The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is GGDBSE INC of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2017. On July 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 14, 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 an Italian company engaged in the business of apparel and accessories and markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. Its goods are offered for sale internationally, including in well-known stores in Milan, Paris, London, New York and Chicago, and also online.
The Complainant has provided the Panel with details of various trademark registrations of its GOLDEN GOOSE DELUXE BRAND, including Italian registration number 0001608972, registered on October 7, 2014 and International Registration number 881224, registered on December 12, 2005,. It has also provided the Panel with details of various registrations of its GGDB trademark, including Italian registration number 0001608971, registered on October 7, 2014 and International Registration number 1242358, registered on July 11, 2014.
The Complainant has provided the Panel with details of various successful cases under the Policy in which it appeared as complainant, namely: Golden Goose S.r.l. v. HUAN WANG / WhoisGuard, Inc., WIPO Cases No. D2015-0677; Golden Goose S.P.A. v. Tang Dan,WIPO Case No. D2015-2016; and Golden Goose S.p.A. v. Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si,WIPO Case No. D2017-0067.
The Respondent registered the disputed domain name on December 27, 2016. At the time the Complaint was filed, the disputed domain name resolved to an online retail website prominently featuring the GOLDEN GOOSE DELUXE BRAND trademarks as well as the Complainant’s logos and promoting and offering for sale footwear products. The Respondent offers for sale counterfeit footwear products and the website further displays, incomplete and inaccurate contact information. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its GOLDEN GOOSE DELUXE BRAND, incorporating the words “GOLDEN GOOSE” plus merely the descriptive or non-distinctive element “DB”, which could serve as an acronym for the “DELUXE BRAND” element of its composite GOLDEN GOOSE DELUXE BRAND trademark, and the last two letters of its GGDB trademark, together with the generic Top-Level Domain (“gTLD”) indicator “.com”.
The Complainant alleges that the Respondent has no connection whatsoever with the Complainant, is not generally known by the disputed domain name, and can, in any event, have no rights or legitimate interests in the disputed domain name as it is engaged in the sale of counterfeit goods in the website operated under the disputed domain name.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website operated under the disputed domain name, in connection with the sale of counterfeit goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that gTLD” indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
It is well-established in prior decisions under the UDRP that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is not sufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel considers the element “DB” to be clearly descriptive or non-distinctive, and, in combination with the main goodwill-generating part of the Complainant’s composite GOLDEN GOOSE DELUXE BRAND trademark, is bound to be confusingly similar to the GOLDEN GOOSE DELUXE BRAND trademark. In particular, the Panel can find no reasonable interpretation of the disputed domain name other than it was deliberately engineered to benefit from the goodwill of the Complainant’s GOLDEN GOOSE DELUXE BRAND trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GOLDEN GOOSE DELUXE BRAND trademark, and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name found to be confusingly similar to a complainant’s trademark leads, in appropriate circumstances, to the automatic finding that the disputed domain name has been registered in bad faith. The Panel regards the circumstances of the present case, in which he is convinced that the disputed domain name was deliberately engineered to unfairly take advantage of the reputation of the Complainant’s trademark, are sufficient to lead to an automatic finding of registration in bad faith, and the Panel so finds.
The Complainant has provided the Panel with evidence of use of the website operated under the disputed domain name in connection with the offering for sale of counterfeit products. It is well-established in prior decisions under the UDRP that this type of use of a disputed domain name constitutes use in bad faith, and the Panel so finds. The Panel, accordingly, finds that the Complainant has satisfied the dual requirements of 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 disputed domain name, , be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: August 29, 2017
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