The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondents are Lin Jing Dong of Yuncheng, Shanxi, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
On September 7, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 in both Chinese and English of the Complaint, and the proceeding commenced on September 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 5, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on October 11, 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, established in 1921, is a well-known fashion retailer that sells luxury products. It has been a subsidiary of the French luxury goods holding company Kering since 1999.
The Complainant is the proprietor of International Trademark Registration for GUCCI, designating several countries registered under No. 429833 on March 30, 1977 as well as registrations in China under No. 266977, No. 1046977, No. 178083, No.178080, No. 177033, and No. 177032.
The Complainant’s United States of America affiliated company is the owner of the U.S. Trademark Registration No. 4454342 of the figurative mark of the DOUBLE G logo, registered on December 24, 2013.
The dispute domain name was registered on November 26, 2015.
The Respondents are Yinsi Baohu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China and an individual Lin Jing Dong from Yuncheng, Shanxi, China.
The website under the disputed domain name resolved to a page that appears to be falsely advertising and selling apparently counterfeit Gucci products. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark GUCCI are identical or confusingly similar. The disputed domain name incorporates the whole of the Complainant’s registered and well-known trademark GUCCI.
No rights or legitimate Interest
The Respondents have no connection with the Complainant or any of its affiliates and have never sought or obtained any trademark registrations for GUCCI. They, therefore, have no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondents knew of the Complainant’s rights in the GUCCI trademarks given its worldwide reputation. The website under the disputed domain name also appears to be an e-commerce platform that falsely promotes and sells apparently counterfeit Gucci products. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding
The language of the Registration Agreement is in Chinese.
The Complainant requested the proceeding be in English for the following reasons:
(1) the Complainant would be disadvantaged by the proceeding in the language of the Registration Agreement (Chinese).
(2) the Complainant would be prejudiced by undue expense, delay or complication.
(3) the disputed domain name is constituted of the Complainant’s trademark GUCCI in combination with the English words “outlet” and “store” and redirects users to a website published entirely in English.
The Respondents did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondents did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. The Complainant is a company based in Italy, translating the Complaint would cause unnecessary delays and expense. There are also good reasons to believe that the Respondents can understand the language as the website under the disputed domain name is wholly in English. These factors lead the Panel to determine to follow the Center’s preliminary determination.
As the only pleading before the Panel is in English, the Panel will render its decision in English. Substantive issues A. Identical or Confusingly Similar
The disputed domain name , other than the generic Top-Level Domain (gTLD) “.com”, is confusingly similar to the Complainant’s trademark GUCCI.
The disputed domain name also composes of a generic term “outletstore”. According to previous UDRP decisions, 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” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondents have not responded to the Complaint to assert any rights or legitimate interests.
Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights or legitimate interests. These are:
“(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 Respondents have not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(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 website under the disputed domain name makes it clear the Respondents knew of the Complainant. The website appears to be an e-commerce platform that advertises and sells apparently counterfeit Gucci products. The e-commerce platform offers these products for sale online and ships products worldwide. The disputed domain name is no doubt being used to attract Internet users for commercial gain.
The website under the disputed domain name also contains on its main page two of the Complainant’s device marks (i.e., DOUBLE G logo and cursive GUCCI logo), the main page also contains a Gucci advertisement from the previous season. The Panel has no hesitation in finding that the disputed domain name was registered with the intent to create confusion that the website under the disputed domain name is in some way related to the Complainant. (See Guccio Gucci S.p.A v. Xinjian Hu,WIPO Case No. D2014-1962).
The third element of paragraph 4(a) of the Policy is therefore satisfied. 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 name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: October 14, 2016
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