Guccio Gucci S.p.A. v Becca Nash, Brokers Panama
WIPO Case No. D2022-4164
•29-12-2022
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Becca Nash, Brokers Panama
Case No. D2022-4164
1. The Parties
Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero, Italy.
Respondent is Becca Nash, Brokers Panama, Panama.
2. The Domain Name and Registrar
The Disputed Domain Name <gucciverse.com> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3,
2022. On November 3, 2022, the Center transmitted, by email, to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On November 4, 2022, the Registrar transmitted,
by email, to the Center its verification response disclosing registrant and contact information for the Disputed
Domain Name, which differed from both the named Respondent (Privacy Protect, LLC (PrivacyProtect.org))
and contact information in the Complaint. The Center sent an email communication to Complainant on
November 4, 2022 which provided the registrant and contact information disclosed by the Registrar and
invited Complainant to submit an amendment to the Complaint. Complainant filed amendments to the
Complaint on November 8, and November 9, 2022.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint,
and that the proceedings commenced on November 10, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was set to November 30, 2022. Respondent sent informal email communications
on November 5, November 9, November 10 and November 15, 2022. The Respondent did not file a
substantive Response. The Center informed the Partied of its commencement of Panel appointment
process on December 1, 2022.
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The Center appointed Peter L. Michaelson as the sole panelist in this matter on December 7, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules,
paragraph 7.
4. Factual Background
As reflected in the registration record for the Disputed Domain Name in the public WhoIs database (a copy of that record appears in Annex 1.1 to the Complaint), the name was registered on October 21, 2021 and will expire on October 21, 2024.
A. Complainant’s GUCCI Marks
As indicated in the Complaint, Complainant owns a substantial number of national and international trademark registrations collectively for the term GUCCI, whether alone or in combination with other words and/or design elements. Complainant has provided, in Annexes 4.1 through 4.7 to the Complaint, copies of its registration certificates for a small sample of these registrations. Pertinent details of a few of these registrations are as follows:
| 1. | GUCCI (word) Italian Trademark Registration 302066 filed: January 13, 1977; registered: March 30, 1977 (registration 362016000132789, registered September 6, 2017 as last renewal of registration 302066) |
This mark is registered for use in connection with all goods and services in all classes.
| 2. |
GUCCI (word) filed: April 1, 1996; registered: November 24, 1988
This mark is registered for use in connection with all goods and services in all classes.
| 3. | GUCCI (word) Australian Trademark Registration 265546 filed: February 2, 1973; renewed to February 2, 2028 |
This mark is registered for use in connection with "Ladies and gentlemen's clothing" in international class 25.
| 4. | GUCCI (word) Australian Trademark Registration 265544 filed: February 2, 1973; renewed to February 2, 2028 |
This mark is registered for use in connection with "Leather goods, handbags and travel goods" in international class 18.
B. Complainant
Complainant, Guccio Gucci S.p.A., is an Italian Public Limited Company belonging to Kering (previously accessories.
The Gucci Fashion House was founded in 1921 by Guccio Gucci who opened a leather goods company and a small luggage store in Florence, Italy. The GUCCI brand rapidly achieved considerable success, garnering an international clientele attracted to the brand's equestrian-inspired collection of bags, trunks, gloves, shoes
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and belts. Horse bit and stirrup motifs became enduring symbols of the GUCCI fashion house. During the
1950s, a trademark having a green-red-green web, derived from saddle girths, achieved considerable
commercial success and has endured as one of the foremost identifiers of the brand. With stores opening in
Milan and New York, Complainant was building a global presence symbolizing modern luxury.
During the 1960s, Complainant introduced products cherished by some of the most iconic figures of the time and became renowned for timeless design. The classic moccasin with horse bit hardware was included in the permanent collection at the Costume Institute of the Metropolitan Museum of Art in New York.
Complainant continued its international expansion by opening stores in London, Palm Beach, Paris and Beverly Hills. In the mid-1960s, Complainant adopted its interlocking double “G” logo. During the 1970s and years following, Complainant continued its global expansion targeting the Far East by opening stores in Tokyo and Hong Kong, increasing and diversified production and conducting research on novel, increasingly luxurious materials and innovative approaches to design while maintaining quality and craftsmanship synonymous with the brand. Its classic designs were revamped in new shapes and colors and new product categories were introduced.
In 1995, Complainant successfully converted into an entirely publicly-owned company. In 1999, into a global multi-brand luxury goods company.
Complainant has used its mark GUCCI continuously for more than 100 years and during those years has social media, such as Facebook, Twitter, Instagram, YouTube, Google+ and Pinterest. A printout of a webpage, at Complainant's <gucci.com> website, dedicated to most recent advertising campaigns appears in Annex 6.2 to the Complaint. Screenshots of Complainant's official accounts and pages on main social media sites appear in Annex 6.3 to the Complaint. Further, copies of various articles about Complainant’s fashion shows in 2018 and 2019 published on online editions of some popular fashion magazines are provided at Annexes 6.4 through 6.6 to the Complaint. Through its long-term promotion and use of its GUCCI Marks, Complainant has acquired a worldwide reputation and goodwill as one of the leading manufacturers of fashion products, with its mark GUCCI having itself acquired fame.
made and continues to make substantial investments in advertising, marketing and selling in
GUCCI-branded products in the high-fashion and leather industry, including ready-to-wear clothes,
handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. Complainant
undertakes intensive worldwide advertising campaigns for its GUCCI-branded products, exemplified by those
appearing in important international magazines with broad circulation including Vogue, Vanity Fair, GQ and
Complainant was ranked in 33rd place according to the 2021 Interbrand “Best Global Brands” and 30th in
the 2019 World's Most Valuable Brands list provided by Forbes, with a brand value of USD 18.6 Billion
(copies of these rankings appear in Annex 5.1 and 5.2, respectively, to the Complaint).
The website at <gucci.com>, to which most of Complainant’s registered domain names are redirected, mark GUCCI (a list of those names appears in Annex 7 to the Complaint).
generates a significant number of visits by Internet users and is used by Complainant to promote its brand
and advertise and offer for sale its GUCCI products (screenshots from that website are provided in
Further, since 2021, Complainant has been active in the metaverse, as shown on Complainant’s official website at “vault.gucci.com/en-IT/story/metaverse”, with examples of its screenshots on the metaverse appears on pages 10-11 of the Complaint.
C. Activities of Respondent and Interactions between the Parties
About the time Respondent registered the Disputed Domain Name <gucciverse.com> on October 21, 2021 and thereafter, the name resolved to a parking page, associated with a different registrar (GoDaddy), with
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sponsored third-party pay-per-click advertising links (a screenshot of that page appears both in Annex 7.3B
to and on page 11 of the Complaint). At present, the Disputed Domain Name redirects to a parking page
associated with its current Registrar (a screenshot of that page appears both in Annex 7.3A and page 12 to
the Complaint).
Shortly after Complainant became aware of Respondent's registration, Complainant instructed a web agency to contact Respondent in order to verify its real intention as to the name and acquire information on any possible legitimate interest related to it. Since Respondent’s contact details were not disclosed in the public WhoIs database, with exception of the Province and Country (i.e. Queensland, Australia, as shown in Annex 1.4 to the Complaint), the web agency initially sent an email, on June 15, 2022, using the online form published on the page of the previous registrar used by Respondent at that time (GoDaddy), requesting Respondent to indicate whatever project was related to the name and the possible availability and conditions to assign it. On the following day, the web agency received an email stating that Respondent was willing to sell the name and requested the agency formulate an offer (a copy of this correspondence appears in see Annexes 7.4A and 7.4B to the Complaint).
Through an additional round of correspondence, on June 17, 2022, Respondent indicated that he sought at least USD 10,000 payment for the Disputed Domain Name. The web agency reported the communication it received to Complainant and indicated to Respondent that it was not interested in acquiring the Disputed
Domain Name as the price sought was too high. A copy of all this correspondence appears in Annex 7.4B to the Complaint.
On July 4, 2022, Complainant’s authorized representative drafted and sent to Respondent – to the email address disclosed by the previous registrar (at the time) – cease and desist letters, each requesting Respondent to immediately cease any use of the name and transfer it to Complainant (copies of that correspondence appears in see Annexes 7.7 and 7.8 to the Complaint). On July 5, 2022, Complainant’s authorized representative received a communication from Respondent which requested USD 20,000 for the transfer of the name to Complainant (a copy of this communication appears in Annex 8.2 to the Complaint). Later, on August 26, 2022, Respondent sent another email to Complainant's representative, through which Respondent requested the representative to formulate an offer for the Disputed Domain Name (a copy of that email appears in Annex 8.3 to the Complaint).
On September 20, 2022, Complainant’s representatives noticed that the WhoIs information of the Disputed Domain Name had been amended, so that the resulting named registrant was a Mr. Kohle, with a new email address (as shown by the WhoIs record provided in Annex 1.2 to the Complaint). Accordingly, on September 20, 2022 the representative sent Mr. Aziz a new email communication to ascertain whether he was still in control of the name and, among other aspects, specify that Complainant was not likely to reimburse any amount of money, other than well-documented out of pocket costs (a copy of this message appears in Annex 8.4 to the Complaint). On the same day, Mr. Aziz replied with two separate emails, the first of which confirmed that his price was USD 20,000 and the second one indicated that he was available to “negotiate in reasonable terms” (copies of this correspondence appears in Annexes 8.5 and 8.6 to the Complaint).
On September 22, 2022, Complainant's representative sent an additional email to Mr. Aziz requesting him to explicitly confirm whether he was the actual owner of the name since, based on the actual WhoIs information, the named registrant was then a Mr. Kohle (a copy of this message appears in Annex 8.7 to the Complaint). On the same day, Complainant’s representatives received two messages sent, respectively, from the email addresses associated with Mr. Aziz and Mr. Kohle confirming that the "only and actual" registrant of the name was Mr. Aziz (copies of these messages appear in Annexes 8.8 and 8.9 to the Complaint).
Subsequent to this latest exchange of correspondence, Complainant’s representative noticed that the information published in the WhoIs database of the Disputed Domain Name had been amended again and namely all contact data were completely shielded by a WhoIs privacy service (See the WhoIs record provided in Annex 1.2 to the Complaint). On October 17, 2022, Respondent again contacted Complainant’s representative requesting it to formulate an offer by October 20, 2022. Later that same day, Complainant’s
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representative replied to that communication reiterating its prior request to Respondent to transfer the name stated that:
to Complainant free of any charges (copies of this message exchange appears in Annexes 9.1 and 9.2 to the
“[W]e will give you time to make a USD offer until 20.10.2022. If we haven’t received a fair offer the domain name will be sold to another interested party that I’m sure your client wouldn’t be happy about since they are in the same niche as your client.” (A copy of this message appears in Annex 9.3 to the Complaint.)
On October 21, 2022, Respondent once again contacted Complainant’s representative this time threatening to sell the name to a third party for USD 5,250 and requesting the representative to indicate whether Complainant was interested in acquiring the name or not (a copy of this correspondence appears in Annex 9.4 to the Complaint).
On November 1, 2022, Respondent again contacted Complainant’s representative indicating that a correspondence concerning the name to Complainant’s representative. In response, Respondent addressed an additional email, indicating that its costs associated with the name – amounted to USD 3,888.20, and also stating:
potential buyer was willing to close a deal in the next few days and urging Complainant’s
representatives to “ask your client to make us an USD offer. Otherwise we will get in touch with [the
Complainant’s CEO] to make sure he is aware of the situation.” On the same day, Complainant’s
authorized representative replied, confirming that Complainant would not pay any amount of money to
purchase the name other than Respondent's well-documented out-of-pocket costs, and requesting
“I have not calculated the amount of time I spent going back and forth with you. My usual hourly rate is
$200 USD. So please let's get the speed up so we don't have to contact [the Complainant’s CEO] to get
a response.”
A copy of this last exchange of correspondence appears in Annex in Annex 9.5 to the Complaint.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
Complainant contends that the Disputed Domain Name is confusingly similar to its mark GUCCI.
Specifically, the Disputed Domain Name contains this mark to which the term "verse" has been appended with the latter being incapable of adding sufficient distinctiveness whatsoever to the mark to mitigate any resulting confusion of online users between the name and the mark. Complainant notes that, under standard
practice, the generic Top-Level Domain (“gTLD”) present in the name, i.e., “.com”, is ignored, as a standard
registration requirement, in assessing confusingly similarity under the Policy.
Further, Complainant contents that not only will the addition of "verse" not provide sufficient distinctiveness to sufficiently differentiate the name from the mark GUCCI, it is rather likely to accentuate that confusion as Internet users, given the substantial global recognition of that mark, would erroneously believe, via implied affiliation, that the name is owned and used by Complainant to promote its activities in the metaverse when, in actuality, it is not.
Hence, Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
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(ii) Rights or Legitimate Interests
Complainant contends that, for various reasons, Respondent has no rights or legitimate interests in the
Disputed Domain Name pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.
Specifically, Respondent has no connection or affiliation with Complainant nor is it licensed or otherwise authorized by Complainant to use any of its GUCCI Marks.
Complainant is neither in possession nor aware of the existence of any evidence demonstrating that and by Respondent himself both during the correspondence with Complainant’s web agency and with Complainant’s authorized representative apparently one Mr. Aziz – might be commonly known by a name corresponding to the Disputed Domain Name as an individual, business, or other organization.
Further, Respondent has not provided any evidence of use of or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services before or after receiving notice of this dispute. In that regard, Respondent's initial use of the Disputed Domain Name was as an address of a webpage containing sponsored pay-per-click (“PPC”) third-party advertising links whereas it now resolves to an inactive website for which Respondent claims is for an alleged charity organization. Respondent offered, on several occasions, to sell the name to Complainant for sums well exceeding its out-of-pocket costs and thus designed to yield a profit to Respondent. There are no acts by Respondent consistent with a bona fide offering of goods or services.
(iii) Registered and Used in Bad Faith
Complainant also contends that Respondent has registered and is using the Disputed Domain Name in bad faith in violation of paragraphs 4(a)(iii) and 4(b) of the Policy.
Specifically, Respondent registered the Disputed Domain Name on October 21, 2021, some 100 years after with full knowledge of the worldwide reputation and notoriety which Complainant acquired through its GUCCI Marks, intentionally chose the Disputed Domain Name for its ability to cause considerable consumer confusion between Complainant's marks and the Disputed Domain Name. This intent is clearly evident in Respondent's prior use of the name to direct Internet user's to a parking page of sponsored, third-party links to generate commercial gain.
Respondent's bad faith is also reflected in: (a) its attempts to frustrate its discovery for purposes of receiving
notice of process by repeatedly amending its contact details and also concealing its identity in the public
WhoIs databases through privacy screens; and (b) having made repeated offers to sell the Disputed Domain
Name to Complainant for prices (successively USD 10,000; 20,000; 5,250 and 3,882.00), in excess of its
documented out-of-pocket costs of registration, and (c) engaging in passive holding as the Disputed Domain
Name presently resolves to an inactive website.
B. Respondent
Respondent has sent the Center various informal e-mail communications in response to the Complaint. Through these communications Respondent claimed that the Disputed Domain Name was registered for the purpose of its charity organization named "Gucciverse Charity Organization:. Respondent has submitted screen captures of its alleged logo and Twitter account in support of its claim. None of these communications technically constituted a substantive response. Consequently, this administrative proceeding continued by way of default. That said, the Panel has had full view of Respondent’s communications and considers them as part of the case record. Hence, under paragraphs 5(f), 14(a), and 15(a) of the Rules, the Panel decided this proceeding on the basis of Complainant’s undisputed factual allegations which the Panel finds are not inherently implausible.
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6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s GUCCI Marks.
From a simple comparison of the Disputed Domain Name to Complainant’s mark GUCCI, no doubt exists that the Disputed Domain Name is confusingly similar to the mark. The name consists of this mark to which the term "verse" has been added to form a composite term, "gucciverse", and then to which the generic top level domain (gTLD ".com" has been appended. The addition of the gTLD is irrelevant in assessing confusing similarity under paragraph 4(a)(i) of the Policy and thus ignored. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
It is now very well-established, that a minor variation to a mark, including a minor addition to it such as a well-known generic term does not prevent confusing similarity. Here, Respondent’s addition of the term "verse" to Complainant’s mark to form the Disputed Domain Name unquestionably constitutes such a minor
variation and does not prevent a finding of confusing similarity. This term is a short-hand form of
"metaverse" which is a single, shared, immersive virtual-reality based digital space, presently being
developed, in which people interact with each other. See “
WIPO Overview 3.0Brookfield Office Properties Inc. v. Privacy service at New Ventures Services, Corp.
Also, see , section 1.8, and, e.g., , WIPO Case No. D2019-0834.
provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.
D2022-2572; AUTRY International S.r.l. v. Unknown (Whois Agent) / Kuehp Tgfdeu, WIPO Case No.
| for user confusion is likely to be exacerbated -- as Complainant surmises, not reduced. It is quite | Moreover, by including generic term "verse" with Complainant’s mark GUCCI to form the name, the potential that person not to be taken to Complainant’s website, but rather, and without that user realizing the diversion, to Respondent’s website instead. Hence, adding the term “verse” to the mark GUCCI, as Respondent did, only heightens the likelihood of Respondent causing user deception and ensuing confusion to Respondent’s ultimate benefit and the detriment of Complainant. See, e.g., Calvin Klein Trademark Trust and Calvin Klein Inc. v. Abeer Ayoub, WIPO Case No. D2018-0387. |
| Hence, Complainant satisfied its burden under paragraph 4(a)(i) of the Policy. | |
| B. Rights or Legitimate Interests | |
| Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim of rights or legitimate interests by Respondent to the Disputed Domain Name under any of the criteria in paragraph 4(c) of the Policy. | |
| Complainant has never authorized Respondent to utilize Complainant’s mark GUCCI in either a domain name or any other use and has no relationship, affiliation, or connection whatsoever with Respondent. |
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Further, it is clearly evident to the Panel that Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services or made any prior demonstrable preparations to do so. Rather, the Disputed Domain Name resolves to an inactive website and Respondent has not submitted any substantial evidence showing a potentially legitimate use of the Disputed Domain Name. Using a domain name in this manner intentionally infringes the exclusive trademark rights of another, and reflects passive holding fails to qualify as a bona fide use generally but also specifically under UDRP paragraph 4(c)(i). Nor does such a use constitute either a legitimate noncommercial or fair use of the name under UDRP paragraph 4(c)(iii).
Complainant’s exclusive rights in its mark GUCCI predate by at least several decades the date (October 21, 2021) on which Respondent registered the name. That, coupled with the extensive, global reputation, good- will and ultimately fame which Complainant likely developed in its mark GUCCI since it first starting using
that mark in 1921 in conjunction with its products, inevitably leads to the Panel's view that Respondent could
not legitimately acquire such a public association or even any association with any mark similar to those of
Complainant - at least for the products provided by Complainant under any of those marks. See, e.g.,
Brookfield Office Properties Inc., cited supra; Universal Services of America, LP d/b/a Allied Universal v.
This Domain May be for Sale at New Ventures Services, Corp, WIPO
Case No. D2019-0834; Praxis Capital, Inc. v. John C. Martinez, The Praxeology Group LLC, WIPO Case
No. D2019-0254; Philip Morris USA Inc. v. Daniele Kanai, iKiss LLC, WIPO Case No. D2015-1527; and
Valero Energy Corporation and Valero Marketing and Supply Company v. Lisa Katz, Domain Protection LLC
/ Domain Hostmaster, Customer ID: 62520014085963, WIPO Case No. D2015-0787.
Consequently, Respondent is not commonly known by the name or any of Complainant’s marks and hence does not qualify under UDRP paragraph 4(c)(ii).
C. Registered and Used in Bad Faith
Complainant also contends that Respondent has registered and is using the Disputed Domain Name in bad faith in violation of paragraphs 4(a)(iii) and 4(b) of the Policy.
The Panel finds that Respondent’s actions with respect to the Disputed Domain Name constitute bad faith registration and use.
It is categorically clear to the Panel, even apart from any inference that could be drawn from the lack of any substantive Response, that Respondent was well aware of Complainant and its mark GUCCI and the considerable potential for the name to cause confusion with that mark. Yet, in spite of that knowledge, Respondent intentionally and purposely registered the name, which includes that mark, for its substantial potential to likely confuse Internet users and, as a consequence, commercially benefit therefrom. This is clearly evident in Respondent's first use of the name to resolve to a parking page of sponsored third-party links from which Respondent likely received and commercially benefited from click-through revenue.
Bad faith registration and use is also reflected in Respondent's actions in successively offering the Disputed Domain Name for sale at prices (USD 10,000; 20,000; 5,250 and 3,882.00) which exceed its out-of-pocket costs of registration. Given Complainant's widespread global reputation arising from its exclusive rights in its mark “GUCCI”, Respondent likely recognized that the name cannot be legally used by any other party
without prior authorization from Complainant and thus ultimately has value only to Complainant. eventually decreasing prices, that ultimately, if a mutually acceptable price were to be found, Complainant, to alleviate user confusion and continued injury to its reputation that would otherwise occur, would either purchase the name directly from Respondent or possibly from an intervening third-party purchaser to which Respondent may have sold the name in the interim.
Specifically, since mid-June 2022, when the Parties started communicating with each other, to the present, it seems quite likely to the Panel that Respondent merely passively held the Disputed Domain Name
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expecting that the Parties through continued negotiations would eventually reach a mutually agreeable,
though decreased, price, at which Complainant would purchase the Disputed Domain Name at a price that
still yielded a sufficient profit for Respondent. Ultimately, Complainant decided against purchasing the name
in favor of initiating the present proceeding. In the absence of any substantive Response let alone with
evidence to the contrary, the Panel views this scenario, particularly Respondent's intentions, as the most
plausible under the circumstances.
Even if those offers to sell are not imputed to Respondent, but to another holder of the Disputed Domain Name, plainly the registration of the Disputed Domain Name by Respondent, and any use for click-through revenue or even passive holding (non-use) constitutes a bad faith attempt to capitalize on the famous mark of Complainant.
Consequently, Respondent’s conduct constitutes bad faith registration and use under paragraph 4(b) of the
Policy and specifically paragraphs 4(b)(i) and (iv).
Thus, the Panel concludes that Complainant has provided sufficient evidence of its allegations, with respect to the Disputed Domain Name, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
7. Decision
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by
Complainant.
The Panel now orders that the Disputed Domain Name, <gucciverse.com>, be transferred to Complainant.
/Peter L. Michaelson/
Peter L. Michaelson
Sole Panelist
Date: December 29, 2022
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