The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.
The Respondent is Christina Ostermann of China.
The disputed domain name <ggdboutlet2016.com> (the "Domain Name") is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 20, 2016. On September 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 22, 2016, 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.
On September 26, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 24, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 28, 2016. 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's apparel and accessories business was founded in 2000 by Francesca Rinaldo and Alessandro Gallo. The products are marketed under the trade marks GOLDEN GOOSE DELUXE BRAND and GGDB (acronym of Golden Goose Deluxe Brand).
The earliest trade mark registration for GOLDEN GOOSE DELUXE BRAND submitted in evidence dates back to 2005. The Complainant also has the following trade mark registrations for GGDB (the "Trade Mark"):
(1) International Trade Mark for GGDB (word mark) No. 1242358, registered on July 11, 2014, in classes 18 and 25;
(2) Italian Trade Mark for GGDB (word mark) No. 0001608971, registered on October 7, 2014, in classes 18, 25 and 35.
The Complainant's products especially its sneakers are sought after by many celebrities including Jude Law, Keira Knightley and Sarah Jessica Parker. The products are sold in prestigious retail stores all over the world including Biffi Boutiquein Milan, L'Eclaireur Maraisin Paris, Browns Focusand Harvey Nicholsin London, Barneys New Yorkin New York City, H. Lorenzoin Los Angeles, lkram in Chicago, Lane Crawfordin Hong Kong and many others. The Complainant has also a strong presence in online stores and social networks such as Facebook, Twitter and YouTube. After financial investment by the Italian private equity fund, DGPA Capital, the Complainant embarked on a project of international expansion, with the opening of stores in Milan, Seoul, Paris, Tokyo, Beirut and Amsterdam. The Complainant's products have been featured in several international magazines such as Vogue, Elle, Marieclaire, L'Officiel, Grazia, Harper's Bazar, Cosmopolitan, Vanity Fair, Esquire and GQ.
The Domain Name was registered on July 8, 2016. It is connected to a website (the "Website") which is an online store selling counterfeit products of the Complainant. It also bears images belonging to the Complainant and the Trade Mark.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in the Complaint that the language of the proceeding be English for the following reasons:
- The Respondent operates in a multilingual context, as shown by the fact that the language used for its Website is English. For this reason, it is safe to assume that the Respondent would be familiar with English, which is the most common business and Internet language worldwide;
- The Domain Name is an English language domain name, consisting of the Trade Mark and the English word "outlet", registered in Latin script rather than Chinese characters;
- If required to submit the Complaint and annexes in Chinese, the Complainant would incur substantial translation costs and the proceeding would be delayed.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. Further, the Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine whether the trade mark is recognizable within the domain name. In this case the Domain Name comprises the Trade Mark in its entirety. The addition of the descriptive word "outlet" and the numbers "2016" do nothing to minimise the confusing similarity. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain suffix ".com". The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant contends that the Respondent is not a licensor, distributor or authorised agent of the Complainant. The Respondent is not known by the Domain Name. The prices for the products offered for sale on the Website are significantly lower than the retail price offered by the Complainant which makes it likely that the products are counterfeit. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the registration of the Trade Mark. The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark, the Complainant's images and counterfeit products on the Website confirm the Respondent's awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit for reasons set out in section 6.D. The use by a respondent of a domain name which includes a trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Complainant's Trade Mark appears on the Website, the products sold are counterfeit products bearing the Trade Mark and the Website also contain images and content taken from the Complainant's own website.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's website is and the products sold on it are those of or authorised or endorsed by the Complainant.
Further, the Respondent's contact information suggests that it is false and incorrect. It is a German address but the country stated is China. The deliberate use of fictitious and/or ineffective contact particulars is further evidence of bad faith. (Farouk Systems Inc. v. David, WIPO Case No. D2009-1245.)
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ggdboutlet2016.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 21, 2016