The Complainant is Golden Goose S.p.A., Italy, represented by LCA Studio Legale, Italy.
The Respondent is Domain By Proxy, LLC, United States / Zhong Tian, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2020, 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 9, 2020, 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 amendment to the Complaint on October 9, 2020. The Center verified that the Complaint together with the amendment to 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 October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020. The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on November 17, 2020. 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 Golden Goose S.p.A. is a high fashion (shoes, apparel and accessories) brand based in Italy. The Complainant is the proprietor of several trademark registrations including or consisting of GOLDEN GOOSE, inter alia: - International registration No. 881244 GOLDEN GOOSE DELUXE BRAND registered on December 12, 2005 in classes 3, 14, 18, and 25. - International registration No. 1242357 GOLDEN GOOSE DELUXE BRAND registered on July 11, 2014 in classes 9, 18, 25, and 35. - European Union registration No. 018240635 GOLDEN GOOSE, registered on May 15, 2020 in classes 9, 14, 18, 25, and 26. - Italian registration No. 362015000052739 GOLDEN GOOSE DELUXE BRAND (renewal of Italian registration No. 0000983654, dating back to September 8, 2005), filed on September 18, 2015 and registered on December 23, 2016 in classes 36, 38, and 41. - Italian registration No. 0001608972, filed on January 17, 2014 and registered on October 7, 2014 in classes 9 and 35. - Italian registration No. 0001657474, filed on January 23, 2015 and registered on November 24, 2015 in classes 18, 25, and 35. The disputed domain name - The Complainant’s trademark has reached a worldwide reputation thanks to the innovative characteristics and the quality of its shoes, as well as to an intensive promotional and advertising activity and a selected dealers’ network. The Complainant’s trademark has been – and is – endorsed by (and advertised on) several international magazines and has a significant – and ever increasing – presence in all the major social networks. - The Complainant owns the trademark registrations for GOLDEN GOOSE mentioned before. - The Complainant has obtained almost 40 decisions in its favour; all of them, indeed, have granted the Complainant the transfer of the contested domain names. - The disputed domain name wholly incorporates the GOLDEN GOOSE trademark, along with the descriptive term “pro”. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never authorized the Respondent to file and/or register and/or use in any manner whatsoever the Complainant’s trademarks. - The Respondent has registered and has been using the disputed domain name in bad faith. Indeed, the Respondent is selling – at rock-bottom prices and using the GOLDEN GOOSE trademarks – “Golden Goose” counterfeit products. - Thanks to the disputed domain name, the Respondent manages to deceive Internet users into believing that the website to which it resolves belongs to the Complainant and that it is selling original “Golden Goose” products. The fact that the Respondent uses – without any authorization – images illegitimately taken from the Complainant’s website further confirms this conclusion. - There is no doubt, therefore, that the Respondent has registered and has been using the disputed domain name for the sole purpose of causing confusion among consumers, trying to “replace” itself to the Complainant selling Golden Goose counterfeit products. As a consequence, the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, the Panel shall grant the remedies requested if the Complainant proves that: (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. Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, for this purpose the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant has trademark rights for its company name and house mark GOLDEN GOOSE. Evidence of the well-known character of this trademark has been provided. The disputed domain name wholly incorporates the Complainant’s trademark GOLDEN GOOSE with the additional term “pro”, that can be considered as descriptive (normally used for “professional”). The GOLDEN GOOSE trademark is clearly recognizable within the disputed domain name. As stated in Crédit Industriel et Commercial v. Manager Builder, Builder Manager,WIPO Case No. D2018-2230: “The disputed domain name incorporates the CIC trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0, section 1.8), that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term ‘banks’, which even is the English translation of the French term ‘banques’ as it is reflected in the Complainant’s CIC BANQUES trademark, does not avoid the confusing similarity arising from the incorporation of the Complainant’s CIC trademark in the disputed domain name.” The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s GOLDEN GOOSE trademarks as provided under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established based on the facts set out above a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that the Respondent has defaulted, he or she has not met that burden. Pursuant to paragraph 4(c) of the Policy, a Respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use 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 has been commonly known by the domain name, even if it has 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 Respondent’s use cannot be considered as a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that both the composition of the disputed domain name and the content of the website carry a risk of implied affiliation with the Complainant. In summary, the Panel finds that paragraph 4(a)(ii) set forth in the Policy is established. C. Registered and Used in Bad Faith According to paragraph 4(b)(iv) of the Policy, registration or use of a domain name will be considered in bad faith when: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Complainant’s GOLDEN GOOSE trademark is well known and reputed, well before the registration of the disputed domain name. The Respondent’s registration and use of the disputed domain name wholly incorporating a well-known third-party mark is, in the Panel’s view, indicative of bad faith. Furthermore, there is a clear impersonation in the section “riguardo a noi” (about us), that contains the title “Golden Goose Deluxe Brand” and the story of the Complainant. As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin,WIPO Case No. D2017-0334: “It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).” As reminded in section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” The use of a privacy service also seems to confirm the bad faith of the Respondents. While there may be circumstances that make the use of a privacy service legitimate, several UDRP decisions have considered it a circumstance that contributes to consider bad faith proven when it is combined with other types of circumstances. In GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta,WIPO Case No. D2016-2563, the panel found that: “Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.” In the light of the above, the Panel finds that the Complainant has established registration and use of the disputed domain name in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied. 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 José Ignacio San Martín Santamaría
Sole Panelist
Date: December 1, 2020
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