Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
Respondent is Lin Shi Jiang1 of Hong Kong, China. 2. The Domain Names and Registrar
The following disputed domain names (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 December 13, 2013. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2014.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 16, 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
Complainant is Guccio Gucci S.p.A., an Italian Public Limited Company that is a part of the Gucci Group and belongs to the international conglomerate company Kering.
Complainant owns thousands of national and international trademark registrations for GUCCI, including: Italian Registration GUCCI (word mark), No. 801958 (originally filed on January 13, 1977); International Registration GUCCI (word mark), No. 429833 (registered on March 30, 1977); and Community Trademark Registration GUCCI (word mark), No. 000121988 (filed on April 1, 1996) (the “GUCCI Mark” or “the Mark”). According to the Interbrand ranking, the Gucci brand was 38th amongst the Best Global Brands in the year 2013.
In light of Complainant’s substantial investments in advertising (worldwide) (e.g., magazines, online, social media), its marketing and sales, its consistent use of the GUCCI Mark for decades, and its impressive client base across all product groups, GUCCI is a well-known trademark worldwide. Furthermore, Complainant and its associated companies belonging to the Gucci Group own more than one thousand domain names identical to or comprising the GUCCI Mark. The website “”, to which most of Complainant’s registered domain names are redirected, advertises and offers for sale Complainant’s products.
Respondent registered the Domain Names between March 5, 2013 and March 31, 2013. Respondent has been redirecting over 20 of its Domain Names (e.g., , , , , , ) to websites publishing numerous hard-core pornographic images and links to other sites related to hard-core pornography. The remaining Domain Names are currently redirected to inactive websites. 5. Parties’ Contentions A. Complainant
Complaint has rights in the GUCCI Mark from many trademark registrations and long-standing use of the Mark worldwide. Respondent has been redirecting many of its Domain Names to websites publishing numerous hard-core pornographic images and links to other sites related to hard-core pornography, thus deriving income from pay-per-click (“PPC”) advertising for these other pornographic sites and seriously tarnishing Complainant’s trademark.
The Domain Names are confusingly similar to the GUCCI Mark because they incorporate the entire GUCCI Mark. The non-distinctive elements such as: “all”, “sale”, “best”, “wallet”, “big”, “cheap”, “easy”, “find”, “free”, “fun”, “global”, “billfold”, “case”, “great”, “aircraft”, “auction”, “auto”, “boat”, “bumpkin”, “business”, “bus”, “car”, “character”, “bacon”, “chaw”, “computer”, “condo”, “day”, “direct”, “distress”, “equipment”, “estate”, “fictional”, “fictitious”, “fire”, “garage”, “hayseed”, “home”, “homes”, “horse”, “house”, “industrial”, “internet”, “kin”, “land”, “media”, “medical”, “motor”, “outlet”, “group”, “private”, “property”, “quick”, “realty”, “coach”, “event”, “expert”, “fan”, “help”, “info”, “blog”, “center”, “club”, “design”, “inc”, “online”, “shop”, “store”, “job”, “jobs”, “lacquer”, “net”, “note”, “pocket”, “book”, “lead”, “letter”, “leads”, “letters”, “management”, “manager”, “marketing”, “men”, “sales”, “saler”, “service”, “site”, “solutions”, “tax”, “training”, “share”, “short”, “super”, “tech”, “ticket”, “top”, “trailer”, “truck”, “company”, “guide” “yard”, “work”, “world”, “web”, “yacht”, “hot”, “live”, “just”, “my”, “new”, “one” and “your”, differently combined, do not affect the confusing similarity.
Also, geographical indications such as “japan”, “jp”, “jpan”, “us” and “usa” (clearly designating Japan and the United States) in many of the Domain Names, do not distinguish Respondent’s Domain Names from the GUCCI Mark, and are more apt to induce confusion among Internet users as to the source and origin of the products. Further, Respondent’s substitution of the letters “i” with “1”, or “o” with “0”, or “e” with “3” and “a” with “4”, in the Domain Names , , , , , , , , , , , , , , , , , , , and also does not eliminate confusing similarity. Moreover, substituting letters with numbers in the Domain Names is a clear attempt to “typosquat” Complainant’s trademark, which has been held as per se bad faith registration and use. Lastly, many of the Domain Names also include the YAHOO trademark, and the Domain Name includes the FORD trademark. Therefore, some users could understand the combination of the two trademarks with GUCCI as a reference to some relationship or association between the respective companies who own the other trademarks.
Respondent is not a licensee, authorized agent of Complainant, or in any other way authorized to use the GUCCI Mark. Upon information and belief, Respondent is not commonly known by the Domain Names as an individual, business, or other organization, and “Gucci” is not its family name. Respondent has not provided Complainant with any evidence of the use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute. Because many of the Domain Names are currently pointing to websites consisting of pages displaying numerous hard-core pornographic images and publishing links to other sites connected with hard-core pornography, such uses are tarnishing the Mark and cannot be considered either as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the Domain Names. With regard to those Domain Names that are currently not redirected to any active website, i.e., are passively held, Complainant cannot conceive of any possible right or legitimate interest which Respondent could have in the Domain Names.
Considering the fact that the GUCCI Mark has been used since as early as 1921, it is inconceivable that Respondent was unaware of Complainant or its GUCCI Mark. Respondent was indeed well aware of Complainant’s rights in the GUCCI Mark and registered the Domain Names with clear intentions to refer to it. Regarding bad faith use, many of the websites contain hard-core adult content material and various links redirecting users to other hard-core pornographic websites, thus deriving income from PPC advertising for these other pornographic sites. The use of a domain name to divert consumers to a pornographic site is evidence of registration and use in bad faith, regardless of the registrant’s motivation. Respondent has intentionally attracted Internet users for commercial gain to its websites by creating a likelihood of confusion with the GUCCI Mark as to the source, sponsorship, affiliation, or endorsement of its websites.
With regard to those Domain Names that incorporate the GUCCI mark in its entirety along with other generic descriptive terms, and are passively held, prior cases have held that bad faith use includes not only positive action but also passive holding in the presence of other circumstances evidencing bad faith. In view of the circumstances of this case, which clearly show that Respondent has engaged in a pattern of abusive registrations to prevent Complainant from reflecting its trademark in corresponding Domain Names, and to profit off the probability of association between the Domain Names and Complainant’s GUCCI Mark, Respondent’s passive holding of the Domain Names amounts to bad faith use.
As additional circumstances evidencing bad faith, Respondent registered the Domain Names by using incomplete and/or inaccurate contact information. And Complainant sent Respondent a cease and desist letter on November 28, 2013 by the email address indicated in the WhoIs database for Respondent, to make it aware of Complainant’s rights in the GUCCI Mark and obtain the transfer of the Domain Names. Respondent did not reply to the letter although it was apparently successfully delivered. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has established its rights in the GUCCI Mark from its long-standing use and trademark registrations around the world. Those rights predate by many years the registration dates of the Domain Names.
“[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. The addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; see also, PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Banca Intesa S.p.A. v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark). Each of the 197 Domain Names incorporates the GUCCI Mark in its entirety or a misspelling/variation of the same, together with generic terms (e.g., “all”, “sale”, “best”, “big”, “cheap”, “easy”, “find”, “free”, “fun”, “global”, “great”, “aircraft”, “auction”, “auto”, “boat”, “bumpkin”, “business”, “bus”, “car”, “character”, “bacon”, “chaw”, “computer”, “condo”, “day”, “direct”, “distress”, “equipment”, “estate”, “fictional”, “fictitious”, “fire”, “garage”, “hayseed”, “home”, “homes”, “horse”, “house”, “industrial”, “internet”, “kin”, “land”, “media”, “medical”, “motor”, “outlet”, “group”, “private”, “property”, “quick”, “realty”, “coach”, “event”, “expert”, “fan”, “help”, “info”, “blog”, “center”, “club”, “design”, “inc”, “online”, “shop”, “store”, “job”, “jobs”, “lacquer”, “net”, “note”, “lead”, “letter”, “leads”, “letters”, “management”, “manager”, “marketing”, “men”, “sales”, “saler”, “service”, “site”, “solutions”, “tax”, “training”, “share”, “short”, “super”, “tech”, “ticket”, “top”, “trailer”, “truck”, “company”, “guide”, “yard”, “work”, “world”, “web”, “yacht”, “hot”, “live”, “just”, “my”, “new”, “one” and “your”), none of which serve to distinguish the Domain Names from the GUCCI Mark in any legally cognizable way.
Including generic Top-Level Domains (gTLDs) such as “.com” or “.net” in the Domain Names does nothing to distinguish them from the GUCCI Mark. Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006. And including the geographical indications “japan”, “jp”, “jpan”, “us” and “usa” (designating Japan and the United States) in many of the Domain Names, is not sufficient to distinguish the Domain Names from Complainant’s GUCCI Mark. Indeed they are more apt to cause confusion among Internet users regarding the source and origin of the products insofar as the GUCCI Mark is a well-known mark internationally, with retail stores and shops worldwide. See Hermès International v. Yuan Waihuang, Case No. D2011-1850; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768. Similarly, including words such as “wallet”, “billfold”, “case”, and “pocketbook” are more apt to cause confusion because they describe the kinds of products Complainant sells under the GUCCI Mark.
In quite a few instances, Respondent has substituted the letters “i” with “1”, or “o” with “0”, or “e” with “3” and “a” with “4”, in the Domain Names (e.g., , , , , , , , , , , , , , , , , , , , and found confusingly similar to “Game Boy”); Ladbrokes Betting & Gaming Ltd. v. Charles Osstyn,WIPO Case No. D2007-1700 ( found confusingly similar to “Ladbrokes”).
Lastly, many of the Domain Names include the YAHOO trademark, and the Domain Names and includes the FORD and COACH trademarks respectively. The public could understand the combination of the three trademarks with GUCCI as suggesting some relationship or association between the other three companies who own the YAHOO, FORD and COACH trademarks. Thus, the combination of the GUCCI Mark with the other three marks does not avoid confusing similarity. See Guccio Gucci S.p.A. v. Zhou Guodong,WIPO Case No. D2010-1695.
The Panel therefore holds that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Names. If Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names, the burden shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny 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 [Respondent’s] rights or legitimate interests to the Domain Names for purposes of [p]aragraph 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 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.”
Complainant alleges that Respondent: (1) is not its licensee or authorized agent, or in any other way authorized to use the GUCCI Mark; (2) is not commonly known by the Domain Names as an individual, business, or other organization, and “Gucci” is not its family name; and (3) has not provided Complainant with any evidence of the use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute. Complainant argues insofar as many of the Domain Names point to websites displaying hard-core pornographic images and publish links to other sites connected with hard-core pornography, such uses are tarnishing the GUCCI Mark and cannot be considered either as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the Domain Names. See Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich,WIPO Case No. D2006-0743. Furthermore, Complainant points out with regard to the group of Domain Names that Respondent is passively holding, such “use” cannot constitute any right or legitimate interest.
The Panel holds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Names, shifting the burden to Respondent to produce evidence to rebut this presumption. See 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. Insofar as Respondent has failed to adduce any contrary evidence, Complainant’s facts are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate it did not register and use the Domain Names in bad faith. Notwithstanding that, considering the longstanding, worldwide use of the GUCCI Mark and its renown, the Panel finds that it is highly likely Respondent had actual knowledge of Complainant and its GUCCI Mark when it registered - 197 times - Domain Names each of which incorporate the GUCCI Mark or a misspelling/variation of the same. See Guccio Gucci S.p.A., v. Bravia Stoli,WIPO Case No. D2009-1170; Guccio Gucci SpA v. Zhou Guodong,WIPO Case No. D2010-1695. And Respondent’s use of geographic (e.g., Japan, United States) and product-related (e.g., wallet (over 40 times), pocket book, billfold) terms in the Domain Names is further evidence that Respondent was familiar with Complainant’s business when it registered the Domain Names.
Regarding use of the GUCCI Mark in bad faith, as mentioned above, many of the websites to which the Domain Names resolve contain hard-core adult content and various links redirecting users to other hard-core pornographic web sites, thus deriving income from PPC advertising for these other sites. Such uses constitute bad faith use of a domain name. See Guccio Gucci S.p.A v. Roberto Baggio,WIPO Case No. D2009-1196; Eli Lilly and Company v. Domain Magic, LLC,WIPO Case No. D2007-0144; Prada S.A. v. Mr. Juno Kim,WIPO Case No. D2003-0757.
Paragraph 4(b)(ii) of the Policy provides that bad faith registration and use will be made out where the Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” Other panels have held that such a pattern of conduct may occur where, as here, a respondent has filed multiple domain names using the mark of one complainant. Registering 197 confusingly similar Domain Names obviously involves a pattern of conduct directed against Complainant, preventing it from reflecting its GUCCI Mark in corresponding domain names. See Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,WIPO Case No. D2003-0602.
With regard to those Domain Names that Respondent is passively holding, prior cases have established that the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding, in the presence of other circumstances evidencing bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel has already found that the GUCCI Mark is a well-known trademark, that Respondent likely knew about Complainant and the rights in the Gucci Mark when it registered the 197 Domain Names, and that Respondent does not have any rights or legitimate interests in the Mark. Indeed, it is difficult to imagine any circumstances in which Respondent could use the Domain Names without possibly infringing Complainant’s registered trademark. Furthermore, the Panel has found that Respondent’s registration of the 197 Domain Names constitutes a pattern of intentionally obstructive behavior. Respondent has parked the Domain Names without using them and without submitting any evidence whatsoever of any good faith use of or intention to use the Domain Names. All these circumstances point to bad faith on the part of Respondent at the time of registration, and continued bad faith throughout its passive holding.
Additional circumstances evidencing bad faith are that Respondent : (1) typo-squatted by substituting letters with numbers in the Domain Names; (2) registered the Domain Names by using incomplete and/or inaccurate contact information (see footnote 1) (see Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352); and (3) failed to reply to the cease and desist letter sent by Complainant’s legal representatives (see Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator,WIPO Case No. D2010-1589; The Great Eastern Life Assurance Company Limited v. Unasi, Inc.,WIPO Case No. D2005-1218).
The Panel therefore holds that Complainant has established the third element of paragraph 4(a) 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 following Domain Names
be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: January 30, 2014
1 The Registrar confirmed that Lin Shi Jiang is the named registrant for all the Domain Names. The WhoIs databases for all of the Domain Names lists registrant’s named organization also as Lin Shi Jiang. The email address of the listed registrant and administrative contact published on the WhoIs databases for all of the Domain Names is the same (i.e., […]@). And the technical contact information of all Domain Names is the same (i.e., White, Eric: […]@, […], Burlington, Massachusetts, United States of Ameirca). While there are slight differences in the postal addresses, which might be deliberately misleading, the Panel finds that this is a case where multiple domain names have been registered by the same person or entity.
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