WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Brenda Hawkins

Case No. D2013-0603

1. The Parties

The Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.

The Respondent is Brenda Hawkins of Asheville, North Carolina, United States of America.

2. The Domain Names and Registrar

The disputed domain names < authenticdiscountguccihandbags.net >, <buycheapgucciwallets.com>, <buyguccibagsonline.net>, <buyguccihandbagsonline.net>, <buyguccihandbags.org>,
<buygucci-sunglasses.com>, <buyguccisunglassesonline.com>, <caguccicanadaonline.net>, <cheapguccibagsforwomen.com>, <cheapguccibootsformen.com>, <cheapguccisneakers.org>, <cheapgucci-sunglasses.org>, <discountgucci-handbags.net>, <fakeguccibags.net>, <fakegucci.org>, <gucci-babybag.org>, <guccibackpackformen.net>, <gucci-backpack.net>, <guccibagsuksales.org>, <guccibeltsformenonsale.com>, <guccibootsformen.com>, <guccibootsformen.org>, <guccibootsforwomen.com>, <gucciboots-store.org>, <guccideutschland.net>, <guccifactory.org>, <guccifannypack.net>, <guccifannypacks.net>, <gucciformen.org>, <guccifrance.org>,
<guccihandbag-shop.com>, <guccihandbagsoutlet-online.net>, <gucci-handbagsoutlet.org>,
<gucci-handbagsus.com>, <gucciinjapan.com>, <gucciipadcase.net>, <gucciipadcases.com>, <guccijapan.net>, <gucciknockoff-handbags.com>, <gucciknockoffsonline.com>, <gucciluggageonline.com>, <guccimalaysia.org>, <guccimen-online.net>, <guccimen-online.org>, <guccimenwallet.net>, <gucci-messengerbag.com>, <guccimessengerbags.net>, <guccimiami.org>, <guccimilano.org>, <guccimilan.org>, <guccimontreal.org>, <guccionlineoutletus.net>, and <guccionlineshopde.net> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 31, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is part of the Gucci Group, a well known Italian fashion and leather goods brand founded in 1921, which belongs to the French company Pinault-Printemps-Redoute (PPR), one of the leading fashion groups worldwide. The trademark GUCCI was and presently is supported by intensive advertising campaigns worldwide, with campaigns appearing in important international magazines with broad circulation such as, inter alia, Vogue, Vanity Fair, GQ and Glamour.

The Complainant is the owner of thousands of trademark registrations for GUCCI worldwide, inter alia Italian trademark registration no. 801958 GUCCI, filed on January 13, 1977, International trademark registration No. 429833 GUCCI, registered on March 30, 1977, and Community trademark registration No. 000121988 GUCCI, filed on April 1, 1996 and registered on November 24, 1998 (hereinafter referred to as the “GUCCI Marks”). The Complainant is also registered owner of thousands of domain names identical to or comprising the mark GUCCI and provides information on its products on the Internet on numerous websites, inter alia <gucci.com>, <gucciconnect.com>, and <gucciparfums.com>.

The disputed domain names were all registered on October 26, 2012 or October 27, 2012 and are used to redirect Internet users to websites showing the Complainant’s trademarks and images taken from the Complainant’s advertising campaigns and offering products bearing the GUCCI Marks for sale.

The Complainant sent a cease and desist letter to the Respondent on March 21, 2013 and a reminder on April 3, 2013. Both communications were disregarded by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain names are confusingly similar to the GUCCI Marks as they fully incorporate such trademarks and as the non-distinctive elements “authentic”, “discount”, “handbags”, “buy”, “cheap”, “wallets”, “bags”, “online”, “sunglasses”, “for”, “women”, “boots”, “men”, “sneakers”, “fake”, “babybag”, “backpack”, “store”, “factory”, “packs”, “pack”, “fannypack”, “ipadcase”, “ipadcases”, “knockoff”, “luggage”, “wallet”, “messengerbag”, and “messengerbags”, selectively combined with each other, do not affect the confusing similarity. On the contrary, some of the terms selected by the Respondent for the disputed domain names are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the disputed domain names and the Complainant as the above mentioned words recall both products (“bags”, “handbags”, “wallets”, “sunglasses”, “luggage”, etc.) and online locations where authentic products of the Complainant are offered for sale at lower prices (“authentic”, “discount”, “buy”, “cheap”, “online”, “store”). Furthermore, the geographical indications “de”, “deutschland”, “malaysia”, “japan”, “canada”, “france”, “uk”, “milano”, “milan”, and “miami” encompassed in some of the disputed domain names cannot be considered as sufficient to distinguish the relevant disputed domain names from the GUCCI Marks either but are all the more apt to induce confusion among Internet users as to the source and origin of the products, given that the GUCCI Marks are internationally well known marks with retail stores and shops spread worldwide.

(2) The Respondent has no rights or legitimate interests in the disputed domain names as it is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the GUCCI Marks, as it is not commonly known by the disputed domain names as individual, business, or other organization, as “Gucci” is not its family name, as the Respondent did not provide the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute, and as the Respondent’s use of the disputed domain names cannot be considered a legitimate noncommercial or fair use without intent for commercial gain.

(3) The disputed domain names were registered and used in bad faith. With regard to bad faith registration, the Complainant argues that the GUCCI Marks are well known and have been used since as early as 1921 and that it is inconceivable that the Respondent was unaware of the existence of the Complainant or the GUCCI Marks, confusingly similar to the disputed domain names. The Complainant further contends that the use of the disputed domain names for commercial websites where the Complainant’s trademarks are misappropriated and prima facie counterfeit GUCCI products are offered for sale, clearly indicates that Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking products under GUCCI mark to their own websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through their websites, according to paragraph 4(b)(iv) of the Policy. The Complainant states, that the Respondent, besides free-riding on the goodwill of the GUCCI Marks for commercial gain, is using its websites to attract Internet users to sell Complainant’s prima facie counterfeit products as the prices of the products which are offered for sale on the Respondent’s websites are much lower than those of the genuine products and as on the homepage available at “www.fakegucci.org” the Respondent concedes that the products offered for sale are “replicas”. The Complainant argues that such use of the disputed domain names can be considered as further evidence that the Respondent registered and has used the disputed domain names also with the purpose of disrupting the Complainant’s business. The Complainant finally argues that the Respondent’s bad faith is further evidenced by the Respondent’s failure to reply to the Complainant’s cease and desist letters

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names fully incorporate the Complainant’s highly distinctive and well known GUCCI Marks.

The additional terms included in the disputed domain names are either generic words describing some of the Complainant’s products (i.e. “babybag”, “backpack”, “bags”, “belts”, “boots”, “case”, “cases”, “fanny pack”, “fanny packs”, “ipad case”, “ipad cases”, “handbag”, “handbags”, “knockoff handbags”, “knockoffs”, “luggage”, “messenger bag”, “messenger bags”, “sneakers“, „sunglasses“, „wallet”, “wallets”), geographical identifiers (i.e. “ca”, “canada”, “de”, “deutschland”, “france”, “japan”, “malaysia”, “miami”, “milan”, “milano”, “montreal”, “uk”, “us”) or other generic attributes or words related to the Complainant’s products and/or business (i.e. “authentic”, “buy”, “cheap”, “discount”, “factory”, “fake”, “for”, “in”, “men”, “online”, “outlet”, “sales”, “shop”, “store”, “women”). None of such terms hinder a finding of confusing similarity under the Policy. Firstly, it is well established that a domain name that wholly incorporates a trademark generally may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms or geographical identifiers (see KFC Corporation v. Ruhollah Gheisarinia, WIPO Case No. D2012-1010 with further references; Hemmings Motor News Inc. v. Giacomo Pegorari, WIPO Case No. D2012-1807 with further references). Secondly, the fact that the third party trademark “IPAD” is included in the disputed domain names <gucciipadcase.net> and <gucciipadcases.com> does not eliminate the similarity between the Complainant’s trademark and such domain names either as the Complainant in fact produces smartphone cases suitable for iPads and therefore the combination of the trademarks GUCCI and IPAD in some of the disputed domain names strengthens the likelihood of confusion as it directly refers to some of the Complainant’s products.

Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(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 the respondent 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 customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.

Based on the evidence before the Panel, the Respondent’s use of the disputed domain names is not bona fide under the Policy. The Respondent uses the disputed domain names in connection with websites offering products bearing GUCCI marks for sale, which the Complainant contends to be prima facie counterfeit products. Given that the Respondent uses domain names like <fakeguccibags.net> and <fakegucci.org> and that the prices of the products which are offered for sale on the Respondent's websites are much lower than those of the genuine products, the Complainant’s contention that the products offered by the Respondent are prima facie counterfeit products is plausible and in the view of the Panel well founded. Such use would not confer rights or legitimate interests on the Respondent under paragraph 4(c)(i) of the Policy. Even if the goods sold at the websites available at the disputed domain names were not counterfeit goods, the Respondent’s use would not have been bona fide under the Policy either. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data case”); Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). According to the documents included in the case file, the websites available at the disputed domain names do not disclose the registrant's relationship with the trademark holder in any way. Therefore, the Respondent’s use of the disputed domain names does not meet the criteria set out in the Oki Data case.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 respondent’s 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 Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and the intent to capitalize on the fame of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The Respondent’s websites available at the disputed domain names prominently feature the Complainant’s logo, frequently refer to the GUCCI Marks and offer what appear to be counterfeit GUCCI products. Furthermore, the Respondent registered a total number of 53 domain names all incorporating the Complainant’s highly distinctive and well known GUCCI Marks and additional terms referring to the Complainant’s products and business. It is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant.

As to bad faith use, the Complainant contends that the Respondent uses the websites at the disputed domain names to offer counterfeit goods, which would be an attempt to divert traffic intended for the Complainant's website to its own for commercial gain as set out in paragraph 4(b)(iv) of the Policy (cf. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552; Fabergé Ltd. v. Management Services, WIPO Case No. D2009-0425). While the Complainant persuasively argues that the goods offered by the Respondent are counterfeit goods, there is no further explanation and/or evidence on the case file in this regard. However, the Panel must not decide whether the Complainant’s mere allegation that the goods are counterfeit are sufficient to meet its burden of proof, as the Respondent does not meet the Oki Data case criteria either and was therefore trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out in paragraph 4(b)(iv) of the Policy.

Consequently, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <authenticdiscountguccihandbags.net>, <buycheapgucciwallets.com>, <buyguccibagsonline.net>, <buyguccihandbagsonline.net>, <buyguccihandbags.org>, <buygucci-sunglasses.com>, <buyguccisunglassesonline.com>, <caguccicanadaonline.net>, <cheapguccibagsforwomen.com>, <cheapguccibootsformen.com>, <cheapguccisneakers.org>, <cheapgucci-sunglasses.org>, <discountgucci-handbags.net>, <fakeguccibags.net>, <fakegucci.org>, <gucci-babybag.org>, <guccibackpackformen.net>, <Gucci backpack.net>, <guccibagsuksales.org>, <guccibeltsformenonsale.com>, <guccibootsformen.com>, <guccibootsformen.org>, <guccibootsforwomen.com>, <gucciboots-store.org>, <guccideutschland.net>, <guccifactory.org>, <guccifannypack.net>, <guccifannypacks.net>, <gucciformen.org>, <guccifrance.org>, <guccihandbag-shop.com>, <guccihandbagsoutlet-online.net>, <gucci-handbagsoutlet.org>, <gucci-handbagsus.com>, <gucciinjapan.com>, <gucciipadcase.net>, <gucciipadcases.com>, <guccijapan.net>, <gucciknockoff-handbags.com>, <gucciknockoffsonline.com>, <gucciluggageonline.com>, <guccimalaysia.org>, <guccimen-online.net>, <guccimen-online.org>, <guccimenwallet.net>, <gucci-messengerbag.com>, <guccimessengerbags.net>, <guccimiami.org>, <guccimilano.org>, <guccimilan.org>, <guccimontreal.org>, <guccionlineoutletus.net> and <guccionlineshopde.net> be transferred to the Complainant.

This transfer is ordered without prejudice to any rights that might be asserted by Apple Inc. with regard to the domain names <gucciipadcase.net> and <gucciipadcases.com>.

Brigitte Joppich
Sole Panelist
Date: June 14, 2013