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					ARBI TRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Zhou Guodong
Case No. D2010-1695



1. The Parties

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

The Respondent is Zhou Guodong of United States of America.



2. The Domain Names and Registrar

The disputed domain names <buyguccihandbags.com>, <discountguccipurses.com>,
<discountgucciwallets.com>, <getguccihandbags.com>, <guccibagsdiscount.com>,
<guccicollections.com>, <guccigiftshop.com>, <guccigiftstore.com>, <guccihandbags onsale.com>,
<guccihandbagssale.com>, <guccihandbagswallets.com>, <guccihandbagt oday.com>,
<guccinewcollections.com>, <guccishandbags.com>, <louis vuittongucci.com>,
<luxuryguccibags.com>, <myguccicollections.com>, <myguccistore.com>,
<popguccihandbags.com>, <topguccihandbags.com>, < vividguccihandbags.com>,
<yeahguccicollections.com>, <yeahgucci.com>, <yeahguccishop.com>, <yesguccigifts.com>,
<yesguccihandbags.com> (“Disputed Domain Names”) are registered with Beijing Innovative Linkage
Technology Ltd. dba dns.com.cn.



3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Cent er”) on October 7, 2010.
On October 7, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba
dns.com.cn a request for registrar verification in connection with the Disputed Domain Names. On
October 9, 2010 and October 14, 2010, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn
transmitted by emails to the Center its verification response confirming that the Respondent is listed as the
registrant and providing the contact details. On October 14, 2010, the Cent er transmitted by email to the
parties in both Chinese and English regarding the language of proceedings. On October 15, 2010, the
Complainant submitted a request that English be the language of proceedings. The Respondent did not
comment on the language of proceedings by the specified due dat e.

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
                                                  page 2

Policy (the “Rules”), and the WIP O Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 21, 2010. In accordance with the Rules, paragraph
5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 11, 2010.

The Center appoint ed Kar Liang Soh as the sole panelist in this matter on November 18, 2010. 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

The Complainant is part of the Gucci group which is part of the French Pinault -P rintemps-Redoute group.
The Gucci group started as a leather goods and luggage business in 1921 in Florence. The business has
since built a global presence with stores from Milan to New York. The trade mark GUCCI has been
associated with the Complainant for over 80 years in relation to high -fashion and leather products. The
Complainant has been rank ed 41 and 44 by Interbrand in 2009 and 2010 respec tively.

The Complainant holds many registrations for the trade mark GUCCI around the world, including:

Jurisdiction       Trade Mark No.           Registration Date
Italy              801958                   January 13, 1977
WIPO               429833                   March 30, 1977
United States      1093769                  June 3, 1977
CTM                121988                   April 1, 1996

The Complainant and other members of the Gucci group also hold domain name registrations comprising the
word GUCCI including <gucci-group.com>, <gucci.info> and <gucci.biz>. Most of the domain names of the
Gucci group redirect to the website at “www.gucci.com”.

The Disputed Domain Names were registered by the Res pondent on the following dates:

Domain Name                           Registration Date
<buyguccihandbags.com>                September 21, 2009
<discountguccipurses.com>             September 18, 2009
<discountgucciwallets.com>            September 18, 2009
<getguccihandbags.com>                September 21, 2009
<guccibagsdiscount.com>               September 18, 2009
<guccicollections.com>                September 21, 2009
<guccigiftshop.com>                   August 17, 2009
<guccigiftstore.com>                  August 17, 2009
<guccihandbagsonsale.com>             September 18, 2009
<guccihandbagssale.com>               September 18, 2009
<guccihandbagswallets.com>            September 18, 2009
<guccihandbagtoday.com>               September 21, 2009
<guccinewcollections.com>             September 21, 2009
<guccishandbags.com>                  September 21, 2009
<louis vuittongucci.com>              September 18, 2009
<luxuryguccibags.com>                 September 21, 2009
<myguccicollections.com>              September 21, 2009
<myguccistore.com>                    May 8, 2009
                                                   page 3

<popguccihandbags.com>                 September 21, 2009
<topguccihandbags.com>                 September 21, 2009
<vividguccihandbags.com>               September 21, 2009
<yeahgucci.com>                        September 21, 2009
<yeahguccicollections.com>             September 21, 2009
<yeahguccishop.com>                    August 17, 2009
<yesguccigifts.com>                    June 12, 2009
<yesguccihandbags.com>                 September 21, 2009

Very little is known about the Respondent beyond the WhoIs information for the Disputed Domain Names. It
is noted that the Respondent purports to be based in San Francisco, United States of America. The
Disputed Domain Names <guccicollections.com>, <myguccistore.com>, <yesguccigifts.com>,
<guccigiftshop.com> and <guccigiftstore.com> resolve to websites purporting to offer Gucci bags for sale.
Online shopping cart facilities are apparently provided at these websites. The Disputed Domain Names
<guccishandbags.com> and <yeahguccishop.com> resolve to blank pages. The ot her Disputed Domain
Names resolve to parking websites.

The Complainant wrote to the Respondent on July 12, 2010 requiring the Respondent to cease use of the
Disputed Domain Names and to transfer them to the Complainant. The Respondent did not reply to the
Complainant. The Respondent also did not reply to the Complainant’s follow -up correspondence of
September 2, 2010.



5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s GUCCI trade mark.
The Disputed Domain Names incorporate the whole of the Complainant’s GUCCI trade mark and include
non-distinctive elements which do not distinguish the Disputed Domain Names from the Complainant’s
GUCCI trade mark. The Disputed Domain Name <luois vuittongucci.com> additionally includes the trade
mark of anot her company Louis Vuitton;

(2) The Respondent has no rights or legitimate interests in respect of t he Disputed Domain Names. The
Respondent is neither a licensee of the Complainant nor authorized to use the trade mark GUCCI. The
Respondent is not commonly known by the Disputed Domain Names . The products offered on the websites
resolved from the relevant Disputed Domain Names are prima facie counterfeit products; and

(3) The Disputed Domain Names were registered and are being used in bad fait h. The GUCCI trade mark is
well-k nown and the Respondent must be aware of the same. The Respondent is attempting to attract for
commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’ s
trade mark as to source, spons orship, affiliation or endorsement of the Respondent’s websites or products
on the Respondent’s websites. The Respondent’s address does not correspond to any existing address.
The use of false contact information constitutes a further indication of bad faith.

B. Re spondent

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



6. Di scussion and Findings

6.1. Language of Proceeding
                                                     page 4



As the language of the registration agreement of the Disputed Domain Names is in Chinese, the default
language of the proceeding is Chinese. However, taking into account the following circumstances and
exercising the prerogatives given pursuant to paragraph 11 of the Policy, the Panel determines that English
should be the language of the proceeding:

(1) The Complaint was submitted in English and requested that the language of the proceeding be English;

(2) The Respondent is based in United States. The national language of the United States is English;

(2) The websites resolvable from the Disputed Domain Names have exclusively English content;

(3) The Respondent has neither chosen to participate in the proc eedings nor contest the language request of
      the Complainant;

(4) Insisting that Chines e shall be the language of the proceeding will serve no beneficial purpose and will in
       all likelihood cause delay to the proceeding; and

(5) It is unclear from the available information whether the Complainant and Respondent are conversant in
         Chinese. If they are not, forcing Chinese upon them as the language of the proceeding would serve
         no purpose.

6.2. Deci sion

To succeed in the proceeding, the following limbs of p aragraph 4(a) of the Policy must be established:

(1) The Disputed Domain Names are identical or confusingly similar to a trade mark in which the
       Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names have been registered and are being us ed in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has trade mark rights in the trade mark GUCCI by virtue of the trade mark
registrations identified in the Complaint. These registrations pre -date the registration Disputed Domain
Names by over a decade.

The trade mark GUCCI is incorporated in its entirety in all the Disputed Domain Names. The only difference
between the Disput ed Domain Names and the trade mark GUCCI are various prefixes and suffixes as
follows:

Domain Name                      Prefix        Suffix
<buyguccihandbags.com>           “buy”         “handbags”
<discountguccipurses.com>        “discount ”   “purses”
<discountgucciwallets.com>       “discount ”   “wallets”
<getguccihandbags.com>           “get”         “handbags”
<guccibagsdiscount.com>          -             “bags”, “discount”
<guccicollections.com>           -             “collections”
<guccigiftshop.com>              -             “giftshop”
<guccigiftstore.com>             -             “giftstore”
<guccihandbagsonsale.com>        -             “handbag”, “on”, “sale”
<guccihandbagssale.com>          -             “handbags”, “sale”
<guccihandbagswallets.com>       -             “handbags”, “wallets”
                                                       page 5

<guccihandbagtoday.com>        -                “handbag”, “today”
<guccinewcollections.com>      -                “new”, “collections”
<guccishandbags.com>           -                “s”, “handbags”
<louis vuittongucci.com>   “louisvuitton”       -
<luxuryguccibags.com>          “luxury”         “bags”
<myguccicollections.com>       “my”             “collections”
<myguccistore.com>             “my”             “store”
<popguccihandbags.com>         “pop”            “handbags”
<topguccihandbags.com>         “top”            “handbags”
<vividguccihandbags.com>       “vivid”          “handbags”
<yeahgucci.com>                “yeah”           -
<yeahguccicollections.com>     “yeah”           “collections”
<yeahguccishop.com>            “yeah”           “shop”
<yesguccigifts.com>            “yes”            “gifts”
<yesguccihandbags.com>         “yes”            “handbags”

The prefixes and suffixes are largely descriptive and generic words. In particular:

- “buy ”, “discount ”, “luxury”, “on sale”, “today”, “yeah” and “yes” are a call to action to a potential customer to
purchase goods;

- “handbags”, “purses”, “wallets” and “bags ” refer to the products to which a trade mark may be applied to
identify the products from. In this case, these are goods of which the evidence shows are of direct interest to
the Complainant;

- “gifts”, “luxury”, “my”, “pop”, “top” and “vivid” are descriptions of the products indicated above; and

- “giftshop”, “giftstore”, “store” and “shop” describe the availability of the products indicated above.

The Panel is of the view that the inclusion of these prefixes and suffixes do not successfully distinguish the
Disputed Domain Names from the trade mark GUCCI. This leaves the Disputed Domain Names
<guccishandbags.com> and <louis vuittongucci.com>.

In relation to <guccishandbags.com>, the first suffix “s” before the second suffix “handbags” is a typical
incorporation of an apostrophe “s”. As the apostrophe character “’” is not a valid character in a domain
name, it is often omitted and the ensuing letter “s” is simply joined to the preceding word. The apostrophe
“s” of the first suffix is not capable of distinguishing <guccishandbags.com> from the trade mark GUCCI.

In relation to <louis vuittongucci.com>, it is noted that the prefix “louis vuitton” is derived from the trade mark
LOUIS VUITTON of a third party. It is the Panel’s view that the combination of a third party’s trade mark wit h
a complainant’s trade mark does not immediately lead to the res ulting domain name being able to avoid
confusing similarity with the complainant’s trade mark. There must be something more such that the identity
of the complainant’s trade mark is no longer identifiable in the combination. In the present case, the
Disputed Domain Name is entirely made up of the Complainant’s trade mark GUCCI and the third party trade
mark. Nothing more presents itself to distinguish the Complainant’s trade mark. Instead of being
distinguished from the Com plainant’s trade mark, the combination simply suggests an association between
the Complainant’s trade mark and the third party trade mark.

Therefore, the Panel holds that all the Disputed Domain Names are confusingly similar to the trade mark
GUCCI. The first limb of paragraph 4(a) is established.

B. Rights or Legitimate Interests

The Complainant has denied any relationship with the Respondent and there is nothing to suggest that the
Respondent is commonly known by any of the Dis puted Domain Names.
                                                     page 6



In addition, the Complainant has also alleged that the products on the websites resolved from five of the
Disputed Domain Names are prima facie counterfeits. These are very strong accusations which if untrue,
would generate a strong denial from a reasonable respondent. However, the Respondent has declined to
provide any explanation or demonstrate any circumstances which may suggest any rights or legitimat e
interests.

In the circumstances, in accordance with established principles, the Panel holds that the C omplainant has
shown a prima facie case that the Res pondent does not have any rights or legitimate interests in all the
Disputed Domain Names. Since the Respondent has failed to rebut the prima facie case, the second limb of
paragraph 4(a) of the Policy is also established.

C. Registered and Used in Bad Faith

The Panel is of the view that paragraph 4(b)(iv) of the Policy is relevant to the present circumstances.
Paragraph 4(b)(iv) provides an example of bad faith registration and use:

“… by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain,
Internet users to [the Respondent’s] web site 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]
web site or location or of a product or service on [the Respondent’s] web site or location.”

The use of the trade mark GUCCI in the Disputed Domain Names is a clear attempt at associating with the
Complainant and the Complainant’s products. The websites res olved from the Disput ed Domain Names
<guccicollections.com>, <myguccistore.com>, <yesguccigifts.com>, <guccigiftshop.com> and
<guccigiftstore.com> appear to be for commercial gain. The websites contain shopping cart icons which
strongly suggest that products may be purchased online. The Respondent is clearly using the Disputed
Domain Names to attract Internet users to these websites by creating a likelihood of confusion with the
Complainant’s trade mark GUCCI. A reasonable person who visits any of these websites is likely to be
misled in relation to the source, sponsorship, affiliation, or endors ement of the website and the products
purportedly made available for online sale on the website. These f acts are consistent with the requirements
of paragraph 4(b)(iv) of the Policy.

The other Disputed Domain Names do not res olve to websites of similar nature. Rather, they are passively
held by the Respondent, whether by association with parking sites or empty sites. The evolution of the
concept of “passive holding” since the oft-quot ed decision of Telstra Corporation Limited v Nuclear
Marshmallows, WIPO Case No D2000-0003 has defined a common scenario of bad faith under paragraph
4(a) comprising the following elements (see Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414;
Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582; UP M-K ymmene Corporation v.
yongxi zhang, WIPO Case No. D2009-0882):

1) The disputed domain name incorporates a well-known mark;

2) The respondent is an individual, rat her than a business entity;

3) In view of the complainant’s trade mark rights, it is not possible to conceive of any plausible, legitimate,
actual or cont emplat ed use of the disputed domain name by t he respondent;

4) There is no apparent evidence of actual or contemplated use of the disputed domain name; and

5) The respondent failed to respond to the complainant’s cease and desist letter and the complaint under the
Policy.

Based on the evidence, the Panel has no doubt that the trade mark GUCCI is well-known. Other panels
have also come to the same conclusion about the trade mark GUCCI ( e.g., Guccio Gucci S.p.A. v. Mark
                                                     page 7

O'Flynn, WIPO Case No. D2001-0270; Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Cas e No. D2009-1170;
Guccio Gucci S.p.A. v. Roberto Baggio, WIPO Case No. D2009-1196). The Respondent appears to be an
individual. In view of the Complainant’s trade mark rights, the Respondent would in all likelihood be
prevented from unauthorized use of the Dispute Domain Names in the United States and other countries
covered by the Complainant’s trade mark registrations for GUCCI. The Disput ed Domain Names resolve to
empty webpages or parking webpages. The Respondent has also failed to respond to the Complainant’s
cease and desist letter of July 12, 2010. The facts readily fall wit hin the scope of the “passive holding”
scenario above.

In addition, the Complainant has submitted that the Respondent’s address is false. The Panel is also
doubtful whether the word “Foreignness” (which is associated with all of the Dis puted Domain Names
registered from September 18, 2010 onwards) and the letters “wg” (which is associated with all the Disputed
Domain Names) in the address form a part of any valid address in the United States. An applicant for
registration of a domain name has a duty to act honestly. In this case, the deliberate us e of fictitious and/or
ineffective contact particulars is further evidence of bad faith. (see ECCO Sk o A/S v. Protected Domain
Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v.
David, WIPO Case No. D2009-1245). Based on the available information, the Res pondent has likely failed
to discharge the duty to act honestly.

In view of the above, the Panel is satisfied that bad faith registration and use under the third limb of
paragraph 4(a) is established for all the Disputed Domain Names.



7. Decision

For all 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:

1) <buyguccihandbags.com>, <discountguccipurses.com>, <discountgucciwallets.com>,
<getguccihandbags.com>, <guccibagsdiscount.com>, <guccicollections.com>, <guccigiftshop.com>,
<guccigiftstore.com>, <guccihandbagsonsale.com>, <guccihandbagssale.com>,
<guccihandbagswallets.com>, <guccihandbagtoday.com>, <guccinewc ollections.com>,
<guccishandbags.com>, <luxuryguccibags.com>, <myguccicollections.com>, <myguccistore.com>,
<popguccihandbags.com>, <topguccihandbags.com>, < vividguccihandbags.com>,
<yeahguccicollections.com>, <yeahgucci.com>, <yeahguccishop.com>, <yesguccigifts.com>,
<yesguccihandbags.com> be trans ferred to the Complainant; and

2) <louis vuittongucci.com> be cancelled.




Kar Liang Soh
Sole Panelist
Dated: December 6, 2010

				
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