The Fashion Law Exclusive - Italian design house, Gucci, has won ownership over 182 domain names in a recent Uniform Domain-Name Dispute-Resolution Policy hearing. These new domains join the 165 domains that the Italian design house was awarded this past June. Gucci filed a complaint against Brian E. Nielsen, the individual who registered the domain names, in November 2013 with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. Gucci alleged that Nielsen was operating sites, which were offering clothing and accessories bearing the Gucci trademark, as well as other well-known brand names, such as Bulgari, Celine, Chanel, Louis Vuitton, Prada and Hermes. The WIPO Center served Nielsen with the complaint "on the physical and electronic coordinates specified in the [domain names'] WhoIs records. It was not possible to serve the documents physically on the address included in the WhoIs records as the address was invalid. Similarly, attempts to contact the Respondent by telephone on the number included in the WhoIs records failed." So, essentially "Brian Nielsen" (probably a fabricated name) entered a bunch of falsified contact information in connection with the sites. Not surprisingly, he failed to respond to the Center's summons notifying him of the proceedings.
The WIPO Panel held that Gucci met all of the necessary elements in its case; namely, the filing party must demonstrate that it has rights in the trademark(s) at issue and, if this is satisfied, the disputed domain name(s) must be shown to be identical or confusingly similar to the filing party's trademark(s). The Complainant (Gucci, here) must then show that the disputed domain names have been both registered and were being used in bad faith by the Respondent (Nielsen, in this case).
The Panel held that Gucci had proven ownership of the registered trademarks at issue (a pretty easy one, especially because Gucci's trademarks are very well-known throughout the world), and thus, the Panel proceeded to the assessment of similarity between the Gucci trademark and the domain names at issue, which include guccibyhabitjp.org, guccibyhabitualjp.org, guccibyhaircutjp.org, guccibyhelmetjp.org, and guccibyhelpfuljp.org, among many others. According to the Panel's decision, while each domain name is a combination of the word "Gucci" with a descriptive term, such as habit, haircut, or helmet, the domain names "will be immediately recognized by many people as identifying the trade source of [Gucci's] products. The inclusion of the descriptive terms in each disputed domain name does not dispel that distinctive function.
In addition to proving ownership and showing confusing similarity between the trademark and the domain names (a question that differs from the "confusingly similar" inquiry under trademark law, which can require an assessment of the nature of the goods or services protected, as well as the geographical location or timing of use), the filing party must also prove is that the Respondent has no rights or legitimate interests in the disputed domain names. The panel was satisfied that according to Gucci, the Respondent was not authorized to use its trademarks, nor does it have any other association or relationship with the Respondent. Furthermore, Gucci contended that the products offered through the Respondent’s website bearing the Gucci trademark are almost certainly counterfeits. While Nielsen would have been permitted to present evidence to prove that the goods were, in fact, authentic (even though they were definitely fake), he did not respond to the Panel's summons and was not present at the hearing.
Lastly, Gucci had to show that Nielsen was using its trademark in bad faith. Due to the strength of the Gucci mark, the Panel was able to infer that the Respondent was "plainly aware" of Gucci and its trademark when he registered the disputed domain names. Thus, Panel further inferred that "the Respondent registered each of the disputed domain names to take advantage of the trademark significance of the Complainant’s trademark and, in the absence of authority from the Respondent or other justification, in bad faith."
Long story short, Gucci now owns 128 more domain names that were previously owned and operated by "Brian E. Nielsen.”