The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.
The Respondent is Andrea Lamb of United States Minor Outlying Islands, Overseas Territory of the United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Domain Names”) are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint concerning the Domain Names and the domain names , and was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2017.
On January 25, 2017, the Complainant sent an email to the Center requesting to remove the domain names , and from the proceeding due to the fact that the said domain names were the subject of a court proceeding in the United States of America (“United States).
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 27, 2017. 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. The Gucci Fashion House was founded in 1921 by Guccio Gucci.
In 1995, the Complainant converted into an entirely publicly-owned company and in 1999, the Complainant entered into an alliance with Pinault-PrintempsRedoute.
The Complainant owns many trademark registrations worldwide for GUCCI, both alone and in combination with other word and/or device elements. The trademark was regularly used by Complainant for more than 80 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear and fragrances. The Complainant enjoys a worldwide reputation for fashion products.
The Complainant’s trademark registrations worldwide include registrations such as Italian Registration GUCCI (word mark), no. 0001305406 of June 7, 2010; International Registration GUCCI (word mark), no. 429833, registered on March 30, 1977; and European Union Trademark Registration GUCCI (word mark), no. 000121988, registered on November 24, 1998.
Furthermore, the Complainant is the owner of several registrations for figurative trademarks, including the European Union Trademark Registration no. 004107546.
The Complainant is the owner of many domain names identical to or comprising the mark GUCCI.
The Respondent registered the Domain Names, on September 3, 2016, and all Domain Names have at some point been redirected to corresponding websites where GUCCI trademarks are published without authorization, along with images taken from official GUCCI Ad Campaigns, and on which prima facie counterfeit GUCCI products are offered for sale at very low prices. 5. Parties’ Contentions A. Complainant
The Complainant provides trademark registrations, and submits that the GUCCI trademark is well known. The Complainant argues that the Domain Names are confusingly similar to the Complainant’s trademarks. The Domain Names incorporate the whole of the Complainant’s GUCCI trademark. The fact that the Domain Names include non-distinctive elements, such as “italia”, “s”, “sito” “ufficiale”, “sac”, “fr”, “wien” and “deutschland” does not affect the confusing similarity. Furthermore, some of the terms selected by the Respondent for the Domain Names registrations, such as “sitoufficiale” (“official site”, in Italian), “online”, “sac” (“bag” in French) are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Domain Names and Complainant.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the GUCCI mark. The Respondent is not using the Domain Names in connection with any bona tide offering of goods or services. The Domain Names are or have been redirected by the Respondent to websites where the Complainant’s figurative trademarks are published and on which purported GUCCI products are promoted for sale at highly discounted prices. Moreover, no disclaimer as to the Respondent’s lack of affiliation with the Complainant can be found on the websites. The Respondent’s websites appear designed to reinforce the Internet user’s impression that the Domain Names belong to the Complainant, such use cannot constitute a bona fide offering of goods or services. In addition, by offering for sale prima facie counterfeit GUCCI products, the Respondent is engaging in an illegitimate activity that is undoubtedly commercial and non bona fide in nature.
As to bad faith, the Complainant argues, inter alia, that the Respondent must have been aware of the Complainant’s trademark rights at the time of the registration of the Domain Names. The Domain Names resolve to websites where the Complainant’s trademarks are misappropriated and prima facie counterfeit GUCCI branded products are promoted for sale. It is also an indication of bad faith that the Respondent did not reply to the Complainant’s Cease and Desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On January 25, 2017, the Complainant sent an email to the Center requesting to remove the domain names , and from the proceeding due to the fact that the said domain names were the subject of a court proceeding in the United States. The Panel accepts this amendment and moves on to decide on the remaining Domain Names. The Panel orders the Registrar to remove the registrar lock on , and , if not already done and if it does not otherwise conflict with any court order. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark GUCCI.
The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names consist of the Complainant’s trademark GUCCI, with different non-distinctive elements added, such as “italias”, “sito”, “ufficiale”, “sac”, “fr”, “wiens”, and “deutschland”. The additions do not dispel any confusing similarity, as they are descriptive for the Complainant’s products or where the Complainant conducts business.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register domain names containing its trademark or otherwise make use of its mark.
Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Names in connection with any bona fide offering of goods or services.
The Respondent is not generally known by the Domain Names, and has not acquired any trademark or service mark rights in that name or mark.
Taking into account that the Respondent makes unauthorized use of the Complainant’s trademark, and the Domain Names resolve to websites where the Complainant’s figurative trademarks are published and most likely counterfeited Gucci products are for sale, the Panel considers that the Respondent uses the Domain Names to misrepresent that the Domain Names are connected and/or associated with the Complainant. The Panel notes there are otherwise no disclaimers or other information available on the websites.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Names. It is likely that the Respondent’s intention for registering the Domain Names have been to use them for financial gain, evidenced by the fact that the Domain Names resolve to the webpages that seem to sell counterfeited Gucci products.
The Panel finds that on the balance of probabilities the Respondent registered and has used the Domain Names for commercial gain to redirect Internet users to the websites offering counterfeited Gucci products, with the intention of confusing Internet users into believing that the Domain Names are associated with the Complainant. This finding is supported by the fact that the Respondent has not responded to the Complainant’s cease-and-desist letter, nor to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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 Domain Names, , , , and , be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: March 6, 2017
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