Late last month, the Italian design house was awarded 197 more domain names from a Chinese cybersquatter. Yes, a single individual - Lin Shi Jiang of Hong Kong, who registered the sites in March 2013. According to the World IP Review, "Each address was combined with a complete or misspelled 'Gucci' name with generic or geographical terms." Interestingly, few of the websites (which are now owned by Gucci) were actually hawking counterfeit Gucci items; more than 20 of the addresses directed or linked to websites publishing pornography and which derived income from pay-per-click advertising. The rest of the domains redirected to inactive websites.
Harrie Samaras, who presided over the Uniform Domain Name Dispute Resolution Policy (UDRP) hearing, found that "it is difficult to imagine any circumstances in which [Lin Shi Jiang] could use the domain names without possibly infringing [Gucci’s] registered trademark." She further held: "The panel has found that [Jiang's] registration of the 197 domain names constitutes a pattern of intentionally obstructive behaviour. [Jiang] has parked the domain names without using them and without submitting any evidence whatsoever of any good faith use of or intention to use the domain names." For a full analysis of how a UDRP transfer is conducted, catch that here.
This marks another win for Gucci. The house's legal team scored 182 domain names in early January and 165 in June via UDRP hearings, and in late 2013, the US District Court for the Southern District of Florida ordered 155 websites selling fake Gucci goods to shut down and pay up $144.2 million in damages (a judgement that Gucci likely never received).
The fact that Lin Shi Jiang, the respondent in this case, was the sole owner of almost 200 domains sheds some light on the enormous problem that trademark owners face in policing their marks and fighting the sale of counterfeit goods online. While the UDRP process has made brand protection (relatively) quick and easy, it is generally just another tactic in what has come to be described as “whack-a-mole”-style enforcement, as counterfeiters and cybersquatters often just create new domain names and re-start their operations. BUT, these proceedings are becoming fairly routine for brand owners and they serve an important function, including but not limited to sending a message to counterfeiters that they will be targeted.