Guccio Gucci S.p.A. v Chang-Han Chen, Friends Co., Ltd

WIPO Case No. DCC2025-0011

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. Chang-Han Chen, Friends Co., Ltd.

Case No. DCC2025-0011

1. The Parties

The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is Chang-Han Chen, Friends Co., Ltd., Taiwan, Province of China.

2. The Domain Names and Registrar

The disputed domain names <gucciogucci.cc> and <gucciogucci.co> are registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2025. On
June 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On June 10, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on June 12,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the

Complaint on June 13, 2025.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the
Complaint, and the proceedings commenced on June 18, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was July 8, 2025. The Response was filed with the Center on June 18, 2025.
The Respondent sent the email communications to the Center on June 10, 2025, June 12, 2025, and June
20, 2025.

page 2

The Center appointed Zoltán Takács as the sole panelist in this matter on July 4, 2025. 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

The Complainant in this administrative proceeding is Guccio Gucci S.p.A., an Italian luxury fashion house founded in 1921 by Guccio Gucci.

The Complainant was ranked 31st in the 2020 World’s Most Valuable Brands list of Forbes, with a brand value of USD 22.6 billion.

The Complainant is the owner of multiple national and international registrations for the GUCCI and GUCCIO

GUCCI trademarks, including:

- the International Trademark Registration (IR) No. 429833 GUCCI registered on March 30, 1977, and

- IR No. 532715 GUCCIO GUCCI registered on January 17, 1989 (“the Complainant’s trademarks”).

The Complainant is also owner of numerous domain names comprising the GUCCI and GUCCIO GUCCI trademarks. For example, the domain name <gucci.com> was registered on June 5, 1996, and resolves to its corporate website.

The disputed domain name <gucciogucci.co> resolved to the website of the domain marketplace resolve to any website.

The disputed domain name <gucciogucci.cc> resolved to the Godaddy.com website, where it was offered for sale for USD 1 million. Currently, it resolves to the website of the domain marketplace Afternic.com indicating that “This domain is registered, but may still be available”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that:

- the disputed domain names which incorporate its GUCCIO GUCCI trademark in its entirety are identical to

the GUCCIO GUCCI trademark and confusingly similar to the GUCCI trademark;

- the Respondent has no rights or legitimate interests in respect of the disputed domain names since it is
unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy; and

- the Respondent has registered the disputed domain names with the Complainant and its well-known excess of the documented out-of-pocket costs directly related to the disputed domain names, which is evidence of bad faith.

The Complainant requests that the disputed domain names be transferred from the Respondent to the
Complainant.

page 3

B. Respondent

On June 10, 2025 (before the notification of the Complaint and commencement of this administrative
proceeding) the Center received an unsolicited email communication with the subject: “Response to UDRP

Complaint – Domain: gucciogucci.co”, in which the sender among others stated:

- “I firmly oppose the complainant’s claims and submit the following formal response in defense of my lawful
registration and ownership of the domain”, and – “Furthermore, the complainant did not attempt to contact
me before filing the UDRP complaint. I was informed on June 3 that a response would be forthcoming, but
instead, a formal complaint was filed on June 6 with no communication or opportunity for resolution”.

On June 12, 2025, the Center sent an email communication to the sender of the above mentioned email, requesting to “identify herself or himself, clarifying her/his relationship (if any) to the Respondent”. In its June 12, 2025 dated response the sender replied: “I confirm that I am the Respondent and the registrant of the domain names in question”.

The Center sent the Notification of the Complaint and Commencement of this Administrative Proceeding
communication to the concerned Parties on June 18, 2025. On the same day the Center received an email
communication from the Respondent stating: “I am Chang-Han Chen (Aren Chen), representing Friends
Co., Ltd., the Respondent in WIPO Case No. DCC2025-0011 (Guccio Gucci S.p.A. v. Chang-Han
Chen/Friends Co., Ltd). Please find attached the official Response to the Complaint for your review”.

On June 19, 2025, the Center requested the Respondent to confirm whether the “above-referenced communication and attached document may be regarded as your complete Response?”. On June 20, 2025 the Responded replied affirmatively.

In its June 18, 2025, dated Response the Respondent contends that the Complainant has not satisfied any of the elements required under the Policy for a transfer of the disputed domain names, notably that:

- at the time of registration, it was unaware that “gucciogucci had been registered as a trademark” and that
the disputed domain names are not confusingly similar to the GUCCI trademark, which is the “commonly
used or recognized designation for the brand”,

- it never actively used the <gucciogucci.cc> domain name and that “although it was listed on Afternic, I never contacted the Complainant or any related party. It was only part of my personal domain portfolio”,

- “the price mentioned was a response to the Complainant’s inquiry and not a proactive offer or demand” and

the “price alone does not constitute bad faith”,

- “a third party did approach me and inquire about the domain. I responded honestly and had brief
communication, but no transaction occurred. I clearly stated that I had contacted the Complainant and would

wait for their formal reply before considering any other party”.

The Respondent requests the Panel “to dismiss” the Complaint.

6. Discussion and Findings

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the domain names; and

page 4

(iii)      the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark(s) and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of trademarks or service marks for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain names incorporate the entirety of the GUCCIO GUCCI trademark and are therefore identical to it. Furthermore, the GUCCI trademark is recognizable within the disputed domain names which are therefore confusingly similar to the GUCCI trademark. WIPO Overview 3.0, section 1.7.

Accordingly, the Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

Based on the available record, the Complainant has not authorized, licensed, or allowed the Respondent to use its trademarks in the disputed domain names or in any other way that would confer validity or legitimacy upon such uses.

In its May 16, 2025, dated response to an inquiry of an agent appointed by the Complainant about the disputed domain name <gucciogucci.co> the third party possibly associated with the Respondent among others replied: “As you may know, this domain contains the name of one of the most recognized and prestigious luxury brands in the world today, Gucci. This gives it strong branding potential, high recall value and strategic significance[…], We are open to discussing a potential transfer. […] While our current consideration is around USD$2,000,000, we are happy to negotiate”.

Following the receipt of the Complainant’s representatives cease-and-desist email communication of May 27, 2025, the Respondent wrote in his email of June 3, 2025: “I’m happy to share that my preliminary expectation for the domain is USD 1,000,000. Given that your company is one of the world’s leading luxury brands, this only further underscores the significance and potential value of this domain”.

In the follow-up email of June 5, 2025, sent to the Complainant’s representative, the Respondent wrote: “Just to keep you informed, I have recently received inquiries from another party regarding the domain. However, I still consider your client the priority and would prefer to hear from you first before making any

decisions”.

In view of the Panel, as mentioned above, the disputed domain names are identical to the Complainant’s GUCCIO GUCCI trademark and confusingly similar to its well-known GUCCI trademark. Furthermore, the Panel finds that the global recognition of the Complainant and its GUCCI trademark and the Respondent’s attempt to sell the disputed domain names primarily to the Complainant for consideration well in excess of the out-of-pocket costs directly related to the disputed domain names, as discussed above, are sufficient to infer the Respondent’s intent to target the trademark value of the terms the disputed domain names are

page 5

composed of. These are not genuine preparations for legitimate noncommercial or fair use and as such

cannot confer any rights or legitimate interests on the Respondent.

Moreover, the disputed domain names incorporating the Complainant’s trademark in its entirety carry a high
risk of implied affiliation as they effectively impersonate or suggest sponsorship or endorsement by the

Complainant. WIPO Overview 3.0, section 2.5.1.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The practice of registering domain names for subsequent resale (including for a profit) would not by itself support a claim that a respondent registered the domain names in bad faith with the primary purpose of selling it to the trademark owner or a third party. WIPO Overview 3.0, section 3.1.1.

However, the evidence on record indicates that the Respondent’s explanation for his registration and use of the disputed domain names is entirely misconceived given that these activities were conceived without the Complainant trademark owner’s permission. In the Panel’s view, the Respondent’s conduct here amounts to cybersquatting described in paragraph 4(b)(i) of the Policy. See also WIPO Overview 3.0, section 3.1.1.

The Complainant’s GUCCI trademark, which is clearly recognizable within the disputed domain names is well known around the world, it is a fact expressly acknowledged also by the Respondent in his above- mentioned communications. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In addition, the exchange of correspondence first between the Complainant’s agent and later its
representatives and the third party possibly associated with the Respondent as discussed in section 6.2.B. of
this decision and in particular the cited statements in view of the Panel not only show that the Respondent
was well aware of the Complainant’s GUCCI trademark and business at the date of registration of the
disputed domain names but also that the Respondent has registered the disputed domain names primarily
for the purpose of selling them to the Complainant trademark owner for considerations well in excess of the
Respondent’s documented out-of-pocket costs directly related to the disputed domain names.

The Panel draws the same conclusion concerning both disputed domain names. In particular, the Respondent has registered the disputed domain name <gucciogucci.cc> on May 29, 2025, shortly after receipt of the Complainant’s representatives cease-and-desist communication. The circumstances surrounding registration and use of the disputed domain name <gucciogucci.cc> are highly similar to those of the disputed domain name <gucciogucci.co>. Both disputed domain names are identical to the Complainant’s GUCCIO GUCCI trademark and confusingly similar to its well-known GUCCI trademark; both target the Complainant and resolved to similar websites where they have been offered for sale, currently for undisclosed amount but earlier for identical consideration well in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain names.

The fact that the disputed domain name <gucciogucci.co> at the time of rendering of this administrative decision did not resolve to an active website does not alter the Panel’s conclusion. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

In this context the Panel notes the global reputation of the Complainant’s GUCCI trademark, the composition and previous use of the disputed domain names, and finds that in the circumstances of this case the current

page 6

passive holding of the disputed domain name <gucciogucci.co> does not prevent a finding of bad faith under

the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <gucciogucci.cc> and <gucciogucci.co> be transferred to the

Complainant.

/Zoltán Takács/
Zoltán Takács
Sole Panelist
Date: July 17, 2025