Guccio Gucci S.p.A. v. Mark O'Flynn

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Guccio Gucci

S.p.A. v. Mark O'Flynn

Case No.

D2001-0270

1. The Parties

The Complainant is

Guccio Gucci S.p.A of Via Tornabuoni 732, Florence, Italy.

The Respondent is Mark

O'Flynn of Via di Villa Grazioli 47, 0046 Grottaferrata, Rome,

Italy.

2. The Domain Name

and Registrar

The domain name at issue

is:

gucciboutique.com

and the Registrar is:

Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration

and Mediation Center [the Center] received the Complaint on February 20,

2001 [electronic version] and on February 23, 2001 [hard copy]. The Center

verified that the Complaint satisfies the formal requirements of the ICANN

Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for

Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental

Rules]. The Complainant made the required payment to the Center.

The formal date of

the commencement of this administrative proceeding is March 19, 2001.

On March 16, 2001,

the Center transmitted via email to Network Solutions, Inc. a request for

registrar verification in connection with this case and on the same day

Network Solutions, Inc. transmitted by email to the Center Network Solutions'

verification response confirming that the registrant and the contact for

administrative purposes is Mark O'Flynn and that the contact for billing

purposes is Luciano Carbonetti of Rome, Italy.

Having verified that

the Complaint satisfied the formal requirements of the Policy and the Rules,

the Center transmitted on March 19, 2001, to

postmaster@gucciboutique.com;

fn204319@MICROELETTRA.IT;

giagenovese@PCG.IT;

and to

l.carbonetti@PCGITALY.com

the Notification of

Complaint and Commencement of the Administrative Proceeding. The Center

advised that the Response was due by April 7, 2001. On the same day the

Center transmitted by fax and by mail copies of the foregoing documents

to:

Mark O'Flynn

Via di Villa Grazioli 47

Grottaferrata

Rome

Italy

Giampiero Genovese

PCG srl

Via Nettunense Km 6, 500

Aricca 00040

Rome;

and to

Luciano Carbonetti

PCG srl

Via Nettunense Km 6, 500

Aricca 00040

Rome

No Response was received

from the Respondents by the due date of April 7, 2001. On April 9, 2001,

Notice of Respondent Default was sent to the Complainant and to the Respondent

using the same contact details and methods as were used for the Notification

of Complaint and Commencement of the Administrative Proceedings. No reply

by the Respondent to the Notification of the Respondent's Default was received.

Having received Declarations

of Impartiality and Independence and Statements of Acceptance, from Mr.

David Perkins, Ms. Anna Carabelli and Mr. Andrea Mondini, the Center transmitted

to the parties a Notification of Appointment of Administrative Panel and

Projected Decision Date, in which Mr. David Perkins, Ms. Anna Carabelli

and Mr. Andrea Mondini were formally appointed as Panelists. The Projected

Decision Date was May 24, 2001. The Panelists find that the Administrative

Panel was properly constituted and appointed in accordance with the Rules

and the Supplemental Rules.

Having reviewed the

communication records in the case file, the Administrative Panel finds that

the Center has discharged its responsibility under para. 2(a) of the Rules

"to employ reasonably available means calculated to achieve actual notice

to Respondents". Therefore, the Administrative Panel shall issue its Decision

based upon the Complaint, the Policy, the Rules and the Supplemental Rules

and without the benefit of any Response from the Respondent.

4. Factual

background

4.1 The

Complainant

The Complainant

is Guccio Gucci S.p.A of Florence Italy ["Gucci"]. The Complainant is very

well known internationally in the fashion field.

4.2 The Complainant's

Trade Marks

The Complainant has

exhibited schedules of its trademarks and service mark registrations for

the word mark GUCCI in some 150 countries worldwide variously in Classes

2: 3: 6: 8: 12: 14: 16: 18: 20: 21: 22: 24: 25: 26: 27: 28: 29: 30: 32:

34: 35: 36: 39: and 42. These registrations include national registrations

for Italy, the country where both the Complainant and the Respondent are

domiciled and international registrations both dating from 1980 for the

word mark GUCCI and the word mark GUCCI + device for goods in all Classes

1-42 covering 22 countries. The earliest national Italian registration dates

back to 1955 and the majority of those filed overseas date from the 1970's

and 1980's . Quite apart from these registrations, the GUCCI name and mark

would in the Panel's opinion probably qualify as a well-known mark

for the purposes of Art. 6 bis Paris Convention 1883. On any footing, the

name and mark GUCCI is very well known internationally.

4.3 The Complainant's Business

The Complainant's

clothing and other GUCCI branded products are sold internationally through

its own network of shops known as GUCCI Boutiques and also through other

retail outlets. In the first half of the year 2000, the Gucci Group recorded

sales of US$1,028M, of which US$676M was accounted for by its GUCCI Division

[letter from the President and CEO to shareholders contained in the First

Half 2000 Report].

4.4 The Respondent

Having filed no

Response, nothing is known of the Respondent, save that he is based in Rome

and is the registrant of a number of domain names incorporating the mark

and name of a number of very well known fashion houses, including PRADA:

ETRO: ARMANI; and FENDI, as to which see paragraphs 5 and 6 below.

4.5 Domain Name

in Issue

The domain name

in issue was registered by the Respondent on September 9, 1999. The name

does not resolve to an active website. The website is stated to be Sito

in Allestimento/Site under construction.

5. The Parties' Contentions

5.1 The Complainant

The Complainant contends

that the Respondent has registered a domain name which is confusingly similar

to its GUCCI trademark and to the trading identity of its GUCCI Boutique

outlets, that the Respondent has no rights to or legitimate interests in

respect of that domain name and that the Respondent has registered and is

using that domain name in bad faith.

5.2 Identical or

Confusingly Similar

The Complainant relies

upon the GUCCI mark and identity of its GUCCI Boutique retail outlets.

5.3 Rights or Legitimate

Interests

The Complainant

relies upon the fact that, to the best of its information and belief, the

Respondent is not known by nor does he trade under the name GUCCI Boutique.

Further, since the website to which the domain name resolves remains under

construction [see paragraph 4.5 above] it is to be inferred in the absence

of a Response that before notice of this dispute the Respondent did not

make demonstrable preparations to use the name in connection with a bona

fide offering of goods or services. Finally, the Complainant has not

licensed or otherwise authorised the Respondent to use its GUCCI name and

mark. In other words, the Complainant's case is that the Respondent cannot

bring himself within any of the circumstances of paragraph 4(c) of the Policy

which demonstrate a Respondent's rights or legitimate interest to the domain

name in issue.

5.4 Registered in

Bad Faith

Here the Complainant's

case is that, by reason of the very well known status of the GUCCI name

and mark, the Respondent must have been aware of it when registering the

domain name in issue. This is more so, having regard to the fact that the

Respondent is domiciled in Italy, which is the home of the Complainant's

world famous business. It is further evidenced by the Respondent's conduct

in registering domain names incorporating the marks of other famous Italian

clothing companies in combination with the suffix boutique. These

are ARMANI: ETRO: FENDI; and PRADA [see paragraph 4.4 above].

5.5 In support

of these contentions the Complainant relies upon the following Decisions

under the Policy.

5.5.1 WIPO

Case No. D2000-1157 Banca Sella SpA v. Paolo Parente

There the domain

name in issue was bancasella.com. The Complainant was a well-known

Italian Bank which had been trading since the 19th Century

under the BANCA SELLA name. The Panel held that the Respondent, an Italian

citizen, must have known of the renown of the Complainant's BANCA SELLA

name when he registered the domain name in issue. Therefore, the domain

name was registered in opportunistic bad faith. The Respondent,

having failed to file a Response, had demonstrated no rights or legitimate

interests, a factor to be taken into account when considering registration

in bad faith. Finally, by reason of his registration in bad faith and

lack of rights or legitimate interests, any use of the domain name by

the Respondent would be contrary to fair competition and trademark

law principles.

5.5.2 WIPO

Case No. D2000-0163 Veuve Cliquot Ponsardin v. The Polygenix Group

There the domain

name in issue was veuvecliquot.org. The Panel found that the Respondent

had registered and used the domain name in bad faith for the following

reasons:

- The VEUVE

CLIQUOT mark was so famous that the registration and any attempt to

use could only suggest opportunistic bad faith.

- The domain

name resolved to a website which directed those with an interest in

the domain name to the Respondent's website, which carried the message

"Hi, we sell

a whole bunch of Great Domain Names that you might be VERY interested

in"

The Respondent had

registered over 100 domain names, many of which incorporated third party

trademarks. The two factors were powerful evidence of bad faith.

- The Respondent

had no rights or legitimate interests in the domain name, which might

otherwise have legitimised registration and use in good faith.

5.5.3 WIPO

Case No. D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas

There the domain

names in issue were christiandior.com and .net. As to bad

faith, the Panel cited and applied the Veuve Cliquot Decision [paragraph 5.5.2 above].

The Panel's reasons included:

- Evidence

of the Respondent being the registrant - albeit using steps to hide

his true identity - of over 100 other domain names, with the intent

of acquiring those names and selling them for profit (i.e. trafficking);

- The CHRISTIAN

DIOR name and mark was so well-known that its very use by an unauthorised

third party suggests opportunistic bad faith. It was just not

credible that, having regard to the notoriety of the CHRISTIAN DIOR

name and mark, the Respondent did not know of it when registering

the domain name in issue.

5.5.4 WIPO

Case No. D2000-0137 Expedia Inc. v. European Travel Network

There, the domain

name in issue was expediatravel.com. The Complainant had operated

an on-line travel agency service using the domain name expedia.com

since 1996. It became during the busy holding shopping season in 1999

one of the top 10 visited e-commerce sites worldwide. Finding registration

and use in bad faith, the Panel held that the Respondent, who also operated

a competing on-line travel service website, could only have registered

the domain name in issue

"… with the

primary purpose of diverting potential customers of Complainant

to the Respondent's website and thus disrupting the business of

a competitor, the Complainant."

The Panel found that

the Respondent knew or should have known of the Complainant's trademark

at the time it registered the expediatravel.com domain name given

the widespread use of the Complainant's EXPEDIA website.

5.5.5 That

Decision is quoted with approval by the Panel in the CHRISTIAN DIOR case

(supra) on the issue of registration and use in bad faith, even though

the Complainant's mark was somewhat less famous than the CHRISTIAN DIOR

and VEUVE CLIQUOT marks.

5.5.6 WIPO

Case No. D2000-1226 Fendi Adele Srl v. Mark O'Flynn

There the domain

name in use was fendiboutique.com and the Respondent the same individual

as the Respondent in this administrative proceeding. The domain name resolved

to a website stated to be under construction. Also, as in this

case, no Response was filed. The Panel found registration and use in bad

faith on the following grounds:

When registering

the domain name in issue the Respondent was perfectly aware of the famous

FENDI trademark and the sale of FENDI branded products in speciality boutiques.

This was the more

so, given the Respondent's residence in Italy where the FENDI mark is

especially famous.

The Respondent had

registered other well-known third party marks as domain names, namely

gucciboutique.com; armaniboutique.com; pradaboutique.com

and others.

Finally, the Respondent

offered to sell the domain names in issue to the Complainant for approximately

US$5,800.00 a sum well in excess of his costs directly related to the

domain name.

5.6 Used in Bad

Faith

Whilst as will be apparent

from the synopses of the cases in paragraphs 5.5.1 to 5.5.6 above, they

also deal with use as well as registration in bad faith, the

Complainant also cites in support of its case on use in bad faith

the following additional Decisions under the Policy.

5.6.1 WIPO

Case No. D2000-0003 Telstra Corporation v. Nuclear Marshmallows

This case is now

so well known that its background needs no repetition here. The Complainant

relies on the Decision for the now accepted proposition, with which this

Panel agrees, that inaction can in appropriate circumstances constitute

use in bad faith. Thus, the passive holding of a domain name -

as is apparent from paragraphs 4b(i) - (iii) inclusive - can amount to

bad faith use. Relevant circumstances include;

- where the

Complainant's trademark has a strong reputation and is widely known;

and

- where it

is not possible to conceive of any plausible actual or contemplated

active use of the domain name by the Respondent which would not be

illegitimate, such as by being a passing-off, an infringement of consumer

protection legislation, or an infringement of the Complainant's rights

under trademark law.

5.6.2 Decisions

under the Policy applying the Telstra criteria for assessing use

in bad faith

The Complaint

cites the following decisions in this respect:

WIPO

Case No. D2000-0021 Ingersoll-Rand v. Frank Gully

There the domain

names in issue were ingersoll-rand.net and .org and ingersollrand.org.

There the Panel found the Respondent had no rights or legitimate interests

in the domain names and that, although no actual use was being made of

them, any use would necessarily be contrary to the Complainant's trademark

rights and/or amount to unfair competition.

WIPO

Case No. D2000-0042 Compaq Computer v. Boris Beric

There, the domain

names in issue were infopaq.com and smartpaq.com, the Complainant

being the owner of the COMPAQ mark, many registrations having the PAQ

suffix, including INFOPAQ, and a number of registrations using the SMART

prefix. The Respondent made no use of the domain names in issue and the

Panel found he had no rights or legitimate interests in them. Citing the

Telstra Decision the Panel [the Presiding Panelist in this administrative

proceeding] found use in bad faith by reason of:

- the

strong reputation of Compaq's trademark and its use internationally;

and

- the

Respondent's failure to provide evidence of any actual or contemplated

good faith use of the domain names.

WIPO

Case No. D2000-0075 InfoSpace.com, Inc. v. Tenenbaum Ofer

There the domain

name in issue was info-space.com and the Complainant was the owner

of the INFOSPACE trademark. The Panel found bad faith use by reason of:

- INFOSPACE

being a well-known mark and website in the Internet community; and

- anyone using

a search engine to find INFOSPACE would be likely to be given a link

to the Respondent's site with the result that the Respondent might

profit by deliberately creating a likelihood of confusion with the

Complainant's mark.

WIPO

Case No. D2000-0086 Association of British Travel Agents v. Sterling

Hotel Group

There the domain

name in issue was abta.net and the Complainant was the owner of

the well-known ABTA trademark. The domain name did not resolve to an active

website but the Panel [the Presiding Panelist in this administrative proceeding]

applying the Telstra principles notwithstanding found passive use.

The Panel cited the English Court of Appeal decision in the One in

a Million case [1999 FSR 1] wherein it was held that a threat to infringe

the Plaintiff's well-known trade marks by the Defendant registering them

as domain names was sufficient use to constitute trade mark infringement.

Principles of English law were applied in that case because both parties

were domiciled in England. The relevance of the well-known status of the

Complainant's ABTA mark is, however, relevant to the circumstances of

this administrative proceeding.

WIPO

Case No. D2000-0090 Marconi Data Systems v. IRG Coins & Ink Source,

Inc.

There the domain

name in issue was ink-source.com, the Complainant being the owner

of the registered trade mark INKSOURCE in the United States of America,

a well-known mark under which many hundreds of millions of dollars worth

of inks and ink-related goods had been sold in the United States. The

domain name was not actually used although one of the Respondents was

said to intend to use it to advertise and promote its own ink products.

The Panel held that, per Telstra, inaction can in appropriate circumstances

constitute bad faith use. There bad faith was found by reason of the Respondent

having constructive notice of the Complainant's INKSOURCE trademark before

registering the domain name in issue, the Respondent's said stated intention

to use that domain name "in direct competition with the Complainant",

and its failure to file a Response to the Complaint.

WIPO

Case No. D2000-0172 Sanrio Company Ltd and Sanrio Inc. v. Neric Lau

There the domain

name in issue was sanriosurprises.com. The Complainants were a

Japanese company and its US subsidiary, who owned retail service mark

registrations for SANRIO SURPRISES and who were the registrants of the

domain name SANRIO-SURPRISES.com which they used to make Internet sales

of a wide variety of goods. They had been using the SANRIO mark for over

25 years. The domain name in issue was not used. The Panel held it was

clear that the so-called passive holding of a domain name can nevertheless

support a finding of bad faith use and, under the circumstances of that

case, found there to be evidence of such bad faith use by the Respondent.

WIPO

Case No. D2000-0239 J García Carrión S.A. v. José Catalán

Frías

This Decision is

in Spanish and none of the Panelists in this case are Spanish speakers.

Nevertheless, it appears that the domain name in issue was donsimon.com

and that the Complainant was the owner of the well-known DON SIMON mark

for wines. This Complaint contains an English language translation of

an excerpt of the Decision, which related to the non-use by the Respondent

of the domain name in issue. The Panel held that the passive holding of

the domain name in the circumstances of that case constituted use in bad

faith.

WIPO

Case No. D2000-0515 Advanced Micro Devices Inc. v. [No Name]

There the domain

name in issue was advancedmicrodevices.com, the Complainant being

the owner of the ADVANCED MICRO DEVICES trademark under which it conducts

its well-known worldwide semiconductor and microprocess or business. The

domain name in issue was not used by the Respondent. The Panel held, applying

Telstra, that under the circumstances of the case the passive holding

of the domain name by the Respondent amounted to use in bad faith.

WIPO

Case No. D2000-0620 Teledesic LLC v. McDougal Design

The domain name in

issue was internet-in-the-sky.org and the Complainant was the registrant

of the US service mark INTERNET-IN-THE-SKY, which was used by it in relation

to its telecommunications services. The domain name in issue was in this

case used by the Respondent. Applying Telstra, the Panel held that

in the circumstances of the case there was bad faith use. Those circumstances

included

- the fact

that the Complainant's trademark is fanciful and uses three hyphens

between the four words;

- that the domain

name in issue was identical with that mark;

- that the Respondent

failed to file a Response; and

- that the Respondent's

business operated under a completely different name.

WIPO

Case No. D2000-0723 Clinica Corachan S.A. v. Fc Team Car SL

This is another Decision

in Spanish. The domain names in issue all used the prefix clinicacorachan

with the .com, .net and .org suffixes. Clinica Corachan

was the Complainant's trading name which it had been using since its foundation

in 1924. This Complaint contains an English language translation of an

excerpt of the Decision, whereunder the domain names were directed to

be transferred to the Complainant, which reads:

"Non-use

has already been regarded in other cases as use in bad faith."

WIPO

Case No. D2000-0766 Red Bull GmbH v. Harold Gutch

There the domain

name in issue was redbull.org and the Complainant was the owner

of the RED BULL trademark under which brand its energy drink is sold in

44 countries worldwide comprising in 1999 some 622 million units. The

Complainant was also the registrant of a number of redbull prefixed

domain names including a .com and a number of national country

codes [i.e .de; .ch; .co.uk; .at; .se etc]. The domain name in issue was

not in use. Applying the Telstra case,. the Panel found bad faith

use citing as relevant circumstances:

- the well-known

status and reputation of the Complainant's RED BULL mark;

- that any

use by the Respondent would lead members of the public to associate

it with the Complainant; and

- that any

such use would constitute passing-off, trademark infringement and

breaches of Austrian and German unfair competition law.

WIPO

Case No. D2000-0823 El Rincon del Vago SL & Others v. Nettika SL

This is yet another

Decision in Spanish. The domain name in issue was elrincondelvago.com

and the Complainants appear to have been the proprietor of a Spanish trademark

registration EL RINCON DEL VAGO in Class 38. This Complaint contains an

English language translation of an excerpt of the Decision which reads:

"A

page without contents including a link to real web page [is]

… regarded … as use in bad faith."

6. Discussion

and Findings

6.1 The

Policy paragraph 4(a) provides that a Complainant must prove each

of the following that the Respondent's domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and the Respondent has no rights or legitimate interests in respect

of the domain name; and the domain name has been registered and

is being used in bad faith.

6.2 Paragraph

4(c) of the Policy sets out circumstances which, in particular but without

limitation, shall demonstrate the Respondent's rights or legitimate interests

to the domain name.

6.3 Paragraph

4(b) of the Policy sets out circumstances which, in particular but without

limitation, shall be evidence of the registration and use of a domain

name in bad faith.

6.4 Identical

or Confusingly Similar

The Panel have

no hesitation in finding, as did the Panel in the FENDI Decision [paragraph

5.5.6 above] that the domain name in issue is identical with the Complainant's

trading style of GUCCI Boutiques and is confusingly similar with its GUCCI

registered trademarks. The Complainant therefore succeeds in meeting the

requirements of paragraph 4(a)(i) of the Policy.

6.5 Rights

or Legitimate Interests

In the absence

of a Response and on the submissions made in the Complaint there is no

evidence that the Respondent has any rights or legitimate interests whatsoever

in relation to a domain name including, as it does, the exceptionally

well-known GUCCI trademark. The Complainant, therefore, also satisfies

the second leg of the requirements under paragraph 4(a)(ii) of the Policy.

6.6. Registration

and Use in Bad Faith

The

Panel is aware of two Decisions under the Policy involving the Respondent

in addition to the FENDI Decision [paragraph 5.5.6 above]. These are:

WIPO

Case No. D2000-1424 GA Modefine S.A. v. Mark O'Flynn

There the domain

name in issue was armaniboutique.com and the Complainant was the

owner of the famous ARMANI: GIORGIO ARMANI; and EMPORIO ARMANI trademarks

registered in a variety of classes in a great number of countries worldwide.

The Respondent's website was, as in this case, stated to be under construction.

The Panel found registration and use in bad faith on the following grounds:

- the Respondent

when registering the domain name in issue knowingly and purposefully

chose a name confusingly similar to the Complainant's ARMANI trademarks;

- those

trademarks are famous and widely used;

- in

the circumstances, choice of the domain name by the Respondent could

not be a mere coincidence;

- the Respondent

intentionally created a situation which is at odds with the legal

rights and obligations of the parties; and

- the

Respondent had failed to file a Response.

WIPO

Case No. D2000-1289 Etro S.p.A. v. Mark O'Flynn and Luciano Carbonetti

PGC s.r.l.

There the domain

name in issue was etroboutique.com and the Complainant was the

owner of the ETRO trademark in, inter alia, Italy and as a Community

Trade Mark. The Complainant is an Italian Company in the fashion business

which trades under the ETRO mark and through a number of ETRO Boutiques

both in Italy and elsewhere. Again, the domain name resolved to a website

stated to be under construction. The Respondent O'Flynn is the

same as the Respondent in this administrative proceeding and the Respondent

Carbonetti of PCG srl is the contact for billing purposes of the domain

name in issue in this administrative proceeding. The Panelist in the ETRO

case is a Co-Panelist in this administrative proceeding. The Panel found

registration and use in bad faith on the following grounds:

- the

Respondents have registered in bad faith a number of other domain

names incorporating the famous trademarks of Italian based fashion

houses which suggests that they are not in good faith and intend only

to trade on the value of those marks by selling them to the owners

of the marks or by otherwise interfering with the right of those owners

to use their trademarks in commerce;

- the

Respondents have made no actual good faith use of the domain name

in issue, the website being stated to be under construction;

and

- the

Respondents have attempted to sell the domain name for an amount in

excess of their documented out of pocket costs directly related to

that domain name, which evidences domain name hijacking.

6.7 In

the circumstances of this Complaint the Panel have no hesitation in finding

that the Complainant here satisfies both legs of paragraph 4(a)(iii) of

the Policy. This is confirmed by the Decisions cited in paragraph 6.6

above, which constitute evidence of registration and use in bad faith

prescribed in paragraph 4(b)(i) of the Policy.

7. Decision

For all the forging

reasons, the Panel decides that the Complainant has proved each of the three

elements of paragraph 4(a) of the Policy. The Respondent is a blatant domain

name hijacker. Accordingly, the Panel require that the registration of the

domain name gucciboutique.com be transferred to the Complainant.

David Perkins

Presiding Panelist

Anna Carabelli

Panelist

Andrea Mondini

Panelist

Dated: May

29, 2001

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