WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Goose S.P.A. v. 杜学发

Case No. D2018-0574

1. The Parties

The Complainant is Golden Goose S.P.A. of Milan, Italy, represented by Scarpellini Naj-Oleari & Partners, Italy.

The Respondent is杜学发of Qujing, Yunnan, China.

2. The Domain Name and Registrar

The disputed domain name <goldengoosesit.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

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 e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2018, the Registrar transmitted by e-mail 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 March 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2018.

The Center appointed Sok Ling MOI as the sole panelist in this matter on May 3, 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.

4. Factual Background

Founded in 2000, the Complainant is in the business of apparel and accessories, and it markets its products under the brand and trade mark GOLDEN GOOSE DELUXE BRAND and GGDB. Today, the Complainant operates a vast sales network of more than 690 retail stores around the world and boasts of a strong online presence through its social media networks. It also offers its products for sale through the online store on its main website at “www.goldengoosedeluxebrand.com”.

The Complainant owns the following trade mark registrations:

The disputed domain name <goldengoosesit.com> was registered by the Respondent on December 12, 2017. The disputed domain name resolves to a website which purports to offer for sale GOLDEN GOOSE DELUXE BRAND apparel and accessory products that are marketed and sold by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its trade mark GOLDEN GOOSE DELUXE BRAND.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website purportedly offering for sale apparel and accessory products that are marketed and sold by the Complainant, was not bona fide. The Complainant alleges that the products offered for sale on the Respondent’s website are counterfeit. The Complainant therefore contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name.

The Complainant contends that the disputed domain name has been registered and used to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant alleges that the Respondent offers counterfeit products under the Complainant’s trade mark. The Complainant therefore contends that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that the distinctive element in the Complainant’s trade mark GOLDEN GOOSE DELUXE BRAND is GOLDEN GOOSE, which has also been separately registered as a trade mark in Italy in 2015. The Panel accepts that the Complainant has rights in GOLDEN GOOSE by virtue of its use and registration of the same as a trade mark.

The disputed domain name effectively incorporates the Complainant’s trade mark GOLDEN GOOSE in its entirety. The addition of the letters “s” and “it” does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trade mark. The addition of the generic Top-Level-Domain (“gTLDs”) “.com” in this case does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the GOLDEN GOOSE trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “golden goose”.

The Panel notes that the Respondent is using the disputed domain name to publish a website that purports to offer for sale GOLDEN GOOSE DELUXE BRAND apparel and accessory products. The Complainant claims that the products offered for sale on the Respondent’s website are counterfeit and submitted evidence to show that the Respondent’s website reproduced the Complainant’s trade mark. Given the long standing use and fame of the Complainant’s trade marks, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products to the Respondent’s website. The Panel does not find such use to be bona fide or fair use of the disputed domain name for the purposes of the Policy.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location.

There is no doubt that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain name, given that its website reproduced the Complainant’s trade mark GOLDEN GOOSE DELUXE BRAND. The Panel determines that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade marks by diverting Internet users seeking the Complainant’s branded apparel and accessory products to its own websites for financial gain. Furthermore, the “it” in the disputed domain name may represent the international country code for Italy which is the country of origin of the Complainant’s products, and therefore the addition of “it” as a suffix in the disputed domain name increases the likelihood of confusion. The registration of the disputed domain name was clearly in bad faith.

The Complainant claims that the products offered for sale on the Respondent’s website are counterfeit. Irrespective of whether the products offered on the Respondent’s websites are in fact counterfeit, the reproduction of the Complainant’s trade marks on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant is indication of bad faith. The Panel is satisfied that the Respondent intends to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel also notes that efforts to contact the Respondent at the facsimile and physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 name <goldengoosesit.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: May 15, 2018