The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Associati, Italy.
The Respondents are Goldengoose Incs. of New York, United States of America (“United States”) / GGDBDS Inc. of Hong Kong, China.
The disputed domain name <goldengoosedeals.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; the disputed domain name <salegoldengoose.com> is registered with eNom, Inc. (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 16, 2018 and March 17, 2018, the Registrars transmitted by email to the Center its verification responses confirming that the Respondents are listed as the registrants 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 March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 17, 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.
The Complainant was founded in 2000 and 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. The Complainant holds registrations of the words “GOLDEN GOOSE DELUXE BRAND” as trademark including as an international trademark for a range of goods in classes 3, 14, 18 and 25 with effect from December 12, 2005 under registration number 881244. The Complainant’s main website is located at “www.goldengoosedeluxebrand.com”. The disputed domain name <goldengoosedeals.com> was registered on October 26, 2017. The disputed domain name <salegoldengoose.com> was registered on October 28, 2017. The two disputed domain names resolve to identical websites, which claim to sell goods bearing the GOLDEN GOOSE DELUXE BRAND mark.
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s mark GOLDEN GOOSE DELUXE BRAND since the words “deals” and “sale” respectively are descriptive terms within the fashion industry.
The Complainant further submits that the Respondent lacks any rights or legitimate interests in the disputed domain names, as the Respondent is not a licensee, distributor or authorized agent of the Complainant, and is not known by the disputed domain names.
Finally, the Complainant submits that the disputed domain names are registered and used in bad faith, since the websites under the disputed domain names are used for websites that offer counterfeit GOLDEN GOOSE DELUXE BRAND products. The said websites even reproduce images that are copied form the Complainant’s website without permission.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has requested that both of the disputed domain names shall be subject to one consolidated proceeding, despite the fact that the recorded Registrants of the disputed domain names are not identical, since the disputed domain names share the same Registrant contact email and use pseudonyms namely GOLDENGOOSE INCS. and GGDBS INC. respectively, that relates to the Complainant.
As explained in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), consolidation of multiples registrants as the Respondents in a single administrative proceeding may be appropriate under paragraphs 3(c) or 10(e) of the Rules provided that the Complainant can demonstrate that (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In the present case both Registrants’ identities consist of pseudonyms that clearly refers to the Complainant’s name (“Goldengoose, Incs.”) and to the Complainant’s trademark (“GGDBDS”), the email address that the Registrants’ use as contact information is the same including just as the content or layout of websites corresponding to the disputed domain names are very similar if not identical.
Considering the above-mentioned circumstances and the fact that the Respondents (hereinafter referred as to “the Respondent”) have not otherwise contested the request for consolidation, the Panel finds that it is procedurally efficient to allow the consolidated Complaint as filed and that such consolidation is fair and equitable to all of the Parties.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the statements and documents submitted by the parties.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The disputed domain names <goldengoosedeals.com> and <salegoldengoose.com> both include the distinctive and dominant part of the Complainant’s registered trademark GOLDEN GOOSE DELUXE BRAND, namely GOLDEN GOOSE. The addition of the descriptive terms “deals” as suffix and “sale“ as prefix to form the disputed domain names does not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by UDRP panels that generic Top-Level Domain (“gTLD”) suffixes do not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain names (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, in particular the reputation and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain names it chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain names are used for identical websites on which the Respondent uses the Complainant’s trademark including the logotype just as the images on and the layout of the websites resemble that of the Complainant’s own website. This clearly gives Internet users the impression that the websites are official websites of the Complainant or websites that are authorized by the Complainant which is not the case. The Panel therefore finds that the Respondent by its registration and use of the disputed domain names intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names with the purpose of attracting Internet users to the websites for commercial gain as per paragraph 4(b)(iv) of the Policy.
Noting that the disputed domain names incorporate a distinctive and reputed trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <goldengoosedeals.com> and <salegoldengoose.com> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: April 29, 2018