The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Guangzhou saichi shoes co., ltd, of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2013, 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.
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 proceeding commenced on January 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013. An email communication was received by the Center on January 15, 2013 from the Respondent’s Administrative Contact email address. On February 1, 2013, the Center notified the Parties it would proceed to appoint the Administrative Panel in this matter.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 5, 2013. 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 A. Complainant
The Complainant is a company incorporated in Italy.
The Complainant is the owner of numerous registrations worldwide for the trade mark GUCCI (the “Trade Mark”).
The Trade Mark is a well-known trade mark in the fashion field. B. Respondent
The Respondent is a company incorporated in China. C. The Disputed Domain Name
The disputed domain name was registered on May 29, 2003. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a subsidiary of one of the world’s leading fashion groups. The Trade Mark is a well-known trade mark used by the Complainant worldwide. The Trade Mark achieved 38th place in the 2012 Interbrand ranking of the world’s leading brands. It was first used in 1921.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the letter “e”, separated by a hyphen.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not commonly known by the disputed domain name and is not making a bona fide commercial use of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
The Respondent has used the disputed domain name in respect of a website offering for sale counterfeit Gucci products (the “Website”). The Complainant took legal proceedings in China against the Respondent in respect of the seizure by the police in China of 30 pairs of counterfeit Gucci shoes packaged in boxes bearing, inter alia, reference to the disputed domain name. The Complainant also obtained an order from the United Kingdom Company Names House Tribunal on December 6, 2012 cancelling the registration of the company name “UK Gucci International Limited”, which had previously been used on the website in order to make it seem as if the website was authorised or endorsed by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
On January 15, 2013 the Center received an email communication from a company known as Zhongshan Gaoli Lock Product Inc. This company claims that its contact information has been used without authorisation by the Respondent in the registration information for the disputed domain name, and that it has no relationship with the Respondent and the disputed domain name. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the dates of registration of the disputed domain names by over 80 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name comprises the Trade Mark in its entirety together with a hyphen and the letter “e”. This does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 80 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Complainant has filed compelling evidence to show that the disputed domain name has been used in respect of counterfeit Gucci footwear.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, 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 or service on the Respondent’s website or location.
The Complainant has filed cogent evidence to suggest the Complainant has registered and used the disputed domain name in respect of a website offering for sale counterfeit Gucci footwear. Such use of the disputed domain name amounts to clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: February 9, 2013
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