WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Guccio Gucci S.p.A. v. Beethoven Action, Sami Low, Whois Agent, Domain Protection Services, Inc. / Bett Buzz, Ehsan Ahmadi Case No. D2021-0257 1. The Parties
The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondents are Beethoven Action, United States of America (“United States”), Sami Low, Turkey, Whois Agent, Domain Protection Services, Inc., United States / Bett Buzz, Sweden, and Ehsan Ahmadi, Turkey. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2021. On January 28, 2021, the Center transmitted by emails to the Registrars requests for registrar verifications in connection with the disputed domain names. On January 28 and February 8, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2021, 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 February 12, 2021. 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 11, 2021. 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 belongs to the international conglomerate Kering, one of the leading groups in apparel and accessories. The Complainant is the owner, amongst thousands of others, of the following trademark registrations (Annex 4 to the Complaint): - Italian trademark registration No. 362016000132789 for the word mark GUCCI, registered on September 6, 2017, in all classes, consisting of the renewal of the Italian trademark originally filed on January 13, 1977, and registered on March 30, 1977, under No. 302066; - International trademark registration No. 429833 for the word mark GUCCI, registered on March 30, 1977 and subsequently renewed in classes 3, 14, 18, and 25; and - International trademark registration No. 457952 for the word mark GUCCI, registered on December 16, 1980, and subsequently renewed in classes 1 through 42. The disputed domain names were registered on and are presently used in connection with: Disputed Domain Name Registration Date Present Use Jan. 24, 2020 Parked webpage with PPC links Nov. 14, 2020 Betting webpage reproducing the Complainant's trademarks Apr. 30, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 23, 2020 Betting webpage reproducing the Complainant's trademarks Jan. 16, 2021 Betting webpage reproducing the Complainant's trademarks Jan. 13, 2020 Parked webpage with PPC links May 1, 2020 Betting webpage reproducing the Complainant's trademarks May 8, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 12, 2020 Betting webpage reproducing the Complainant's trademarks Apr. 7, 2020 Betting webpage reproducing the Complainant's trademarks Aug. 28, 2020 Betting webpage reproducing the Complainant's trademarks Oct. 14, 2020 Betting webpage reproducing the Complainant's trademarks Apr. 28, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 11, 2020 Betting webpage reproducing the Complainant's trademarks Apr. 29, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 12, 2020 Betting webpage reproducing the Complainant's trademarks Oct. 14, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 12, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 12, 2020 Betting webpage reproducing the Complainant's trademarks May 1, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 23, 2020 Betting webpage reproducing the Complainant's trademarks Oct. 26, 2020 Betting webpage reproducing the Complainant's trademarks Oct. 26, 2020 Betting webpage reproducing the Complainant's trademarks May 7, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 26, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 26, 2020 Betting webpage reproducing the Complainant's trademarks Nov. 14, 2020 Betting webpage reproducing the Complainant's trademarks Jan. 21, 2021 Betting webpage reproducing the Complainant's trademarks Jan. 22, 2021 Betting webpage reproducing the Complainant's trademarks Dec. 26, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 26, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 1, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 22, 2020 Betting webpage reproducing the Complainant's trademarks Jan. 9. 2021 Betting webpage reproducing the Complainant's trademarks Jun. 1, 2020 No active webpage Jun. 1, 2020 Betting webpage reproducing the Complainant's trademarks Jul. 23, 2020 Betting webpage reproducing the Complainant's trademarks Oct. 14, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 23, 2020 Betting webpage reproducing the Complainant's trademarks Jul. 20, 2020 Betting webpage reproducing the Complainant's trademarks Jun. 1, 2020 Betting webpage reproducing the Complainant's trademarks May 8, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 9, 2020 Betting webpage reproducing the Complainant's trademarks Jul. 13, 2020 Betting webpage reproducing the Complainant's trademarks Jun. 14, 2020 Betting webpage reproducing the Complainant's trademarks Nov. 24, 2020 Betting webpage reproducing the Complainant's trademarks May 6, 2020 Betting webpage reproducing the Complainant's trademarks Jul. 24, 2020 Betting webpage reproducing the Complainant's trademarks Jul. 27, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 17, 2020 Betting webpage reproducing the Complainant's trademarks May 7, 2020 Betting webpage reproducing the Complainant's trademarks Sept. 17, 2020 Betting webpage reproducing the Complainant's trademarks Mar. 3, 2020 Betting webpage reproducing the Complainant's trademarks Dec. 22, 2020 Betting webpage reproducing the Complainant's trademarks <36gucci.com> Aug. 9, 2020 Betting webpage reproducing the Complainant's trademarks <369gucci.com> Aug. 4, 2020 Betting webpage reproducing the Complainant's trademarks <369gucci.info> Nov. 24, 2020 Betting webpage reproducing the Complainant's trademarks 5. Parties’ Contentions A. Complainant The Complainant asserts to have been founded in 1921 by Guccio Gucci, who opened a leather goods company and a small luggage store in Florence, Italy. The Complainant claims that the GUCCI brand rapidly achieved great success, becoming an indisputably well-known trademark worldwide in view of the substantial investments in advertising, its marketing, sales, and impressive client base. The Complainant further states that the GUCCI trademark ranked No. 33 in Interbrand’s “Best Global Brands” in the year 2019 and No. 30 in Forbe’s 2019 World’s Most Valuable Brands, with an estimated brand value of USD 18.6 billion. Furthermore, prior to the initiating this procedure, the Complainant claims to have sent on June 5, 2020, a first Cease and Desist letter to the named registrant of The Complainant submits that the disputed domain names are subject to common control by either the same person or connected parties and for reasons of fairness, equity and efficiency, the Complainant requests consolidation of multiple Respondents to the same Complaint, given that the disputed domain names share WhoIs contact information, Registrars, name servers, structure of the disputed domain names, and the substantial identity of the websites that resolve from the disputed domain names (webpages1 in the Persian2 language promoting “the best Iranian casino online” under the “GUCCI BET” name where “GUCCI” is written with the same font as the Complainant’s well-known trademark, also depicting other GUCCI figurative trademarks). The disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s trademark, creating a likelihood of confusion given the reproduction of its GUCCI well-known trademark which is clearly recognizable as the leading element of the disputed domain names, not adding any distinctiveness thereto the addition of the generic/descriptive terms “bet”, “app”, “gan”, “gang”, “baz”, “beet”, “casino”, “pro”, “plus”, “channel”, “hot”, “money”, “relax”, “sneakers”, “ta”, “the”, “ton”; random letters (“iiii”, “zz”) or meaningless words (“coc”, “lon”, “sosmas”, “zino”); and/or numerals (“1”, “2”, “20”, “36”, “39”, “40”, “45”, “69”, “70”, “90”, “93”, “96”, “99”, “330”, “360”, “369”, “666”, “777”, and “999”). Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondents are not licensees, authorized agents of the Complainant, nor in any other way authorized to use the Complainant’s GUCCI trademark, nor have they been authorized to register and use the disputed domain names; (b) the Respondents are not commonly known by the disputed domain names, as individuals, businesses or other organizations, not having GUCCI as their family name or a name corresponding to the disputed domain names; (c) the Respondents have not provided any evidence of the use, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services before any notice of this dispute given that the websites from which resolve 56 of the 57 disputed domain names prominently feature the Complainant’s trademark, as well as “GG” pattern, and the distinctive green-red-green color scheme of the Complainant’s trademarks, with no disclaimer as to Respondents’ lack of relationship or affiliation with the Complainant, all of which increases the likelihood of confusion amongst Internet users who might think that the disputed domain names are owned, related or otherwise endorsed by the Complainant, which is not true; and (d) the As to the registration of the disputed domain names in bad faith, the Complainant asserts that the Respondents knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that it has acquired considerable goodwill and renown worldwide. Further, the Respondents’ intent to capitalize on the reputation of the Complainant’s GUCCI famous trademark can easily be inferred from the contents of 56 out of the 57 disputed domain names that clearly reproduce the Complainant’s trademarks seeking to profit from an undue association thereof. The Complainant further submits that the Respondents’ lack of reply to the several cease and desist letters is a further indicative of the Respondents’ bad faith. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names. Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents. A. Consolidation of Multiple Respondents The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the 57 disputed domain names dealt with at the same procedure, given that: (a) 56 out of 57 disputed domain names resolved to the same webpage (presently 54 of them still resolve to the same webpage, whereas 2 are presently resolving to parked webpages depicting PPC links and one disputed domain name does not resolve to an active webpage); the disputed domain name share (b) Registrars, (c) name servers, and (d) a similar naming pattern. This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties. B. Identical or Confusingly Similar The Complainant has established its rights in the GUCCI trademark (Annex 4 to the Complaint). The Panel finds that the disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of the descriptive and/or meaningless terms “bet”, “app”, “gan”, “gang”, “baz”, “beet”, “casino”, “pro”, “plus”, “channel”, “hot”, “money”, “relax”, “sneakers”, “ta”, “the”, “ton”; the letters “iiii”, “zz”, “coc”, “lon”, “sosmas”, “zino”; and/or, the numerals (“1”, “2”, “20”, “36”, “39”, “40”, “45”, “69”, “70”, “90”, “93”, “96”, “99”, “330”, “360”, “369”, “666”, “777”, and “999”) does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7.) The first element of the Policy has therefore been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondents, in not formally responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondents. In that sense, the Panel notes that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, indeed stating that the Respondents are not licensees, authorized agents of the Complainant, nor in any other way authorized to use the Complainant’s GUCCI trademark, nor have they been authorized to register and use the disputed domain names. Also, the lack of evidence as to whether the Respondents are commonly known by the disputed domain names or the absence of any trademarks registered by the Respondents corresponding to the disputed domain names, corroborates the indication of an absence of rights or legitimate interests in the disputed domain names. The use made and being made of the disputed domain names cannot be characterized as a bona fide offering of goods or services, given that the Respondents website prominently features the Complainant’s trademark, as well as the “GG” pattern and the distinctive green-red-green color scheme of the Complainant’s trademarks, with no disclaimer as to Respondents’ lack of relationship or affiliation with the Complainant, all of which increases the likelihood of confusion amongst Internet users who might think that the disputed domain names are owned, related or otherwise endorsed by the Complainant, which is not true. Given the overall circumstances of this case, the fact that two of the 57 disputed domain names presently resolve to parked webpages displaying PPC links and one of the disputed domain names presently does not resolve to an active webpage do not grant a right or legitimate interest to the Respondents over such domain names that clearly reproduce the Complainant’s famous GUCCI trademark. Therefore, the Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met. D. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the use of the disputed domain names in connection with websites that reproduce the Complainant’s trademarks, logo, and characteristics, characterizes the Respondents’ intent of commercial gain by profiting from the notoriety of the Complainant’s trademark. Further, the Panel finds that the currently inactive use of one of the disputed domain names and the use of the remaining two disputed domain names in connection with a parked webpage displaying PPC links does not prevent a finding of bad faith. Prior panels have held that the non-use of domain names may support a finding of bad faith when considering factors such as the distinctive nature and reputation of the trademark, the failure of the respondent to file a response, and the implausibility of any good faith use to which the domain name may be put. Further, the PPC links in question capitalized on the goodwill and reputation of the Complainant’s trademark. Other indicatives of the Respondents’ bad faith lie in the absence of reply to the several cease-and-desist letters sent by the Complainant’s representatives prior to this procedure as well as the lack of a response here. For the reasons above, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The third element of the Policy has therefore 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 names Wilson Pinheiro Jabur 1 Except for the disputed domain name 2 The webpage available at the disputed domain name
Sole Panelist
Date: March 25, 2021
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