The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Organization shimici, Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghali of Alaska, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweihei of Alaska, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweihe of Alabama, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhongha of American Samoa, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhonghazhonghahazhong of Alaska, United States of America;
shimiyuehanshimisiyuehanshimiehaniyueh of Beijing, China; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhonghazhongha of Arizona, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 8, 2013, the amended Complaint was filed with the Center. On October 17, 2013 and November 14, 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. On November 14, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On November 15, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 November 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on January 7, 2014. 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
Complainant, Guccio Gucci S.p.A, is a company incorporated in Florence, Italy. Complainant is one of the world’s leading groups in apparel and accessories. Complainant is the owner of thousands of national and international trademark registrations for GUCCI, both alone and in combination with other word and/or device elements, including Italian registration GUCCI, No. 801958, registered since 1977, International registration No. 429833, registered since 1977, and Community registration No. 121988, registered since 1998 (Annexes 3.1.1-3.3 to the Complaint).
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, such as , and (Annex 6 to the Complaint). B. Respondent
Respondent is Organization shimici (identified variously as Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghali of Alaska, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweihei of Alaska, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweihe of Alabama, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhongha of American Samoa, United States of America; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhonghazhonghahazhong of Alaska, United States of America; shimiyuehanshimisiyuehanshimiehaniyueh of Beijing, China; Shiwushiwulihaheihaheiheiheihalihayunliliyunzhongzhongyunzhonghazhongheizhonglihaheihazhongzhongyunzhongliheizhonghaheizhonghahazhonghaliheizhongheihazhongheizhongzhonghahaweiheizhongheihaheizhongpiaohazhongheihazhongheiheihahazhonghazhonghazhongha of Arizona, United States of America) (hereinafter referred to as “Respondents”), and registered the disputed domain names between November 2012 and March 2013.
Respondents are using the disputed domain names in connection with various websites, such as websites on which Complainant’s trademarks were used and products bearing the GUCCI marks were offered for sale, and websites that offer for sale products in competition with Complainant’s own products (Annexes 7.3-7.5 to the Complaint). 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
- The disputed domain names registered by Respondents are confusingly similar to trademarks in which Complainant has rights (Annexes 3.1.1- 3.3 to the Complaint).
- The disputed domain names incorporate the whole of Complainant’s GUCCI trademark. The fact that the disputed domain names include the non-distinctive elements “always”, “make”, “happy”, “angel”, “use”, “authentic”, “best”, “bags”, “seller”, “buy”, “official”, “focus”, “sale”, “follow”, “site”, “full”, “offer”, “genuine”, “brisk”, “cheap”, “web”, “store”, “fashion”, “charming”, “movement”, “good”, “shopping”, “home”, “hot”, “but”, “date”, “made”, “discount”, “goods”, “treat”, “where”, “colorful”, “cozy”, “zone”, “house”, “real”, “soft”, “outlet”, “value”, “for”, “with”, “surprise”, “wonder”, “life”, “happiness”, “club”, “have”, “ever”, “heat”, “long”, “history”, “involving”, “multicoloured”, “now”, “promotion”, “original”, “particular”, “polychrome”, “pure”, “smart”, “tasty”, “handsome”, “variegated”, “effect”, “here”, “various”, “warm”, “winter”, “well”, “service”, “wonderful”, “you”, “here”, “only”¸ differently combined, does not affect the confusing similarity.
- It is a well-established principle that a domain name that wholly incorporates a trademark, in particular one as famous as GUCCI, is found to be confusingly similar for purposes of the Policy, despite the fact that the domain name may also contain a descriptive or generic term.
- Some of the terms selected by Respondents for their registrations of the disputed domain names are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the disputed domain names and Complainant.
- In fact, the above-detailed words, differently combined with each other, recall online locations where authentic Complainant’s products are offered for sale (see for instance the terms “goods”, “bags”, “official”, “sale”, “site”, “offer”, “genuine”, “web”, “store”, “fashion”, “shopping”, “real”, “outlet”, “original”).
(b) Respondents have no rights or legitimate interests in respect of the disputed domain names.
Respondents are not licensees, authorized agents of Complainant, or in any other way authorized to use Complainant’s trademark GUCCI.
- Respondents are not commonly known by the disputed domain names as individuals, businesses, or other organizations, and “Gucci” is not their company/organization name, which is “Shimici”.
- Respondents have not provided Complainant with any evidence of their 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.
- Some of the disputed domain names have been and still are pointed to websites on which Complainant’s figurative trademarks are published and prima facie counterfeit Gucci branded products have been offered for sale. (Annexes 7.2-7.4 to the Complaint)
- Respondents’ use can be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. Respondents did not intend to use the disputed domain names in connection with any legitimate purpose.
- Such use of said disputed domain names cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because Respondents have been undoubtedly attempted to gain from the sales of prima facie counterfeit products.
- There is a group of disputed domain names that are currently not redirected to any active website, or are redirected to a page of the Registrar’s website, i.e. are passively held.
(c) The disputed domain names were registered and are being used in bad faith.
- With respect to assessing Respondents’ bad faith in registering the disputed domain names, the trademark GUCCI is certainly well known and used since as early as 1921, it is inconceivable that Respondents were unaware of the existence of Complainant or Complainant’s trademark GUCCI, with which the disputed domain names are confusingly similar.
- Previous UDRP decisions accept that the trademark GUCCI enjoys well-known reputation. It is inconceivable that Respondents were not aware of Complainant’s trademark rights at the time of the registration of the disputed domain names.
- The use of the disputed active domain names for commercial websites where Complainant’s trademarks are misappropriated and prima facie counterfeit GUCCI products are offered for sale, clearly indicates that Respondents’ purpose in registering the disputed domain names, which incorporate Complainant’s GUCCI mark in its entirety, was to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking products under GUCCI mark to their own 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 their websites and/or the goods offered or promoted through their websites.
- Respondents, besides free-riding the goodwill of Complainant’s mark for commercial gain, are using some of their websites to attract Internet users to sell Complainant’s prima facie counterfeit products and to promote the sale of products of Complainant’s competitors. (See Annex 7.5 to the Complaint).
- Respondents have registered and used the disputed domain names, confusingly similar to the Complainant’s mark, also with the purpose of disrupting Complainant’s business.
- Such conduct, along with the fact that Respondents have registered a huge number of domain names (73) including Complainant’s well-known trademark, cannot be considered by any means a bona fide registration or use.
- There is a group of disputed domain names that, while incorporating the GUCCI mark in its entirety along with other generic descriptive terms, are passively held since they are currently not redirected to any active website, or are redirected to the Registrar’s site, which amount also to “passive holding”, as such conduct typically implies complete inaction on the part of Respondents. B. Respondents
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding and Consolidation
Pursuant to the 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. According to information from the Registrar, the language of the Registration Agreements for the disputed domain names is Chinese. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Requiring Complainant to translate the Complaint and all documents into Chinese would cause delay in contravention to paragraph 10(c) of the Rules, which requires that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”;
b) Respondents are based in the United States, save for the disputed domain names , , , , and , such a circumstance clearly indicates a familiarity of Respondents with the English language.
c) Respondents have demonstrated clear evidence of their familiarity with the requested language since all the disputed domain names include English generic terms, associated to the GUCCI trademark, in Ascii-Script which could be pronounced phonetically in English;
d) At the time when the Complaint was filed, some of the disputed domain names redirected Internet users to websites published entirely in English.
e) Complainant has thus inferred that the indication of a fake Chinese address for the disputed domain names , , , , and in the WhoIs and the choice of a Chinese registrar were intentionally made by Respondents simply to attempt to impose on Complainant the additional burden to have to file the Complaint in Chinese;
f) Despite the searches conducted, Complainant could not trace any evidence demonstrating that Respondents cannot communicate in English.
Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “ in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is an Italian company, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that many of the disputed domain names include English words, such as “always”, “make”, “happy”, “angel”, “use”, “authentic”, “best”, “bags”, “seller”, “buy”, “official”, “focus”, “sale”. (See also Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondents (except “shimiyuehanshimisiyuehanshimiehaniyueh”) appear to be U.S. based organization/individuals who may or may not be Chinese speakers (Annexes 1.1-1.2 to the Complaint). The Panel finds evidence in the present proceeding to suggest that Respondents have sufficient knowledge of English. In particular, the Panel notes that (a) the disputed domain names have been registered in English, rather than Chinese script; (b) many websites at the disputed domain names are English-based website and Respondents are apparently doing business in English through these websites (Annexes 7.2-7.5 to the Complaint); (c) many websites appear to have been directed to Internet users in Europe or the United States (particularly English speakers) rather than Chinese speakers; (d) the prices of products on many websites are in USD or GBP; (e) the Center has notified Respondents of the proceeding in both Chinese and English, and Respondents have filed no objection to Complainant’s request that English be the language of the proceeding; (f) the Center informed Respondents that the Center would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds 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 his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Multiple Respondents
The Panel is further satisfied that, in the circumstances of the present dispute, the case is one that is suitable for consolidation and resolution in a single UDRP proceeding. All the disputed domain names share the same organization (i.e. shimici), the same administrative contact and email address, while there are only slight differences in the names and addresses of the individual registrants. See further the discussion of applicable principles and jurisprudence in paragraph 4.16 of the WIPO Overview 2.0. 6.3. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names be transferred:
(i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have 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.
On the basis of the evidence introduced by 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 Panel finds that Complainant has rights in numerous trademark registrations worldwide that consist of or contain the mark GUCCI, including Italian registration GUCCI, No. 801958, registered since 1977, International registration No. 429833, registered since 1977, and Community registration No. 121988, registered since 1998 (Annexes 3.1.1-3.3 to the Complaint) and enjoys a widespread reputation in the world (Annexes 4.1-5 to the Complaint).
Each of the disputed domain names contains the word “Gucci” entirely. The addition of certain words to many of the disputed domain names - such as “2013”, “newest”, “always”, “make”, “happy”, “angel”, “use”, “authentic”, “best”, “bags”, “seller”, “buy”, “official”, “focus”, “sale”, “follow”, “site”, “full”, “offer”, “genuine”, “brisk”, “cheap”, “web”, “store”, “fashion”, “charming”, “movement”, “good”, “shopping”, “home”, “hot”, “but”, “date”, “made”, “discount”, “goods”, “treat”, “where”, “colorful”, “cozy”, “zone”, “house”, “real”, “soft”, “outlet”, “value”, “for”, “with”, “surprise”, “wonder”, “life”, “happiness”, “club”, “have”, “ever”, “heat”, “long”, “history”, “involving”, “multicoloured”, “now”, “promotion”, “original”, “particular”, “polychrome”, “pure”, “smart”, “tasty”, “handsome”, “variegated”, “effect”, “here”, “various”, “warm”, “winter”, “well”, “service”, “wonderful”, “you”, “here”, “only” (differently combined) – are descriptive or non-distinctive words and do not distinguish the disputed domain names from the GUCCI trademark. (See Guccio Gucci S.p.A. v. Huangwensheng, Shirley, wangliang, xiaomeng xiexun, jiangxiuchun,WIPO Case No. D2012-0342)
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065).
Thus, the Panel finds that the use of these words (such as ““authentic”, “best”, “bags”, “seller”, “buy”, “official”, “focus”, “sale”, “follow”, “site”, “full”, “offer”, “genuine”, “brisk”, “cheap”, “web”, “store”, “fashion”, “charming”, “movement”, “good”, “shopping”, “home”, “hot”, “but”, “date”, “made”, “discount”, “goods”, “treat”, “where”, “colorful”, “cozy”, “zone”, “house”, “real”, “soft”, “outlet”, “value”, “for”, “with”, “surprise”, “wonder”, “life”, “happiness”, “club”, “ever”, “heat”, “long”, “history”, “involving”, “multicoloured”, “now”, “promotion”, “original”, “particular”, “polychrome”, “pure”, “smart”, “tasty”, “handsome”, “variegated”, “effect”, “here”, “various”, “warm”, “winter”, “well”, “service”, “wonderful”,and the hyphens) is not sufficient to negate the confusing similarity between the disputed domain names and the trademark. By contrast, the addition of certain words 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”. (B & H Foto & Electronics Corp. v. Joel Deutsch,WIPO Case No. D2010-2121).
The Panel therefore holds that Complaint fulfils 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 circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain names:
(i) Respondents’ use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondents have commonly been known by the disputed domain names; or
(iii) Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with 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 of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has prior rights in the trademark (since at least 1977) which precede Respondents’ registration of the disputed domain names (between November 2012 and March 2013) by over 35 years. According to Complainant, Respondents are not authorized dealers of Gucci branded products. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “Gucci” in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the trademarks or to apply for or use any domain name incorporating the trademarks; (“Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272)
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names between November 2012 and March 2013.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, Respondents are using the disputed domain names in connection with various websites (or no website at all), such as websites on which Complainant’s trademarks were used and the products bearing the GUCCI marks were offered for sale, and websites that offer for sale products in competition with Complainant’s own products (Annexes 7.2-7.5 to the Complaint).
The Panel finds that Respondents have failed to produce any evidence to establish their rights or legitimate interests in the disputed domain names. The Panel therefore holds that Complaint fulfils the second condition of paragraph 4(a) of the Policy. 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 Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondents have 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 Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or location or of a product or service on Respondents’ website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith. (a) Registered in Bad Faith
The Panel finds that Complainant enjoys a widespread reputation in the GUCCI trademarks with regard to its products. Complainant is the owner of numerous trademark registrations worldwide that consist of or contain the mark GUCCI, including Italian registration GUCCI, No. 801958, registered since 1977, International registration No. 429833, registered since 1977, and Community registration No. 121988, registered since 1998 (Annexes 3.1.1-3.3 to the Complaint) and enjoys a widespread reputation in the world (Annexes 4.1-5 to the Complaint).
It is not conceivable that Respondents would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel also finds that the trademarks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Moreover, Respondents have chosen not to respond to Complainant’s allegations in the Complaint. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondents to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Thus, the Panel concludes that the disputed domain names were registered by Respondents in bad faith with the intent to create an impression of an association with Complainant and its products. (b) Used in Bad Faith
Complainant has adduced evidence to prove that by using confusingly similar disputed domain names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites offering Complainant’s Gucci products. Complainant claimed that Respondents attempted to sell counterfeit GUCCI branded products on their websites, and contended that: “Respondents’ use can be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names … Respondents did not intend to use the disputed domain names in connection with any legitimate purpose” and “Such use of said disputed domain names cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because Respondents have been undoubtedly attempted to gain from the sales of prima facie counterfeit products”.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Based on information provided by Complainant, Complainant is one of the world’s leading groups in apparel and accessories. Complainant is the owner of thousands of national and international trademark registrations for GUCCI, both alone and in combination with other word and/or device elements, since 1977, and enjoys a widespread reputation in the world (as introduced above). Complainant has received several awards including 38th place in the Interbrand’s “Best Global Brands” ranking in 2012 and the same position was confirmed in the same chart in 2013 (Annexes 4.1-4.2 to the Complaint).
Given the widespread reputation of the trademarks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve (see Annexes 7.2-7.5 to the Complaint). In other words, Respondents have through the use of confusingly similar disputed domain names created a likelihood of confusion with Complainant’s trademarks. Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepage of the disputed domain names, Internet users are likely to be led to believe that the websites at the disputed domain names are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondents have not responded to the Complaint. The Panel therefore concludes that the disputed domain names are being used by Respondents in bad faith. The passive holding of some of the disputed domain names also amounts to use in bad faith in the circumstances of this case.
In summary, Respondents, by choosing to register and use the disputed domain names which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain names and the conduct of Respondents as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following disputed domain names be transferred to Complainant:
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Yijun Tian
Sole Panelist
Dated: February 10, 2014
Full & Egal Universal Law Academy