The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondents are Zhang Jiawen / Zeng Aiqin / Zhou Honghai / Zhuhonghai / Zhou Hong Hai / Honghai Zhou / Liu Min / Jianghong Wang of China. 2. The Domain Names and Registrar
The disputed domain names , , , (), , , , , , , , , , (), , , , , , , , , , , , , , , , , , , , , , , and (the “Disputed Domain Name(s)”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the registrant’s 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 28, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 6, 2016. 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 Guccio Gucci S.p.A., an Italian Public Limited Company which belongs to the international conglomerate company Kering (previously Pinault-Printemps-Redoute, PPR), one of the leading groups worldwide in apparel and accessories.
It is the owner of multiple trademark registrations for the GUCCI mark in multiple jurisdictions around the world. These include, in particular, the following trademarks (the “Trademarks”) for many goods and services in connection with its services:
- The Italian trademark GUCCI No. 801,958 originally filed on January 13, 1977, and duly renewed thereafter until the last renewal request filed on November 17, 2006.
- The Community Trademark GUCCI No. 000,121,988 registered on November 24, 1998, and duly renewed thereafter until the last renewal request filed on April 1, 2006.
- The International trademark GUCCI No. 429,833 registered on March 30, 1977, and last renewed on March 30, 2007.
The Complaint was filed regarding the following Disputed Domain Names:
- The Disputed Domain Name registered on December 14, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on April 2, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on November 10, 2014.
- The Disputed Domain Name registered on August 30, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on June 12, 2012.
- The Disputed Domain Name registered on January 21, 2013.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on June 23, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on April 1, 2011.
- The Disputed Domain Name registered on August 1, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on November 12, 2014.
- The Disputed Domain Name registered on May 17, 2011.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name registered on September 9, 2015.
- The Disputed Domain Name () registered on September 9, 2015.
- The Disputed Domain Name () registered on September 9, 2015.
At the time the Complaint was filed, the websites at the Disputed Domain Names redirected to pages offering for sale products linked to the Complainant’s business. 5. Preliminary Procedural Issue: Consolidation of the Disputed Domain Names
The Complaint has been filed by the Complainant against multiple respondents, in respect of multiple domain names.
According to paragraph 4(f) of the Policy, “in the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes at its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN”.
The Panel is therefore required to determine, as a preliminary matter, whether the filing of the Complaint in this form is to be permitted. The Panel should permit the consolidation in the case of a complaint filed against more than one respondent where the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties (paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the websites at the Disputed Domain Names are almost identical. Moreover, the Respondents chose for the Disputed Domain Names the same Registrar, are making use of the same
domain name server; the Respondents’ email addresses are almost identical.
For the purposes of the Decision, the Disputed Domain Names should be divided into three different groups. A. Consolidation of the Disputed Domain Names: First Group
Even though the Disputed Domain Names , , , , , and have been registered in the name of four different Registrants, they share the same authoritative email address (see Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057). B. Consolidation of the Disputed Domain Names: Second Group
The Disputed Domain Names , , (), , , , , , , , , (), , , , , , , , , , , , , , , , have been registered under the same Registrant name and share the same email address.
Additionally, the Registrant of the Disputed Domain Names belonging to the Second Group is also the registrant of three Disputed Domain Names belonging to the First Group. C. Consolidation of the Disputed Domain Names: Third Group
Even though the Disputed Domain Names , and have been registered in the name of two different Registrants, they share the same authoritative email address.
As an additional element, two of the present Respondents were already respondents in a previous decision in which the panel considered that “the Complainant has submitted evidence of common control of the disputed domain names, including that the disputed domain names resolve to extremely similar websites offering the same goods for sale. In light of this evidence, the Panel finds consolidation appropriate in this case” (see Stefano Ricci S.p.A. v. Honghai Zhou, Zhou Hong Hai, Li Fanglin,WIPO Case No. D2015-0095).
Because the Respondents of the three Groups have defaulted in providing a Response to the allegations of the Complainant, certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations.
In these circumstances, the Panel finds that the Complainant has demonstrated that the Disputed Domain Names and the websites to which they resolve are subject to common control. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient. 6. Parties’ Contentions A. Complainant
The Complainant asserts that it has registered thousands of national and international trademarks for GUCCI worldwide.
Since 1921, the Complainant has used the GUCCI mark and the trademark GUCCI was regularly used by the Complainant for more than 80 years in connection with products in the high fashion and leather industries.
The Complainant enjoys a worldwide reputation and goodwill as one of the leading manufacturers of fashion products. Moreover, the Trademarks were and are currently supported by intensive advertising campaigns worldwide.
According to the Complainant, the Disputed Domain Names are confusingly similar to the Trademarks seeing that they incorporate the Trademarks in their entirety and that the addition of a generic Top-Level Domain (“gTLD”) such as “.com”, “.info”, or “.net” does not sufficiently distinguish the Disputed Domain Name from the Trademarks.
The Complainant has exclusive and prior rights in the Trademarks and the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. Indeed, the Respondents have no connection or affiliation with the Complainant and have not received any license or consent, express or implied, to use the Trademarks.
The Complainant contends that the Respondents registered the Disputed Domain Names in bad faith. At the time of the registration of the Disputed Domain Names and because they consist of the reproduction of the Trademarks, the Respondents had constructive knowledge of the Trademarks. The Respondents have intentionally chosen the Disputed Domain Names based on the Trademarks in order to disrupt the Complainant’s business.
Moreover, the Complainant asserts that the Respondents are using the Disputed Domain Names in order to sell counterfeit GUCCI products, along with products of the Complainant’s competitors, which does not support a finding of rights or legitimate interests.
The Complainant tried to contact the Respondents but the Respondents did not reply.
The Respondents are deliberately using the Disputed Domain Names in connection with the Trademarks in order to mislead consumers by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondents’ websites.
Indeed, according to the Complainant, it is inconceivable that the Respondents were unaware of the existence of the Trademarks at the time the Disputed Domain Names were registered.
The Respondents are using the Disputed Domain Names in order to promote the sale of prima facie counterfeit products, which does not support a finding of good faith.
For the foregoing reasons, the Complainant requests that the Disputed Domain Names be transferred to the Complainant. B. Respondents
The Respondents did not reply to the Complainant’s contentions and are therefore in default. 7. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent1 did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview 2.0, the consensus view of UDRP panelists is that a respondent’s default does not automatically result in a decision in favor of the complainant. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Names and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant’s reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod’s Closet,WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Names are identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for GUCCI, including the examples cited in the Factual Background. The Panel therefore turns to the second part of the inquiry.
It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888).
Here, the Disputed Domain Names incorporate the Complainant’s GUCCI trademark in its entirety with the mere addition of generic, geographic or descriptive terms and/or numbers (the Chinese script additions refer to handbags).
However, the addition of such terms and numbers does not sufficiently distinguish the Disputed Domain Names from the Trademarks.
Regarding the addition of the gTLDs “.com”, “.net”, and “.info” to the Disputed Domain Names, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
Indeed, “a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (“.com”, “.net”) does not change the assessment of confusing similarity” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Names are confusingly similar to the Trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names:
“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 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s Trademarks.
The Respondent’s name does not bear any resemblance to the Disputed Domain Names nor is there any basis to conclude that the Respondent is commonly known by the Trademarks or the Disputed Domain Names. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names in light of the Complainant’s evidence that the Respondent’s intention was to benefit from the Trademarks’ reputation to disrupt the Complainant’s business and to illegitimately trade on its fame for commercial gain and profit.
On the contrary, the websites at the Disputed Domain Names offer for sale prima facie counterfeit GUCCI products, along with products of the Complainant’s competitors, which does not support a finding of rights or legitimate interests (see Cartier International, N.V., Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758).
Indeed, “The redirection of users to websites which appear to sell counterfeit goods branded GUCCI strongly suggests that the Disputed Domain Names are being used for improper purposes or at least purposes inconsistent with a legitimate interest or right” (see Guccio Gucci S.p.A. v. Smith Davilv,WIPO Case No. D2012-0052).
The Respondent has not rebutted this by way of a Response or otherwise and the way that the Respondent has been using the Disputed Domain Names, see below under section C, does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant has shown extensive and long use of the Trademarks.
In the Panel’s view, the Respondent had, necessarily, knowledge of the Trademarks when registering the Disputed Domain Names since the Trademarks had been used for over 80 years at the time of registration.
This belief is reinforced by the fact that the Disputed Domain Names redirect to pages offering for sale prima facie counterfeit GUCCI branded products.
In the absence of any explanation from the Respondent, the Panel finds it more likely than not that the Respondent intentionally registered domain names identical to the Trademarks to benefit from the goodwill associated with the Trademarks and is using the Disputed Domain Names to intentionally attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Trademarks.
Indeed, “the Complainant and its GUCCI mark, both alone and in combination with other word and/or device elements, enjoy a worldwide reputation including China, with regard to its luxurious goods in the high-fashion and leather industry (including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances). Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel is of the opinion that the GUCCI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant” (see Guccio Gucci S.p.A. v. Liuqing Wu, Feiji Lu,WIPO Case No. D2011-1506).
The websites at the Disputed Domain Names promote the sale of prima facie counterfeit GUCCI branded products, along with products of the Complainant’s competitors. This element must be considered as further evidence that the Respondent is using the Disputed Domain Names in bad faith.
Additionally, the Panel finds further evidence of bad faith on the part of the Respondent in the fact that the Respondent has engaged in a pattern of registering and using domain names incorporating the Trademarks and that the Respondent registered the Disputed Domain Names by using incomplete and/or inaccurate contact information.
Finally, the Panel finds that the Respondent’s failure to counter the Complainant’s allegations amounts to an adoptive admission of these allegations.
Noting that the Disputed Domain Names incorporate the Trademarks, together with the gTLDs “.com”, “.info” and “.net”; that no Response has been filed; the use to which the Disputed Domain Names have been put and that there appears to be no plausible good faith use that could be made by the Respondent of the Disputed Domain Names, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 8. 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 Disputed Domain Names be transferred to the Complainant:
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Nathalie Dreyfus
Sole Panelist
Date: January 19, 2016
1 For the remainder of the Decision, the Panel will refer to a single Respondent.
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