The Complainant is Golden Goose S.p.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Associati, Italy.
The Respondent is Guy Simmons of Minneapolis, Maine, United States of America.
The disputed domain name <ggdbscarpe.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2017, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 22, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 30, 2017. 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.
It results from the Complainant's undisputed allegations that the Complainant is an Italian company founded in 2000, active in the business of apparel and accessories and markets its products under the trademarks GOLDEN GOOSE DELUXE BRAND and GGDB. The Complainant further operates a substantial sales network around the world, involving more than 500 retail stores in cities including Milan, Paris, New York City and Hong Kong. The Complainant operates an online store through its website "www.goldengoosedeluxebrands.com".
Furthermore, it results from the undisputed evidence provided by the Complainant that it is the registered owner of a number of registered verbal trademarks, such as International Trademarks GGDB no. 1242358 (registered for goods in classes 18 and 25 on July 11, 2014) and GOLDEN GOOSE DELUXE BRAND no. 881244 (registered for goods in classes 3, 14, 18 and 25 on December 12, 2005).
The disputed domain name was registered on April 10, 2016. According to the evidence in the Complaint the disputed domain name resolved to a website in Italian language, headed "SCARPE GOLDEN GOOSE SALDI" and featuring a range of GOLDEN GOOSE shoes at what are expressed to be significantly discounted prices. No imprint or disclaimer identifying the operator responsible for this website is displayed on that website.
The Complainant ascertains that the disputed domain name is confusingly similar to its trademarks, since it incorporates its GGDB-Mark in its entirety and combines it with a merely descriptive term (the Italian term "scarpe" is to be translated "shoes" in English language). The disputed domain name points to a shop selling what the Complainant considers counterfeit shoes at significantly discounted prices and reproducing – without any permission – images from the Complainant's official website.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent is not a licensee of or otherwise affiliated with the Complainant. Moreover, the Respondent is not commonly known by the disputed domain name, has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and has not used the disputed domain name for any legitimate noncommercial or fair use purpose. All to the contrary: The Respondent was rather operating a webshop for counterfeit products under the disputed domain name.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant alleges that the Respondent is misleading the Internet users as to the source of the products by using the disputed domain name for a website selling counterfeit products. In this context, the Complainant refers to a set of previous UDRP decisions involving its marks.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of a trademark registration consisting of the four letters GGDB (i.e. international trademark registration no. 1242358). This mark predates the creation date of the disputed domain name, which is October 4, 2016.
Many UDRP panels have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the complainant's trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015‑1910). In the present proceedings the Complainant's registered trademark is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant's registered trademark GGDB as its distinctive element with the term "scarpe", which is totally applicable as a generic term to the field in which the Complainant plays a prominent role, i.e., the shoes sector (also see Golden Goose S.P.A. v. Tang Dan, WIPO Case No. D2015-2016 <goldengoosescarpe.com>).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
The website to which the disputed domain name resolves offers what the Complainant claims to be counterfeit products of the Complainant at a substantially discounted price, it further shows what the Complainant claims to be its own product-photos and it does not display any imprint or contact data of the operator responsible for this website. The Panel notes that these undisputed facts and allegations are consistent with the products in question being counterfeit. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The Panel notes that the disputed domain name resolves to a website offering what the Complainant claims to be counterfeit products of the Complainant at a substantially discounted price. This website further shows what the Complainant claims to be its own product-photos and it does not display any imprint or contact data of the operator responsible for this website. In the absence of any response explaining the contrary, the Panel has no reason to doubt these allegations. The Panel takes the combination of very substantially discounted prices in combination with the absence of any imprint, the use of the Complainant's trademark and the Italian language as well as the use of the Complainant's official photos as an indication that the Respondent is indeed offering counterfeit goods under the disputed domain name. In the light of the above, the Panel finds that Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 3.1.4. with further references).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 disputed domain name, <ggdbscarpe.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: September 13, 2017