The Complainant is Golden Goose S.p.A., Italy, represented by LCA Studio Legale, Italy.
The Respondent is 邹亮亮 (Zou Liang Liang), China.
The disputed domain name <goldengoosehrvatska.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to Complaint in English on October 12, 2020.
On October 12, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 19, 2020, the Complainant confirmed its request that English be the language of the proceeding while submitted a translated Complaint in Chinese. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint and the translated 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 English and Chinese of the Complaint, and the proceedings commenced on October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2020. On December 2, 2020, the Center received an email from “[…]@ourui.com”, indicating among other things that, “it has been suspended”. The Center informed the Parties and requested the sender to identify itself, clarifying its relationship (if any) to the Respondent. No reply was received.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 14, 2020. 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 is an Italian company active in the fashion industry, with its headquarter in Milan. The Complainant mainly provides fashion clothes, shoes and accessories to global consumers. The Complainant claims its GOLDEN GOOSE brand has achieved a high reputation among global consumers through its wide distribution and promotion of the products. Many famous fashion magazines have recognized the high reputation of this brand.
The Complainant’s English trade name is GOLDEN GOOSE. Moreover, it owns a global portfolio of trademarks for GOLDEN GOOSE and GOLDEN GOOSE DELUXE BRAND, including, for example, the international trademark registration number 881244 for GOLDEN GOOSE DELUXE BRAND, registered on December 12, 2005 and number 1242357, registered on July 11, 2014; the China trademark registration number 28414887 for GOLDEN GOOSE, registered on December 7, 2018; and the European Union trademark registration number 018240635 for GOLDEN GOOSE, registered on May 15, 2020. Moreover, the Complainant also appear to operates an official website at “www.goldengoose.com“, and claims it owns a domain name <goldengoosemadrid.es>.
The disputed domain name was created on March 17, 2018. The Complainant submits evidence that the disputed domain name directed to a website bearing the Complainant’s trademark GOLDEN GOOSE DELUXE BRAND with the logo, selling what appears to be counterfeiting GOLDEN GOOSE products. The website does not accurately and prominently disclose the Respondent’s relationship with the Complainant. On the date of this decision, the disputed domain name leads to the same website.
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for GOLDEN GOOSE and GOLDEN GOOSE DELUXE BRAND, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are highly distinctive and well established. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. Moreover, the Complainant claims the disputed domain name causes the consumers to believe its connection with the Complainant’s business in Croatia, which more likely leads to the consumers’ likelihood of confusion.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative 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 proceeding.
The language of the Registration Agreement is Chinese. The Complainant filed its Complaint in English, containing a request that language of the proceeding be English. On October 12, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. On October 19, 2020, the Complainant submitted an amended Complaint, provided a Chinese translation to the Complaint, and confirmed its request that the language of the proceeding be English. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the Complainant provided a translation of its Complaint in Chinese; and the fact that the disputed domain name directed to a website using Croatian and English words.
In view of all these elements, the Panel rules that the language of the proceeding shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the marks GOLDEN GOOSE and GOLDEN GOOSE DELUXE BRAND based on its intensive use and registration of the same as trademarks globally.
Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark GOLDEN GOOSE and also the recognizable part of the registered trademark GOLDEN GOOSE DELUXE BRAND, followed by the geographic term “hrvatska”, which is a Croatian word and means Croatia. The applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark GOLDEN GOOSE, as its recognizable feature. It is the Panel’s views that the addition of the geographic term “hrvatska” (“Croatia” in English) after the Complainant’s trademark does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark.
Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain name directs to a website selling what appears to be counterfeiting GOLDEN GOOSE products. The Complainant has submitted evidence that it made online purchase from this website and received counterfeiting goods. This shows the Respondent’s intention to divert consumers for commercial gain to its website linked to the disputed domain name, by taking unfair advantage of the goodwill and reputation of the Complainant’s famous trademarks.
Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademarks, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.
Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned trademarks in GOLDEN GOOSE and GOLDEN GOOSE DELUXE BRAND and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the disputed domain name links to a website that promotes and distributes what appears to be counterfeiting GOLDEN GOOSE products for commercial gain, and that indicates its intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. Moreover, this website explicitly uses the Complainant’s trademark GOLDEN GOOSE DELUXE BRAND, the logo and some photos of the Complainant’s products without authorization, which has infringed upon the Complainant’s trademark right and copyright.
The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks; the high degree of distinctiveness and fame of the Complainant’s trademarks; the fact that the Respondent linked the disputed domain name to a website selling what appears to be counterfeiting GOLDEN GOOSE products, for commercial gain; and the fact that the Respondent used the Complainant’s registered trademarks and copyrighted photos without authorization, to promote and distribute the counterfeiting products, which infringed upon the Complainant’s trademark right and copyright. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <goldengoosehrvatska.com> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: December 23, 2020