Complainant is Golden Goose S.P.A., Italy, represented by Maria de Vietro, Italy.
Respondent is Zhong Tian, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 8, 2019. On September 22 and 27, 2019, Complainant requested to add the Domain Name The Center appointed Marina Perraki as the sole panelist in this matter on October 25, 2019. 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. Procedural issue: Addition of Domain Name The Complaint was originally submitted regarding the Domain Name The Panel had instructed the Center to obtain a registrar’s verification for the Additional Domain Name from the concerned Registrar and the Panel has confirmation that Respondent is the registrant of the Additional Domain Name. On October 30, 2019, the Panel issued a Panel Order inviting Respondent to submit any observations as regards the Additional Domain Name, to which Respondent did not reply. The Panel considers it reasonable to accept the addition of the Additional Domain Name to the Complaint for the following reasons, taking also into account the following features of the two Domain Names and the arguments communicated by Complainant’ s emails of September 22 and 27, 2019 and October 27, 2019: - both Domain Names involve Complainants’ trademarks; The Panel finds that the addition of the Additional Domain Name to the present proceeding is fair and equitable to the Parties and favours procedural efficiency (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.2, HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Ludwig Rhys,WIPO Case No. D2016-2448). 5. Factual Background Complainant is an Italian company, with registered office in Milan, active in the field of clothing, footwear and accessories. Per Complaint, Complainant started using the GOLDEN GOOSE brand on its goods since 2007. Due to its intense advertising efforts, Complainants’ goods and in particular shoes (sneakers) under the above brand, have become recognizable in Italy but also internationally, in particular among young consumers. Complainant is the owner of the following inter alia trademark registrations: - International trademark registration no. 881244, GOLDEN GOOSE DELUXE BRAND (word), with disclaimer for DELUXE BRAND and priority from September 8, 2005, registered on December 12, 2005, for goods in international classes 3, 14, 18 and 25, designating inter alia China; - Italian trademark registration no. 0001657474, GOLDEN GOOSE (word), filed on January 23, 2015 and registered on November 24, 2015 for goods in international classes 18, 25, 35; - Italian trademark registration no. 0001608973, (position), filed on January 17, 2014 and registered on October 7, 2014 for goods in international class 25; - European Union trademark registration no. 013046198, (figurative), filed on July 1, 2014 and registered on May 18, 2017 for goods inter alia in international classes 16, 18 and 25; - Italian trademark registration no. 0001608971, GGDB (word), filed on January 17, 2014 and registered on October 7, 2014 for goods in international classes 18, 25, 35; and - International trademark registration no. 1242358, GGDB (word), registered on July 11, 2014, for goods in international classes 18 and 25, designating inter alia China. The Domain Name The Additional Domain Name Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names. B. Respondent Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use on the GOLDEN GOOSE mark. The Panel finds that the Domain Names The Domain Names incorporate the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The letters “it” and “its”, which are added in the Domain Names The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Names Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names. Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute. Furthermore, as Complainant demonstrated, the Domain Name resolved at the time of filing of the Complaint to a website similar to the Website and currently redirects users to the Website, while the Additional Domain Name resolves to the Website. Furthermore, as Complainant demonstrates, the Domain Names resolve to a website containing content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an authorized partner of Complainant. Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Names by Respondent. A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.) These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggest that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s GOLDEN GOOSE trademarks, without any disclaimer of association (or lack thereof) with Complainant. Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the GOLDEN GOOSE mark had been widely used and registered at the time of the Domain Names registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Aktiebolaget Electrolux v. RojIT Corporation,WIPO Case No. D2012-1330; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388). Furthermore, the Domain Names incorporate in whole Complainant’s mark plus additional non-distinctive letters, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names. The Website content, eminently displaying Complainant’s trademarks and offering for sale goods identical/similar to those of Complainant and bearing Complainant’s trademarks, further supports knowledge of Complainant and its field of activity. As Complainant demonstrated, the Website content is targeting Complainant’s trademark, as it prominently displays Complainant’s GOLDEN GOOSE trademark and products identical/similar to those of Complainant and bearing Complainant’s trademarks, in significant lower prices. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367). As regards bad faith use of the Domain Names, Complainant has demonstrated that the Domain Names were used to resolve to a website, which prominently displays Complainant’s registered trademarks and logos, offering for sale identical/similar goods bearing Complainant’s trademarks, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorised reseller or partner of Complainant. The Domain Names operate therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website they resolve to. This supports the finding of bad faith use as described under paragraph 4(b)(iv) of the Policy (AB Electrolux v. Begad Negad,WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon,WIPO Case No. D2014-0487; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388; and WIPO Overview 3.0, section 3.4). Under these circumstances and on this record, the Panel finds that Respondent registered and was using the Domain Names in bad faith. Complainant has established Policy, paragraph 4(a)(iii). 8. 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 Marina Perraki
- both Domain Names have been registered by the same domain name holder, Respondent;
- both Domain Names use the same pattern of construction, namely the words “golden” and “goose” followed by the two first letters of the word Italy, namely “it”;
- the Additional Domain Name differs from the Domain Name only by the inclusion of one last letter “s” after the words “golden”, “goose” and the letters “it”;
- the Additional Domain Name was created on September 17, 2019, the day on which the Center notified Respondent of the Complaint;
- both Domain Names directed to websites on which the same WhatsApp number: +8615080419856 appeared as a contact detail;
- the Domain Name redirects to a website operating under the Additional Domain Name;
- both websites appeared with a similar look and feel, eminently displaying the trademarks of Complainant and offering for sale Complainant’s goods, at significant lower prices.
Sole Panelist
Date: November 10, 2019
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