the Respondent is based, in the early 1980’s. The trademark was regularly used by the Complainant 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.
The Complainant and its associated companies belonging to the Gucci Group are the owners of more than five hundred domain names identical to or comprising the mark GUCCI as shown in Annex 6 to the Complaint. The web site “” (to which most of the Complainant’s registered domain names are redirected) has a distinctive look and feel, and the Complainant advertised and offered for sale its products on its internal web pages.
The disputed domain names are all registered in the name of Liuqing Wu, but for the disputed domain name , which is registered in the name of Feiji Lu. All the disputed domain names have in common a postal address located in Putian, Fujian, China.
The Respondent registered (on November 27, 2010), (on February 7, 2011) and (on February 22, 2011), without authorization by the Complainant, and has redirected them to web sites which were similar to the look and feel of the Complainant’s web site “”. On April 1, 2011, the Respondent registered (using the same contact information but for the name, “feiji lu”), a new disputed domain name, . More recently, the Complainant ascertained that the Respondent also registered additional disputed domain names confusingly similar to its trademark GUCCI, i.e. , , , and .
The Complainant had sent cease and desist letters to the Respondent requesting the Respondent to immediately cease any use the disputed domain names and to transfer all the disputed domain name to the Complainant. However, the Respondent did not respond to any of the Complainant’s letters. 5. Parties’ Contentions A. Complainant
The Complainant asserts that all the disputed domain names are registered by the same person i.e. the Respondent and requests that the Panel, as ruled in prior decisions issued under the Policy, consolidate the disputed domain names registered under the different names according to the Rules, paragraph 3(c) and 10(e), provided that the namely different registrants are alter egos of the same beneficial holder.
The Complainant asserts that the disputed domain names registered by the Respondent are confusingly similar to the trademark GUCCI in which the Complainant has rights. The disputed domain names incorporate the whole of the Complainant’s GUCCI trademark. The fact that the disputed domain names include the non-distinctive elements “outlet”, “online/s”, “news”, “shoes”, “shop”, “sale”, the article “the”, the “hyphen” and a final letter “e” (in the disputed domain name ) does not affect the confusing similarity. In fact, some of the terms selected by the Respondent for its disputed domain name registrations in the present case increase the likelihood of confusion and induce Internet users to believe that there is an association between the disputed domain names and the Complainant. For example, the term “shoes” can be referred to products made by the Complainant; the terms “sale”, “shop” and “outlet” recall locations where the Complainant’s products can be purchased; the word “online” can be specifically referred to the Complainant’s on line sale.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons:
1. The Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark GUCCI.
2. The Respondent is not commonly known by the disputed domain names as an individual, business, or other organization, and “Gucci” is not the family name of Respondent.
3. The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
4. The disputed domain names , , , , and have been pointed to web sites, nearly identical to the Complainant’s site “”, where prima facie counterfeit GUCCI products have been offered for sale. Imitations of the Complainant’s products are also advertised and offered for sale through the web sites under the disputed domain name . Accordingly, the Respondent’s use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
5. Similarly, the use of the disputed domain name cannot be considered a legitimate, fair or noncommercial use of the disputed domain names, since the Respondent is advertising on the corresponding web site apparently counterfeit products.
6. Also, the Respondent cannot claim any rights or legitimate interests in the disputed domain name as it is currently pointed to a web site on which the GUCCI logo is published and users are provided information about Gucci products. In light of the Respondent’s conduct in its use of the disputed domain names, the Complainant has reasons to believe that it is likely that the contents displayed under the disputed domain name could be modified in the near future and the term “outlet” combined with the trademark GUCCI in the disputed domain name suggests that might be used in connection with offers for sale of the Complainant’s (counterfeit) products since the disputed domain name is likely to attract Internet users who look for GUCCI products at lower prices.
7. The Respondent did not reply to the cease and desist letters sent by the authorized representative of the Complainant.
The Complainant asserts that the Respondent has registered the disputed domain names and was using the disputed domain names in bad faith on the following grounds:
1. In light of the fact that registered trademark GUCCI 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 Complainant’s trademark GUCCI, with which the disputed domain names are confusingly similar.
2. The circumstances of the case suggest that the Respondent's purpose in registering the disputed domain names, which incorporate the Complainant's GUCCI mark in its entirety, was to capitalize on the reputation of the Complainant's mark by diverting Internet users seeking products under GUCCI mark to its own web sites.
3. The disputed domain names , , , , and have been pointed to web sites that reproduce the look and feel of the Complainant’s official web site “” and on which prima facie counterfeit goods under GUCCI mark are advertised and offered for sale.
4. The Complainant’s trademarks are misappropriated and apparently counterfeit GUCCI products are also advertised on the web site located at and are offered for sale on the web site under the disputed domain name .
5. The disputed domain name is redirected, for the time being, to a web site where GUCCI logo is misappropriated.
6. By operating the web sites located at the disputed domain names, the Respondent has, therefore, knowingly attempted to attract Internet users to its web sites for financial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web sites or the goods offered or promoted through the Respondent's web sites, according to paragraph 4(b)(iv) of the Policy.
7. The Respondent has registered and is actively using several disputed domain names confusingly similar to other registered and well-known trademarks, such as the domain names , confusingly similar to the trademark OAKLEY, , confusingly similar to the famous LV monogram of Louis Vuitton Mallettier, , confusingly similar to the trademark TIFFANY.
8. The Respondent has also been subject to another UDRP proceeding decided in favor of the complainant, Juicy Couture, Inc. v. Chen Hao / Hao Chen / Liuqing Wu / Lu Mingren, NAF Claim Number: FA1101001367045, concerning the registration by the Respondent of 10 domain names (, , , , , , , , and ) confusingly similar to the registered trademark JUICY COUTURE.
9. The Respondent did not reply to the cease and desist letter and subsequent reminders sent by the legal representative of the Complainant.
10. The Respondent registered the disputed domain names by using incomplete and/or inaccurate contact information, as shown by the fact that the cease and desist letter addressed by registered mail to the Respondent’s address was returned to sender with the indication that the address was unknown. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation of the Disputed Domains Registered with Different Names
The Panel finds that the evidence adduced by the Complainant establishes that, prima facie, the disputed domain names are all registered by the same person i.e. the Respondent. Thus, the disputed domain names are to be consolidated and dealt with in one administrative proceeding. 6.2 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name appears to be Chinese but this is not certain as it was not prima facie published on the Registrars’ web sites.
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in this case, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. However, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant communicates in English and would be prejudiced should it be required to translate the Complaint and participate in these proceedings in Chinese. Indeed, requiring the Complainant to translate the Complaint and all documents into Chinese would cause delay.
2. The Respondent in this case has demonstrated that he or she understands English since the Respondent’s disputed domain names have been pointed to web sites published entirely in English and the Complainant is not in possession of any evidence demonstrating that the Respondent cannot communicate in English.
3. The Complainant had sent numerous cease and desist letter to the Respondent requesting to immediately cease any use of the disputed domain names and to transfer them to the Complainant. To date, the Complainant has not received any correspondence from the Respondent requesting clarification, translation, or otherwise indicating that there was any issue related to the language adopted. In fact, further to the Complainant’s cease and desist letter and subsequent reminder, the redirection of the disputed domain names and was deactivated spontaneously by the Respondent. Thus, it may be concluded that the Respondent clearly understood the correspondence addressed to his or her attention.
4. The Respondent, following the cease and desist letter addressed by the Complainant’s representatives, registered other disputed domain names confusingly similar to its trademarks, i.e. , , , , and , which are subject of this Complaint and are all pointed to web sites entirely in English.
After considering the circumstances of the present case, the submission of the Complainant’s request, and the lack of objection from the Respondent in this regards, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain names are all made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the web sites to which the disputed domain names are pointed are in English which suggest that the Respondent understands English; (c) the Complainant has exhausted all ways to communicate with the Respondent but to no avail; (d) the Complainant has provided evidence to show that the Respondent understands English.
The Respondent has chosen not to respond to the Complainant’s Complaint. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response either on the issue of the language of the proceeding or the allegations contained in the Complaint lodged by the Complainant. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.3 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences there from, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the GUCCI trademark, both alone and in combination with other word and/or device elements, 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 in many countries in the world. In particular, the Panel finds that the Complainant has rights in the GUCCI mark registered in China, the country in which the Respondent appears to reside.
The Panel finds that the Complainant has rights and continues to have such rights in the relevant GUCCI mark.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s GUCCI mark; (b) non-distinctive elements such as “outlet”, “online/s”, “news”, “shoes”, “shop”, “sale”, the article “the”, the “hyphen” and a final letter “e” (in the disputed domain name ) and (c) the top level domain suffixes such as “.com”, “.net” and “.org”. The most prominent and distinctive part of the disputed domain name is the word “gucci” which is identical to the Complainant’s registered trademark. It is an accepted principle that the addition of suffixes such as “.com”, “.net” or “.org” being the generic top-level domain is not a distinguishing factor. Furthermore, the addition of descriptive and non-distinctive terms as “outlet”, “online/s”, “news”, “shoes”, “shop”, “sale” do not provide additional specification or sufficient distinction from the Complainant or its GUCCI mark. In fact, the Panel agrees with the Complainant that in the present case, the addition of such descriptive and non-distinctive terms has the effect of increasing the confusing similarities and inducing Internet users to believe that there is an association between the disputed domain names and the Complainant.
Bearing in mind the following factors, in particular (a) the considerable reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s GUCCI trade mark; and (c) the dominant component of the disputed domain names, the Panel therefore finds that the disputed domain names are confusingly similar to the GUCCI mark in which the Complainant has rights.
Thus, the Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of “Gucci” in his/her business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
4. The Complainant and its GUCCI mark, both alone and in combination with other word and/or device elements, enjoy a worldwide reputation including China, with regard to its luxurious goods in the high-fashion and leather industry (including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances). Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel is of the opinion that the GUCCI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names’ registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) The Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its GUCCI mark, both alone and in combination with other word and/or device elements, as well as the market presence of the Complainant and its marks in the Chinese market (evidenced by the registration of the GUCCI mark in China and the sale of its luxurious goods in the high-fashion and leather industry), the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names.
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel finds that the Complainant’s GUCCI mark which has acquired a worldwide reputation in luxurious goods in the high-fashion and leather industry is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of his choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain names were registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.
The Panel’s conclusion is further buttressed by evidence adduced by the Complainant showing the conduct of the Respondent in relation to the use of the disputed domain names:
1. That the domain names , , , , and pointed to web sites that reproduce the look and feel of the Complainant’s official web site “” and on which apparently counterfeit goods under GUCCI mark are advertised and offered for sale.
2. That the Complainant’s trademarks are misappropriated and apparently counterfeit Gucci products are also advertised on the web site located at “www.” and are offered for sale on the web site under the disputed domain name .
3. That the disputed domain name is redirected, for the time being, to a web site where GUCCI logo is misappropriated.
Given the worldwide reputation of the Complainant’s GUCCI mark in the luxurious goods in the high-fashion and leather industry, the compelling conclusion is that the Respondent, by choosing to register and use domain names which are identical or confusingly similar to the Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent, by operating the web sites located at the disputed domain names, appears to have knowingly attempted to attract Internet users to his web sites for financial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web sites or the goods offered or promoted through the Respondent's web sites, according to paragraph 4(b)(iv) of the Policy.
In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent are indicative of registration and use of the disputed domain names in bad faith.
The Panel finds for the Complainant on the third part of the test. 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, , , , , , , , , and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: November 8, 2011
Full & Egal Universal Law Academy