The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Brian E. Nielsen of Boise, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names,
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are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2013, the Registrar transmitted by email to the Center its verification response confirming among others things that:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are registered in the name of the Respondent and the contact details are correct;
(c) the Registration Agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain names; and
(e) the disputed domain names were registered by the Respondent on March 27, 2013.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 11, 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 the famous fashion design house. Amongst other things, it claims to have thousands of national and international trademark registrations around the world for, or based on, GUCCI. These include:
- Italian Registration No. 00801958 for GUCCI, filed on January 3, 1977;
- International Registration No. 429833 for GUCCI registered from March 30, 1977 in classes 3, 14, 18 and 25; and
- Community Trade Mark (CTM) Registration No. 000121988 for GUCCI registered on November 24, 1998 in all classes.
As noted above, the disputed domain names were registered by the Respondent on March 27, 2013. They resolve to web pages which offer for sale clothing and accessories under the trademark GUCCI, but also other well-known brand names such as BULGARI, CELINE, CHANEL, LOUIS VUITTON, PRADA and HERMES. 5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record. It was not possible to serve the documents physically on the address included in the WhoIs records as the address was invalid. Similarly, attempts to contact the Respondent by telephone on the number included in the WhoIs records failed. The Registrar, however, has confirmed these details as correct. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above and a very strong reputation in that trademark.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the generic Top-Level Domain (gTLD) “.org” of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252.
Apart from the gTLD component “.org”, each of the disputed domain names consists of the Complainant’s registered trademark plus the elements “by” and a descriptive term such as “hasten” or “holy” and the letter “jp”. As the Complainant points out, the letters “jp” are the typical country-code identifier for Japan.
The distinctive element in each disputed domain name is the Complainant’s trademark, GUCCI. The word “Gucci” may be a surname. However, it will be immediately recognized by many people as identifying the trade source of the Complainant’s products. The inclusion of the further, descriptive terms in each disputed domain name does not dispel that distinctive function. Moreover, a natural reading of each disputed domain name for many, if not most, persons familiar with the English language would understand the disputed domain names as being something called “Gucci” (made or provided) by the further (descriptive) term. While this may teach away from GUCCI as a trade source, it nonetheless misrepresents the trade source of the GUCCI (items). It plainly seeks to take advantage of the trademark function of the term “Gucci”. The form of the disputed domain names therefore seeks to associate the GUCCI mark with some other source. That type of association can be considered to fall within the types of abusive or extortionate uses of trademarks which the Policy seeks to protect against. See e.g. in a different context: MLP Finanzdienstleistungen AG v. WhoisGuard Protected,WIPO Case No. D2008-0987.
Accordingly, the Panel finds that the Complainant has established that each of the disputed domain names is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations that demonstrate a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, its 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
These are illustrative only and are not an exhaustive listing of the situations in which the respondent can show rights or legitimate interests in the domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent cannot rely on paragraph 4(c)(iii) as the, or at least many of the, disputed domain names resolve to websites offering products for sale.
The disputed domain names are plainly not derived from the Respondent’s own name.
According to the Complainant, it has not authorized the Respondent to use its trademarks. Nor does it have any other association or relationship with the Respondent.
The Complainant also contends that the products offered through the Respondent’s website bearing the trademark, GUCCI, are prima facie counterfeit. It is not clear from the Complaint, however, what is meant by the qualification “prima facie” or on what the basis for that conclusion is. Arguably, the Respondent could be taken not to have disputed the allegation as he has chosen not to file any Response.
That said, it is clear that in at least a number of cases the Respondent is using the disputed domain names to offer for sale products under brand names of the Complainant’s trade rivals.
In these circumstances, the Panel finds that the Complainant has established a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names and, that case being unrebutted by the Respondent, the Panel finds that the Complainant has established this requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and are being used in bad faith by the Respondent.
The scale on which the Respondent offers for sale products under brand names which compete with the Complainant’s products as revealed in the Annexes to the Complaint is not incidental, minor or trivial. Even assuming that the products bearing the trademark, GUCCI, offered from the Respondent’s websites be genuine and not, as the Complainant alleges, counterfeit, therefore, the offering for sale from those websites of competitors’ products is use in bad faith under the Policy.
As already noted, the Complainant’s trademark is very well-known throughout the world. In addition, as discussed above, the structure of the disputed domain names is predicated on the distinctive significance of the Complainant’s trademark. Further, the websites to which the disputed domain names resolve offer for sale the products which the Complainant sells under its trademark and other fashion items and accessories from very well-known fashion houses. In these circumstances, the Panel infers that the Respondent was plainly aware of the Complainant and its trademark when he registered the disputed domain names.
In these circumstances, therefore, the Panel infers that the Respondent registered each of the disputed domain names to take advantage of the trademark significance of the Complainant’s trademark and, in the absence of authority from the Respondent or other justification, in bad faith.
Accordingly, the Panel finds that the Respondent registered and is using each of the disputed domain names in bad faith under the third requirement 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 disputed domain names;
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be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: December 21, 2013
Full & Egal Universal Law Academy