As of late, there is no shortage of Gucci in the courtroom. It wasn’t that long ago that we told you about Gucci’s disappointment in its lawsuit against Guess. Well, it seems that the tables have turned for the Italian design house, at least in the domain name dispute arena, as Gucci recently won in a Domain-Name Dispute-Resolution over 165 infringing domain names.
Domain name disputes are a (relatively) quick and easy form of brand protection, originally designed to protect against the use of a trademark in a domain name without the trademark owner’s permission, which is precisely the issue Gucci was having. Gucci brought its action against Hong Kong-based defendant, who's surname is Wode, before the World Intellectual Property Organization. The Italian design house successfully alleged the three elements necessary to be granted ownership over the domains.
The first element is that the domain names are confusingly similar or identical to the Gucci mark. This was an easy one to satisfy when you consider a few of the domain names in question: 2013freegucci-handbags.com, allguccijapan.com, all-gucci-japan.com, 2013newguccihandbagscenter.com. The second element is that Wode has no rights or legitimate interests in the domain names, which was satisfied with the Panel’s finding that the “sale of counterfeit goods from a domain name that incorporates the mark used for genuine goods to which the counterfeits correspond does not provide a legitimate interest in that domain name.” And the third element is that the domain names have been registered in bad faith. This was another painless element for Gucci to establish, as a showing that the domain names were registered with knowledge of Gucci’s use of the trademark and without a legitimate interest constitutes bad faith. And with that, all 165 domain names were transferred to Gucci.
While this is an efficient form of brand protection, the unfortunate truth is that domain names are a dime a dozen for someone like Wode. Design houses like Gucci, spend countless hours and a lot of money establishing their brand, and that includes their domain names. Wode, on the other hand, registered all 165 domain names in a two month period and is probably only slightly inconvenienced while registering the next batch of counterfeit domain names. We know, a bleak outlook. And if you’re left wondering what your role in this can be, as we often are, here’s the easy answer: Don’t buy from counterfeit sites, if the price seems too good to be true, it is. Without customers, these sites have no purpose, or at least we can hope as much.
Jennifer Williams is a law student, who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. For more from Jennifer, visit her blog, StartFashionPause, or follow her on Twitter.