Case number | CAC-UDRP-105733 |
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Time of filing | 2023-08-28 12:43:30 |
Domain names | gola-argentina.com, golacanadaoutlet.com, golaitalia.com, golamexicooutlet.com, golanederlandoutlet.com, golaportugaloutlet.com, golasneakersnederland.com, gola-southafrica.com, golastockistsaustralia.com, golastockistsuk.com, golatrainerireland.com, golatrainersdublin.com , golaturkiye.com, sapatilhasgolaportugal.com |
Case administrator
Name | Olga Dvořáková (Case admin) |
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Complainant
Organization | D. Jacobson & Sons Limited |
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Complainant representative
Organization | TLT LLP |
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Respondent
Organization | Web Commerce Communications Limited |
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The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.
The Complainant is the owner of several trademarks bearing “GOLA”:
- UK Trademark Reg. No. 00001097140 registered on June 14, 1978 in class 18;
- UK Trademark Reg. No. 00001055606 Wing Flash Logo in class 25 registered on November 25, 1975 in class 25;
- UK Trademark Reg. No. 00000272980 registered on May 22, 1905 in class 25;
- EU Trademark Reg. No. 001909936 registered on October 4, 2000 in classes 18, 25, 28;
- EU Trademark Reg. No. 003399681 registered on October 8, 2000 in classes 5, 10, 12, 35;
- EU Trademark Reg. No. 011567625 registered on February 12, 2013 in classes 18, 25, 35.
The Complainant is the registrant of several domain names bearing “GOLA”, which were registered on December 17, 1997 and February 13, 2002 respectively.
The Complainant is a UK based designer, importer, seller and exporter of ladies', men's and children's footwear. In particular, the Complainant owns the internationally famous "GOLA" brand, which it has successfully applied (amongst other things) to its range of footwear and bag designs. The Complainant's footwear and bag products are sold throughout the world, including through its various websites registered under domain names such as <GOLA.CO.UK> and <GOLAUSA.COM>. Customers in the UK, EU and US are able to purchase the Complainant's products through these GOLA domain names.
The Complainant uses, inter alia, domain names such as <GOLA.CO.UK> or <GOLAUSA.COM> and its trademarks “GOLA” for its services and as company name.
The disputed domain names <GOLA-ARGENTINIA.COM>, <GOLACANADAOUTLET.COM>, <GOLAMEXICOOUTLET.COM>, <GOLANEDERLANDOUTLET.COM>, <GOLAPORTUGALOUTLET.COM>, <GOLASTOCKISTAUSTRALIA.COM>, <GOLASTOCKISTUK.COM>, <GOLATRAINERIRELAND.COM>, <GOLATURKIYE.COM> were registered on April 24, 2023. The disputed domain name <GOLAITALIA.COM> has been registered on May 25,2023; <GOLASNEAKERSNEDERLAND.COM> on May 9, 2023, <GOLA-SUEDAFRIKA.DE> on June 28, 2023; <GOLATRAINERSDUBLIN.COM> on July 3, 2023, <SAPATILHASGOLAPORTUGAL.COM> on May 7, 2023.
The disputed domain names lead to a web shop, where GOLA shoes and bags are offered for sale.
The Complainant already filed three UDRP complaints against a Respondent of the same name in similar cases.
The Complainant's concern is that the disputed domain names may be adopting the same tactic as those domains and prompting individuals to enter their personal details.
The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel accepts the contentions of the Complainant as admitted by the Respondent.
I. The disputed domain names are confusingly similar to the trademark “GOLA” of the Complainant.
The Complainant has, to the satisfaction of the Panel, shown that it has valid rights for the trademark “GOLA”.
The disputed domain names include the Complainant's trademark in its entirety.
The addition of a geographical indication is not sufficient to distinguish a domain name from the trademark. Adding a geographical indication only aims at targeting the web users of the designated country.
Also, the addition of the descriptive terms “outlet”, “sneakers”, “trainers” and “sapathilas” (Portuguese for "sneakers") is not sufficient to distinguish the domain names from the trademark.
Furthermore, the addition of the gTLD suffix “.com” is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant's trademarks and do not change the overall impression of the designation as being connected to the trademarks of the Complainant.
II. The Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of the Policy.
The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to use its trademark in a domain name.
Also, the disputed domain names at stake do not correspond to the name of the Respondent and he is not commonly known as “GOLA”.
Summarised, there is no evidence for a use of the disputed domain names for any bona fide offer of goods or services or a legitimate non-commercial or fair use.
III. The disputed domain names have been registered and are being used in bad faith within the meaning of the policy.
The Complainant’s trademark “GOLA” is widely known. Given the distinctiveness of the Complainant's trademark and reputation, it can be concluded that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademark.
Further, the identical or at least very similar use of the trademarks of the Complainant on websites of the Respondent indicates that the Respondent used the disputed domain names to mislead customers of the Complainant. Such customers were deceived to believe that those websites were websites of the Complainant or at least authorized by the Complainant. Thus, these internet users shall be attracted by the websites associated with the disputed domain names for commercial gain of the Respondent either by generating traffic on the websites or tempting these users to buy products from this websites believing that they were buying from the Complainant’s website or at least from a website authorized by Complainant.
- gola-argentina.com: Transferred
- golacanadaoutlet.com: Transferred
- golaitalia.com: Transferred
- golamexicooutlet.com: Transferred
- golanederlandoutlet.com: Transferred
- golaportugaloutlet.com: Transferred
- golasneakersnederland.com: Transferred
- gola-southafrica.com: Transferred
- golastockistsaustralia.com: Transferred
- golastockistsuk.com: Transferred
- golatrainerireland.com: Transferred
- golatrainersdublin.com : Transferred
- golaturkiye.com: Transferred
- sapatilhasgolaportugal.com: Transferred
PANELLISTS
Name | Dominik Eickemeier |
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