The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Guy Simmons of Minneapolis, Maine, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on October 12, 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 was founded in 2000 by Francesca Rinaldo and Alessandro Gallo who were then unknown, young designers from Venice. It creates clothes and accessories for both men and women which it distributes through shops in New York, Paris, London, Milan, Tokyo, Seoul, Beijing, Beirut, St. Tropez and Amsterdam. The company markets its goods under the GOLDEN GOOSE DELUXE BRAND and the abbreviation GGDB.
It has registered the words GOLDEN GOOSE DELUXE BRAND as an international trade mark for a range of goods in classes 3, 14, 18 and 25 with effect from December 12, 2005 under registration number 881244.
All that is known about the Respondent is the result of a “whoIs” search which states, curiously, that he resides in “Minneapolis, Maine”. The Panel has searched the Internet to see whether there is more than one Minneapolis (and in particular whether there is a place by that name in Maine) but has been unable to find any other location by that name.
The Respondent has used the disputed domain name as the URL of a website that looks very similar to the Complainant’s. Screen dumps of that website are appended to the Complaint in Annex 2. The logos, layout and typeface are very similar if not identical to the Complainant’s. According to the Complainant, the goods that are offered for sale through that site are counterfeit. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name on the grounds that:
- It is confusingly similar to a trade mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
In respect of the first ground, the Complainant points to its registration of the words GOLDEN GOOSE DELUXE BRAND in many countries around the world and the incorporation of the words GOLDEN and GOOSE, which are the distinctive elements into the disputed domain name, together with the word “soldes”. It makes the point that the word “soldes” is not distinctive and gives the impression that the goods are genuine seconds when in fact they are not.
On the second ground, the Complainant states that the Respondent is not a licensee, distributor or agent of the Complainant. There is no evidence that it has made any preparations for a bona fide offering of goods or services. On the contrary, the Respondent appears to use the disputed domain name as a website that offers counterfeits to the public. In view of its trade mark registrations and the strength of its reputation it is inconceivable that anyone could use the disputed domain name for a legitimate purpose.
As for the third ground, the Respondent has given a spurious address and used the disputed domain name as an URL for an outlet for the sale of counterfeit products. Such conduct is by its very nature dishonest and therefore an act of bad faith.
The Complainant relies on a number of authorities one of which appears to be on all fours with this case. In Golden Goose S.p.A. v. Webster Francis,WIPO Case No. D2017-1197, the respondent registered the domain name . As the Panel noted above, GGDB is one of the trade marks of the Complainant and the Italian word “saldi” means “sale” in English or “soldes” in French. The domain name in that case was used for a website that offered for sale counterfeit goods. The panel in that case found that the domain name had been registered and used in bad faith:
“The Respondent was clearly familiar with the Complainant’s trademarks and products. Its intention in registering the disputed domain name comprising a copy of the Complainant’s registered mark GGDB in combination with the Italian word “saldi” was clearly to capitalize on the reputation and popularity of the Complainant’s products and brand name and to attract customers by misleading them.”
The Panel also notes in Golden Goose S.p.A. v. Webster Francis, supra, that the domain name contains a website designed to look like a complainant online store, where its trademark appears prominently together with complainant’s products.
The panel finds in Golden Goose S.p.A. v. Webster Francis, supra, that the respondent has, by using the disputed domain name, “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location” (paragraph 4(b)(iv) of the Policy).
Having found that all the requirements of paragraph 4(a) had been satisfied, the panel in Golden Goose S.p.A. v. Webster Francis, supra, ordered the transfer of the domain name in that case to the Complainant.
Although there is no express doctrine of stare decisis in this jurisdiction, it is desirable that UDRP decisions should be consistent and outcomes predictable. The decision in Golden Goose S.p.A. v. Webster Francis, supra, case is of very strong persuasive authority to this Panel and should be followed because the facts are very similar in this case unless there are good grounds for distinguishing it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s registration agreement with respect to the disputed domain name incorporated the following provision:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ʻcomplainantʼ) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The disputed domain name incorporates the words GOLDEN GOOSE which is the distinctive element of the Complainant’s trade mark GOLDEN GOOSE DELUXE BRAND and combined it with the word “soldes” which means “sale” in French. Anyone seeing the domain name with anything more than a smattering of French would be led to believe that the domain name would lead to a site selling genuine but discounted GOLDEN GOOSE DELUXE BRAND products.
The Panel in this case is fortified in her decision by the finding of the learned panelist in in Golden Goose S.p.A. v. Webster Francis, supra, who observed:
“The disputed domain name comprises the Complainant’s trademark GGDB with the addition of the Italian word, ʻsaldiʼ (“sale” in English). The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered GGDB trademark. The addition of the generic term “saldi” in the disputed domain name does not serve whatsoever to remove the confusing similarity with the Complainant’s mark.”
The Panel in this case finds that the first element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
The Panel finds the second element to be present.
A complainant is not required to prove a negative in order to satisfy this requirement. A complainant must show that a respondent is unlikely to have any rights or legitimate interests in the disputed domain name.
In this case the Complainant has pointed to its trade mark registrations and to its sales and marketing throughout the world under the GOLDEN GOOSE DELUXE BRAND. It would be very difficult if not impossible for anyone other than the Complainant to run any kind of business anywhere in the world under or by reference to such a trade mark without infringing the mark or passing its goods or business off as those of the Complainant.
The Complainant has confirmed that the Respondent has not been licensed, authorized or permitted to carry on business under any of its marks and that none of the circumstances under paragraph 4(c) of the Policy that would give rise to a right or interest in the disputed domain name apply.
The Respondent has had an opportunity to justify its use of the disputed domain name and has failed to do so. C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is set out in paragraph 4(b)(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 Panel has already found that the disputed domain name is confusingly similar to the GOLDEN GOOSE DELUXE BRANDS trade mark. The Panel infers that consumers are likely to be led by the disputed domain name to believe that they will find a site where discounted GOLDEN GOOSE products are on sale. That is enough to create “a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website or location or of a product or service on that website or location. Products on that website are offered for sale from which it may be inferred that the Respondent or some other person will derive commercial gain.
As all the elements of 4(b)(iv) have been proved, they constitute evidence of registration and use in bad faith. There being no countervailing evidence from the Respondent, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
The Panel in this case notes with satisfaction that the panel in Golden Goose S.p.A. v. Webster Francis, supra, came to a similar conclusion for similar reasons. 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.
Jane Lambert
Sole Panelist
Date: October 26, 2017.
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