Luxury brand owner Gucci has recovered 197 domain names from a Chinese cybersquatter.
The Italian company used the Uniform Domain Name Dispute Resolution Policy (UDRP) to transfer the addresses, each of which combined a complete or misspelled “Gucci” name with generic or geographical terms.
UDRP panellist Harrie Samaras ruled on the case on January 30, but it was published on February 7.
Examples of the names include “bestgucciwallet.com” and “guccifiresalejapan.com”.
As well as Gucci’s name, many of the domains included the “Yahoo” trademark, while one incorporated the “Ford” trademark.
More than 20 of the addresses directed or linked to websites publishing pornography and which derived income from pay-per-click advertising. The remaining domains redirected to inactive websites.
The respondent, named as Lin Shi Jiang of Hong Kong, registered the sites in March 2013. Lin did not reply to the complaint, filed in December 2013.
Panellist Samaras found that “Gucci” is a well-known trademark, that the respondent likely knew about the company’s trademark rights when it registered the 197 domains and that it does not have any rights or legitimate interests in the Gucci trademark.
“Indeed, it is difficult to imagine any circumstances in which [the] respondent could use the domain names without possibly infringing [the] complainant’s registered trademark,” Samaras said.
“Furthermore, the panel has found that [the] respondent’s registration of the 197 domain names constitutes a pattern of intentionally obstructive behaviour. [The] respondent 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.
“All these circumstances point to bad faith on the part of [the] respondent at the time of registration, and continued bad faith throughout its passive holding,” she said.
David Weslow. partner at Wiley Rein LLP, said the decision appears to be the latest of many successful UDRP decisions obtained by Gucci in recent years, including at least four decisions transferring more than 100 domain names per proceeding.
He added: “The decisions reflect the usefulness of the UDRP as a component of an online brand protection programme and, given the quantity and range of domain names at issue, the decisions also demonstrate that brand owners will need to adapt online brand protection programmes in light of the continuing release of new generic top-level domains."
Gucci did not respond to a request for comment.
This article was first published on 11 February 2014 in World IP Review
gucci, udrp, domain names, cybersquatting