The Complainant is Guccio Gucci S.p.A of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Wode of Hong Kong, China and Macau, China. 2. The Domain Names and Registrar
The following disputed domain names (collectively the “Domain Names”) are registered with D, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, 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 regarding the file size, the Complainant explained the exceptional size of the annexes caused by the necessity of providing the Panel with sufficient evidence of the infringing registration and use of 165 domain names on April 12, 2013.
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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 16, 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
The Complainant is an Italian public limited company which is a part of the Gucci Group. The Complainant is a well-known Italian luxury fashion and leather goods brand, which has traded under the Gucci name for over 80 years. The Complainant has engaged in extensive advertising to promote its goods, with campaigns appearing in important international magazines with broad circulation such as, inter alia, Vogue, Vanity Fair, GQ and Glamour.
The Complainant has held a trade mark registration for the word mark GUCCI (the “GUCCI Mark”) since at least September 1977 in Italy. It has also held an International registration for the GUCCI Mark since 1977 and a Community Trade Mark registration for the GUCCI Mark since 1998.
The Domain Names were all created in December 2012 and January 2013, with the majority of them being created on December 25, 2012, January 8, 2013 and January 22, 2013. Currently, the Domain Name resolved to an Internet site (the “Respondent’s Website”) that displays the GUCCI Mark and appears to offer products branded with the GUCCI Mark at steep discounts. The other Domain Names are currently inactive or suspended. Prior to the commencement of this proceeding all the Domain Names other than , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , all redirected to the Respondent’s Website or similar sites. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s GUCCI Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and is being used in bad faith.
The Complainant is the owner of the GUUCI Mark having registered the GUCCI Mark both in Italy and internationally since 1977.
The Domain Names incorporate the whole of Complainant’s GUCCI Mark. The fact that the Domain Names include the non-distinctive elements "handbags", "free", "new", "all", "authentic", "outlet", "online", "big", "fun", "global", "bags", "cheap", "site", "shop", "store", "home", "design", "group", "company", "center", "team", "judo", etc. does not affect the confusing similarity. It is a well-established principle that the Domain Names that wholly incorporate a trademark, in particular one as famous as the GUCCI Mark, are found to be confusingly similar for purposes of the Policy, despite the fact that the Domain Names may also contain a descriptive or generic term. In addition, it should be noted that the geographical indications "japan" and "jp" (clearly designating Japan) are included in many of the Domain Names. These indications cannot be sufficient to distinguish the Domain Names from GUCCI Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or licence from the Complainant to register the Domain Names. The vast majority of Domain Names have been and still are pointed to websites, where the GUCCI Mark and images taken from official Gucci advertising campaigns are published and prima facie counterfeit Gucci branded products are offered for sale.
In a case similar to the present one, Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou , Fujian Anfu, WIPO Case No. D2012-0888, where the then respondent was using its websites to offer for sale counterfeit Gucci products at prices significantly cheaper than those for the original products, the Panel stated 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." For that reason the Respondent has not used the Domain Names for a bona fide offering of goods and services nor has it made a legitimate non-commercial or fair use of the Domain Names.
The Domain Names were registered and are being used in bad faith. The Domain Names resolve to websites that display the GUCCI Mark and offer counterfeit Gucci products. Furthermore the fact that the Respondent registered a huge number of Domain Names incorporating the GUCCI Mark goes to showing the awareness by the Respondent of the Complainant and the services it offers.
The Respondent is using its websites to attract Internet users to sell prima facie counterfeit products. The colour, cut and fabric make the products appear not to be authentic, and the prices of the products are much lower than those for the genuine products. The Respondent has clearly engaged in a pattern of conduct of registering the Domain Names, without the authorisation or approval of the Complainant, in order to profit by attracting users to the websites. Irrespective of whether the goods on the websites are in fact counterfeit GUCCI products, the Complainant notes the websites contain the GUCCI Mark as well as images and logos taken from the Complainant’s official Gucci websites and advertising. This conduct amounts to registration and use of the Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identity of the Respondent
Each of the Domain Names is registered to an entity known as “Wode”. Each of these Domain Names has the same administrative contact and the same email address. However, some of these Domain Names have different postal addresses to other Domain Names. A number of these postal addresses are clearly false or nonsensical addresses. In these circumstances the Panel is prepared to infer that the named registrant for all the Domain Names (Wode) is a single person or entity who is the named Respondent in this proceeding. The Panel therefore finds that it is proper for it to render a single decision against the Respondent in respect of all the Domain Names. The Panel refers to Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd.,WIPO Case No. D2002-0066 in which the presence of a common administrative contact, or other instances of commonality in the registration information, such as the same email address, were found to be a sufficient basis to render the same decision against different domain names. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the GUCCI Mark, having registrations for GUCCI as a trade mark in Italy. Under the Policy as written, it is not necessary for the Complainant to provide proof that it owns a mark registration in the location of the Respondent.
The Domain Names each incorporate the GUCCI Mark in its entirety. The mere addition of a generic term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see The Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. In addition the addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v. Personal/ decohouse, decohouse,WIPO Case No. D2011-0972; BP p.l.c.v. Kang-Sungkun Portraits Production,WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad,WIPO Case No. D2001-1493).
Every one of the Domain Names consists of the GUCCI Mark and either a generic term, a geographical term or a generic and geographical term. The addition of each of these terms merely suggest that that particular Domain Name refers to the Complainant in connection with whatever generic or geographical term that is appended to the GUCCI Mark.
An individual viewing any of the Domain Names may be confused into thinking that the each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s GUCCI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
In the interests of completeness, the Panel notes that it has found the following Domain Names confusingly similar to the GUCCI Mark because they consist of the GUCCI Mark and a generic word or words.
The Panel finds the following Domain Names confusingly similar to the GUCCI Mark because they consist of the GUCCI Mark, a generic word or words and a geographical term.
The Panel finds the following Domain Name confusingly similar to the GUCCI Mark because it consists of the GUCCI Mark and a geographical term.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain names incorporating the GUCCI Mark or a mark similar to the GUCCI Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Currently 164 of the Domain Names are inactive, but prior to the proceeding the Respondent has used over 120 of the Domain Names to operate websites that, without the permission of the Complainant:
(a) made reference to the Complainant’s GUCCI Mark, potentially indicating that the Respondent and its websites are in some way connected with the Complainant or offers its products; and
(b) offered products that appear on the face of it to be counterfeit Gucci products.
Such use is not a bona fide offering of goods or services. The sale 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, see Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou , Fujian Anfu, supra.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests or provide evidence that the products it advertises and sells on its websites are genuine but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of 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 Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant, its reputation and its rights in the GUCCI Mark at the time the Domain Names were registered. The Respondent’s Website and other websites to which the Domain Names resolved to makes frequent reference to the GUCCI Mark and offers what appear to be counterfeit Gucci products. Furthermore it is improbable that a person would register 165 Domain Names in a two month period that all incorporate the GUCCI Mark without having some awareness of the Complainant’s Mark. The registration of the Domain Names in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent may also have registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The registration of 165 Domain Names incorporating the GUCCI Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used and continues to use (in respect of ) the Domain Names to operate websites that sell what appears to be counterfeit Gucci goods. It therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the GUCCI Mark and then purchase purported Gucci products.
The fact that certain Domain Names have not yet been linked to an active website does not prevent a finding of bad faith being made in respect of them. In circumstances where the Respondent has registered 165 Domain Names and redirected over 120 of them into various websites selling what appears to be counterfeit Gucci products the Panel is prepared to infer that the Respondent had the same intention when registering and holding the 44 Domain Names that had not yet resolved to active websites. In any event, the passive holding of a domain name does not prevent a finding of bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In either case, the Panel finds that the Respondent has registered and is using the each of the Domain Names in bad faith under paragraph 4(a)(iii) 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 Domain Names listed below be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: May 24, 2013
Full & Egal Universal Law Academy