The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Ryan Eddie of the United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2014. On March 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 25, 2014, 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 proceedings commenced on April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. The Respondent did not submit any response. Accordingly, the Center informed the parties it shall proceed with the panel appointment on May 5, 2014.
The Center appointed Halvor Manshaus as the sole panelist in this matter on May 5, 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
The Complainant is an Italian public limited company belonging to the Gucci Group, a world famous player in the fashion industry. The Complainant has a considerable marketing presence in mainstream media, including fashion and apparel magazines, as well as in social media.
The Complainant owns thousands of national and international trademark registrations, including International Trademark Registration No. 429833 (GUCCI), registered in 1977; and Community Trademark Registration No. 000121988 (GUCCI), registered in 1996.
Moreover, the Complainant owns over a thousand domain names incorporating the mark GUCCI.
The Respondent is Ryan Eddie of the United States of America. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. The disputed domain names all incorporate the Complainant’s highly distinctive and famous mark GUCCI in full, and only differ from said mark through the addition of various prefixes and suffixes.
A number of the disputed domain names include pre- and suffixes that are completely generic, such as “authentic”, “big”, “outlet” and “buy”. The addition of these generic suffixes is not enough to avoid a confusing similarity between the Complainant’s mark GUCCI and these domain names.
Some of the other disputed domain names include pre- and suffixes that are simply geographical destinations, such as “boston”, “chicago” and “jp”, and said pre- and suffixes cannot be considered as sufficient to distinguish the disputed domain names from the Complainant’s mark. The same applies for pre- and suffixes where letters have been replaced with numbers, such as “0utl3t”, and the suffix “Nordstrom”, as the latter suffix simply indicates a relationship between the Complainant’s company and the fashion and apparel company Nordstrom – it does not make the disputed domain names any less confusingly similar.
Thus, the addition of said pre- and suffixes is not sufficient to avoid a confusing similarity between the Complainant’s mark GUCCI and the disputed domain names.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not in any way affiliated with the Complainant, nor has the Complainant given any license, authorization or permission to the Respondent with respect to registering or using the disputed domain names. The Respondent is not commonly known as or called GUCCI and does not use the disputed domain names in connection with any bona fide offering of goods or services before any notice of the domain dispute. On the contrary, many of the disputed domain names refer to websites offering prima facie counterfeit GUCCI products, or websites that are merely parking sites with sponsored links. The Complainant alleges that the Respondent seeks to achieve illegitimate commercial gain from the sales of prima facie counterfeit products and from the sponsored links. Some of the websites which the disputed domain names refer to are simply passive holding pages, but the Complainant cannot think of any possible right or legitimate interest the Respondent has in passively holding the disputed domain names which incorporate the Complainant’s distinctive mark GUCCI.
Furthermore, the Complainant submits that the disputed domain names were registered and are being used in bad faith. There is no doubt that the Respondent was and is aware of the Complainant and the Complainant's mark GUCCI. The Respondent’s purpose of registering the disputed domain names were to capitalize on the Complainant’s reputation, by diverting Internet users, searching for the Complainant’s products online, to the websites corresponding to the disputed domain names – where the Respondent, inter alia, is offering prima facie counterfeit Gucci products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has, in accordance with paragraphs 3(c) and 10(e) of the Rules, requested that the proceedings in relation to all the disputed domain names be consolidated, as the domain names are under common control by the same entity or person. The Registrar has confirmed that the disputed domain names are all registered by “Ryan Eddie”. The Panel agrees that it is highly likely that the disputed domain names are under common control by the same entity or person.
As the present case in the Panel’s view is a typical and clear case of domain squatting or cybersquatting, which the Policy is designed to stop, the Panel’s findings will be kept relatively brief. A. Identical or Confusingly Similar
All of the disputed domain names incorporate the Complainant’s mark GUCCI in full, and only differ from the Complainant’s mark by the inclusion of various suffixes and prefixes. The Panel agrees that none of said pre- or suffixes are sufficient to avoid a confusing similarity between the Complainant’s mark and the disputed domain names. A number of previous UDRP decisions state that the addition of such pre- and suffixes are not sufficient to avoid such a confusing similarity, cf. Alstom v. Daniel Bailey,WIPO Case No. D2010-1150; Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; and Siemens AG v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-1163.
Furthermore, the Panel refers to paragraph 1.9, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states that the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”.
The Panel thus concludes that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has informed that the Respondent has not been granted any authorization, license or permission to register and use the disputed domain names, which incorporate the Complainant’s mark GUCCI in full. There is no affiliation between the Complainant and the Respondent, nor has the Panel found any evidence whatsoever showing that the Respondent owns prior trademark rights or proprietary rights to the mark GUCCI.
The Respondent cannot claim any bona fide offering of goods or services, or any legitimate use of the mark GUCCI. Several of the websites corresponding to the disputed domain names offer prima facie counterfeit GUCCI products. This does not provide any legitimate interest in these domain names, but rather the opposite, cf. Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu,WIPO Case No. D2012-0888.
The other websites corresponding to the disputed domain names solely contain sponsored links or are simply being passively held without any content. The Panel agrees that the Respondent does not have any right or legitimate interests in holding such sites whose domain names incorporate the Complainant’s mark GUCCI in full.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(c) of the Policy. The presented evidence and circumstances referred to by the Complainant is, in the Panel’s view, sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel agrees that the Respondent registered and used the disputed domain names in bad faith. The Panel finds it certain that the Respondent was aware of the Complainant’s well-known and distinctive mark GUCCI at the time of registration of the disputed domain names. This is demonstrated through, inter alia, the Respondent’s offering of prima facie counterfeit GUCCI goods on several of the websites corresponding to the disputed domain names. The Respondent’s motivation is to attract Internet users to the website corresponding to the disputed domain name, by creating a likelihood of confusion between the Complainant’s mark and the Respondent’s website – thus leading to potential commercial gain for the Respondent, seeing as the websites contain webstores and pay-per-click ads. The passive holding of some of the disputed domain names also amounts to bad faith in the circumstances of this case.
Also, considering the fame of the mark GUCCI, the Respondent must reasonably have been aware of the mark at the time of registration, which also demonstrates the Respondent’s bad faith. Reference is made to Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163.
The Panel thus concludes that the Respondent has registered and used the disputed domain names in bad faith. 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, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Halvor Manshaus
Sole Panelist
Date: May 19, 2014
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