The Complainant is GOLDEN GOOSE S.P.A. of Milano, Italy represented by Scarpellini Naj-Oleari & Associati, Italy.
The Respondent is WhoisGuard Protected of Panama, Panama / Wei Zhang of Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2018 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 October 31, 2018 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 amended Complaint on November 2, 2018.
The Center verified that the Complaint together with the amended 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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2018.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 4, 2018. 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 that commercializes apparel goods and accessories.
The Complainant is the owner of the following trademark registrations:
Trademark
Registration Number
Registration Date
Classes
Jurisdiction
GOLDEN GOOSE DELUXE BRAND
0000983654
November 11, 2005
03, 14, 18, 25
Italy
GOLDEN GOOSE DELUXE BRAND
881244
December 12, 2015
03, 14, 18, 25
International Registration:
GOLDEN GOOSE DELUXE BRAND
0001608972
October 7, 2014
09, 35
Italy
GOLDEN GOOSE
0001657474
November 24, 2015
18, 25, 35
Italy
GGDB
1242358
July 11, 2014
18, 25
International Registration
GGDB
0001608971
October 7, 2014
18, 25, 35
Italy
The disputed domain name was registered in May 10, 2018. 5. Parties’ Contentions A. Complainant
The Complainant argued the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
That the Complainant is a company with strong presence in the fashion industry, with sales in hundreds of retail stores, online stores and social media worldwide, under the trademarks GOLDEN GOOSE DELUXE BRAND and its acronym GGDB.
That the disputed domain name is confusingly similar to the trademark GOLDEN GOOSE DELUXE BRAND.
That the addition of generic terms such as “outlet” and “online” does not avoid confusing similarity between the disputed domain name and the Complainant's mark.
That the disputed domain name is designed to confuse users into believing that the products offered on the Respondent’s Web site are genuine, whereas they are in fact counterfeits. (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
That the Respondent is not a licensee, distributor, or authorized agent of the Complainant.
That the Respondent is not known by the disputed domain name.
That there are no demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services, because the Respondent uses it for selling counterfeit goods. That such use is clearly not a bona fide use, fair use, or noncommercial use of the disputed domain name.
That the Respondent’s knowledge of the Complainant’s trademark is demonstrated by the content of the Respondent’s Web site, which features the Complainant’s products and trademarks. (iii) The disputed domain name has been registered and is being used in bad faith
That by offering counterfeit goods in the Web site to which the disputed domain name resolves, the Respondent is misleading customers as to the source of the products, since said Web site has been used to offer products bearing the Complainant’s trademark.
That the Respondent’s Web site displays incomplete or inaccurate contact information.
That the Respondent intentionally attempts to attract Internet users for commercial gain, by misleading them into believing that the Respondent’s Web site is the Golden Goose official Web site.
That the Respondent´s web Site provides no clear indication of its origin, nor does it contain a disclaimer. That said web Site gives customers an impression of it being a web Site of the Complainant.
That the Complainant has submitted itself to other proceedings under the Policy, in which the Panels have transferred the corresponding disputed domain names to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith
In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Boris Johnson v. Belize Domain WhoIs Service Lt,WIPO Case No. D2010-1954). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark GOLDEN GOOSE DELUXE BRAND, because it incorporates the sign “GOLDEN GOOSE”, which is the most distinctive portion of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where a trademark is recognizable within the disputed domain name, the addition of descriptive terms within a side-by-side comparison, does not diminish the risk of confusion.
The addition of the terms “outlet” and “onlines” to the disputed domain name does not prevent a finding of confusing similarity (see, V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962, ; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, ; and Golden Goose S.p.A. v. Whoisguard Inc. / Wei Zhang, WIPO Case No. D2018-1027).
The addition of the generic Top-Level Domain “.com” is immaterial for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919).
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is 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 disputed domain name clearly targets the Complainant and its business.
There is no evidence contained in the case file showing that the Respondent has been commonly known as .
According to section 2.13.1 of the WIPO Overview 3.0, the use of a domain name for illegal activity, such as the sale of counterfeit goods and impersonation cannot confer rights to, or legitimate interests in a disputed domain name. The Complainant has argued that the Respondent has engaged in such illegal activity, and has filed evidence to support these allegations, which accusations have not been denied by the Respondent.
The Complainant has submitted arguments and evidence to support its claim that the Web site to which the disputed domain resolves offers for sale counterfeits of the Complainant’s products (see Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203). The Complainant also argued that the content of this Web site constitutes a means for impersonating the Complainant (see Shionogi & Co. Ltd., Shionogi Inc. v. WhoisGuard Protected / Seedy Loveth,WIPO Case No. D2018-2047). The Respondent did not contest these allegations, or evidence.
The Web site to which the disputed domain resolves has a look and feel that may lead Internet users to believe that it is an official site of the Complainant. It conspicuously displays the following text: “GOLDEN GOOSE DELUXE BRAND®”. It offers for sale products at disproportionately discounted prices (with more than 50 percent discounts in average, in relation to luxury goods), products which have been identified by the Complainant as falsifications. It collects data from visitors by inviting them to subscribe to a “newsletter” which allegedly features exclusive offers, and it invites users to pay by credit card, which can lead to online fraud.
These conducts cannot be considered to be a bona fide offering of goods or services under Paragraph 4(c) i of the Policy, or constitute legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, according to Paragraph 4(c) iii of the Policy.
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The arguments and evidence submitted by the Complainant, which were not rebutted by the Respondent, show that the Respondent knew of the existence of the Complainant and its trademark GOLDEN GOOSE DELUXE BRAND at the time of registration of the disputed domain name.
The incorporation of the terms “outlet” and “onlines” in the disputed domain name directly and specifically targets the Complainant, which operates its business in the fashion industry, namely in connection to the commercialization of apparel and accessories worldwide, including through electronic means (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico,WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. v. Arena International Inc., supra).
The disputed domain name may lead Internet users to believe that the source of the disputed domain name, and the Web site to which said domain name resolves, is the Complainant. The Respondent offers for sale the same type of goods as those of the Complainant, using the trademark GOLDEN GOOSE DELUXE BRAND.
This fact shows that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Web site to which the disputed domain name resolves, thereby creating a likelihood of confusion with the Complainant and/or the trademark GOLDEN GOOSE DELUXE BRAND, which constitutes bad faith according to Paragraph 4(b)iv of the Policy. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has intended to take bad faith advantage of Internet users who may wish to purchase the Complainant’s products (see Richemont International SA v. brandon gill,WIPO Case No. D2013-0037).
The evidence contained in this docket also proves that the Respondent has impersonated the Complainant. Impersonation constitutes bad faith use under the Policy (see SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo,WIPO Case No. D2018-0398; Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285).
The third element of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: December 19, 2018
Full & Egal Universal Law Academy