Gucci Gains Over Twenty Domains In UDRP Hearing
Guccio Gucci founded the Italian fashion and leather goods label Gucci in Florence in 1921. Since then, it has become a very fashionable and profitable brand throughout the world. The brand holds many registrations for the trademark GUCCI throughout the world. It was not pleased to find out that someone had registered multiple domain names that included the word “gucci” including guccicollections.com, myguccistore.com, yesguccigifts.com, guccigiftshop.com and guccigiftstore.com. Those domain names, in particular, appear to be for commercial gain.
A reasonable person might be misled into believing that these sites are actually associated with Gucci. Other domains owned by Respondent Zhou Guodong that included the term “gucci” in the URL were either parked or contained blank pages. Even “passive holding” of the domain names (i.e. parking the site) may be found to be bad faith in a Uniform Domain Name Dispute Resolution Policy (UDRP) hearing if it is shown that,
- The disputed domain name incorporates a well-known mark;
- The respondent is an individual, rather than a business entity;
- In view of the complainant’s trade mark rights, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the disputed domain name by the respondent;
- There is no apparent evidence of actual or contemplated use of the disputed domain name; and
- The respondent failed to respond to the complainant’s cease and desist letter and the complaint under the Policy.
It is easy to write-in “yes” for all 5 elements in the instant Gucci case. All of the domain names had to be transfered to Gucci, and louisvuittongucci.com had to be cancelled.
I blogged about this decision at http://udrp-attorney.com/2010/12/16/gucci-man-counterfeit-goods-not-good-faith-offering/ … really the parking of a domain (essentially a non-use) doesn’t, or at least shouldn’t, have a determinative effect in a UDRP proceeding. The important factual determination still comes from just the three prongs of the UDRP: a mark at issue in a domain name, rights or legitimate interests in the domain name, and bad faith registration and use of the domain name (often those last two end up being a little tangled up). And of course the Complainant’s got to prevail on all three. In this case, there’s just no way that they could show any rights or legitimate interests in a domain name incorporating the well-known trademark and only adding some generic words that would suggest some sort of distributorship or affiliation (when there was none).