The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Yubao Cai of Rio Rancho, New Mexico, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 16, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 25, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2012.
The Center appointed Ross Wilson as the sole panelist in this matter on November 19, 2012. 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 Public Limited Company which is a part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute (PPR). The Complainant has an international reputation 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 Gucci Fashion House was founded in 1921 by Guccio Gucci.
The Complainant is the owner of a large number of national and international trademark registrations worldwide, including an Italian registration of GUCCI filed on January 13, 1977, an international registration of GUCCI registered on March 30, 1977 and a Community Trademark registration of GUCCI registered on November 24, 1998.
The trademark GUCCI is supported by intensive advertising campaigns worldwide, with campaigns appearing in important international magazines with broad circulation such as, Vogue, Vanity Fair, GQ and Glamour and a strong presence online through the most popular social media, such as Facebook, Twitter, YouTube and FourSquare. As a consequence, the Complainant enjoys a worldwide reputation and goodwill as one of the leading manufacturers of luxury fashion products.
The Complainant and its associated companies belonging to the Gucci Group are the owners of more than one thousand domain names identical to or comprising the mark GUCCI.
The Respondent registered the disputed domain names , , , and in November 2011.
On July 24, 2012, the Complainant’s representative emailed a cease and desist letter to the Respondent requesting the Respondent to cease use of the disputed domain names and transfer them to the Complainant. A reminder was emailed on August 29, 2012. The reminder was also sent by registered mail on September 4, 2012. No responses were received and the registered mail was returned to the sender. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names registered by the Respondent are confusingly similar to trademarks in which the Complainant has rights especially as they incorporate the whole of the Complainant’s GUCCI trademark. In the Complainant’s view the fact that the disputed domain names include the non-distinctive elements “outlet”, “sale/s”, “store”, and “handbag/s” combined variously with each other does not affect the confusing similarity.
According to the Complainant it is apparent that the Respondent’s use of the disputed domain names can be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. The Complainant argues that 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 the Respondent.
The Complainant provided evidence of the Respondent’s use of the disputed domain names demonstrating that four of the disputed domain names are “parked” displaying links to third party websites dedicated to the sale of bags and accessories. The other disputed domain name redirects users to a website which displays the Complainant’s trademarks and images taken from the Complainant’s advertising campaigns and selling prima facie counterfeit products bearing GUCCI trademarks.
In the Complainant’s view it is inconceivable that the Respondent was unaware of the existence of the Complainant or the Complainant’s trademark GUCCI. Therefore, it is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names. The Complainant considers the Respondent was indeed well aware of the Complainant’s rights in the famous trademark and registered the disputed domain names with clear intentions to refer to the Complainant’s mark.
The Complainant has cited evidence to show that the Respondent is acting in bad faith by operating the websites located at the disputed domain names to attract Internet users to its websites 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 websites or the goods offered or promoted through the Respondent’s websites.
The Complainant contends that the Respondent is acting in bad faith by free-riding on the goodwill of the Complainant’s mark for commercial gain and using its website “www.” to attract Internet users to sell prima facie counterfeit products of the Complainant at prices which are much cheaper than for the original products. Also, the other four websites have sponsored links to sites offering clothing and accessories of the Complainant’s competitors from which the Respondent earns pay-per-click revenue.
Finally, the Complainant states bad faith is further evident through the Respondent’s use of incomplete or false contact information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has had registered rights in the GUCCI trademark since 1977.
The disputed domain names consist of the Complainant’s trademark in its entirety together with the suffix words “outletsalesstore”, “outletsale-store” and “outletshandbag” and the prefix/suffix combination words of “outlet…handbagsale” and “outlet…handbags” all with the extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The only difference between the Complainant’s trademark and the disputed domain names is the addition of the generic/descriptive terms which cannot in the Panel’s opinion be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil,WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871, the addition of a descriptive term does not typically serve to distinguish a disputed domain name but, may serve to accentuate rather than to diminish the confusing similarity. In fact, the additional words refer to a generic means of marketing (outlets) and to a generic product line of the Complainant (handbags) both of which increase the likelihood of confusion (see Guccio Gucci S.p.A. v. Bravia Stoli,WIPO Case No. D2009-1170).
Finally, as noted in Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 the additional words are too tenuous and insubstantial to detract from the conclusion that the disputed domain names are confusingly similar to the Complainant’s trademark where the latter is included in its entirety in the disputed domain names.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain names. Therefore, the Complainant has proven under the circumstances that the disputed domain names are confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain names. The Respondent has chosen to use the disputed domain names that reflect the Complainant’s trademark in its entirety without authorisation by the Complainant. Based on the evidence provided by the Complainant the disputed domain names are either parked or resolve to a website that offers counterfeit goods for sale. No rights or legitimate interests derive from such use of the disputed domain names incorporating the Complainant’s trademark.
In addition, the Complainant has denied having any connection with the Respondent or provided any permission to use its trademark. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
The Panel considers the lack of rights or legitimate interests in this case is similar to the circumstances in Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trade mark of the complainant and deliberately registered the disputed domain name precisely because it would be recognised as such.
In Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu,WIPO Case No. D2012-0888 the panel found that “the sales of counterfeit goods from a domain name that incorporates the mark used for genuine goods to which the counterfeits correspond, does not provide a legitimate interest in that domain name. Indeed, the Panel would go further and say that such use of the trade mark of another in the domain name comprises positive evidence that a right or legitimate interest in the domain name could not exist”.
As stated by the panel in Hertz System, Inc. v. D/Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615 “Manifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative procedure (and through the Complainant’s cease and desist communications) the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain names in bad faith.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”. In the Panel’s view the Respondent’s registration of the disputed domain names represents a deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain names. As stated in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “ It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection of the disputed domain names is so obviously connected to the Complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith.
The fact that the disputed domain name points to a web page that uses the Complainant’s trademark and offers prima facie counterfeit GUCCI products for sale makes this a clear case of intentionally attempting to attract, for commercial gain, Internet users to the website. Similarly, bad faith is evidenced by the use of the other four disputed domain names as parked pages where Internet users find a list of sponsored links to third party websites dedicated to the sale of bags and accessories obviously generating click through revenue for the Respondent.
The evidence submitted by the Complainant demonstrates that the Respondent has registered and used the disputed domain names in bad faith. Numerous UDRP panels have held that attracting Internet traffic and diverting it to a website selling products of complainant’s competitors by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 where the panel found a strong indicator of respondent’s bad faith when the respondent was attracting Internet users by using the VOLVO mark within the disputed domain names in order to re-direct such consumers to other websites promoting and selling competitors’ products. See also Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774 where the panel found the selling of Nikon products and those of its competitors from the disputed domain name site constituted an improper use of complainant’s mark to attract Internet users to respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site.
Noting that the Respondent has not rebutted any of the Complainant’s contentions, the Respondent’s use of incomplete or false contact information and the fact that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and used 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 , , , and be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: December 3, 2012
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