Guccio Gucci S.p.A. v Domain Atrix
WIPO Case No. D2025-1453
•29-05-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Domain Atrix
Case No. D2025-1453
1. The Parties
The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is Domain Atrix, China.
2. The Domain Names and Registrar
The disputed domain names <guccĩ.com> (xn--gucc-jya.com), <guccī.com> (xn--gucc-tya.com),
<guccï.com> (xn--gucc-8pa.com), <guċċi.com> (xn--gui-7paa.com), and <ġucci.com> (xn--ucci-9wa.com)
are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2025. On connection with the disputed domain names. On April 9, 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 (Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 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 April 14, 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 April 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2025.
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The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on May 15, 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 is an Italian Public Limited Company which belongs to the international conglomerate company Kering, one of the leading groups worldwide in apparel and accessories. The Complainant was ranked 31st in the 2020 World’s Most Valuable Brands list provided by Forbes, with a brand value of USD 22.6 billion and was in 34th place according to the Interbrand “Best Global Brands” ranking in 2023.
The Complainant is the owner of several trademarks for GUCCI (“GUCCI Trademark”), including:
| - | European Union Trademark Registration GUCCI No. 000121988, registered on November 24, 1998; |
| - | United Kingdom Trademark Registration GUCCI No. UK00001108183, registered on January 24, 1979; and |
| - | International Trademark GUCCI No. 429833, registered on March 30, 1977, designating several jurisdictions. |
The Complainant is also owner of several domain names including the GUCCI Trademark, such as the domain name <gucci.com>, registered on June 5, 1996.
The disputed domain names were registered on July 30, 2024. The Complainant provided evidence that, when the Complaint was filed, the disputed domain names resolved to the Registrar parking pages with sponsored pay-per-click (“PPC”) links. At the time of the Decision, the disputed domain names do not resolve to any active webpages.
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.
On the first element of the Policy, the Complainant claims that the disputed domain names are confusingly similar to the Complainant’s GUCCI Trademark. In the case at hand, the GUCCI Trademark is clearly recognizable in the disputed domain names which entirely incorporate the well-known GUCCI Trademark, with the mere difference that some of the letters in the disputed domain names include diacritics (the letter “ï”
in <guccï.com>, the letter “ĩ” in <guccĩ.com>, the letter “ī” in <guccī.com>, the letters “ċ” <guċċi.com> and the
letter ġ in <ġucci.com>). The difference between the non-Latin character “ı” and the letter “i” in itself is
irrelevant, since it is so little as to be imperceptible to an Internet user. Moreover, they are not only virtually but also phonetically highly similar and can very easily be confused. In fact, this slight difference is not able to affect the appearance of the disputed domain names encoded per the American Standard Code for
Information Interchange (“ASCII”) on the Internet, which is the more important and meaningful presentation for the purposes of the Policy as it is how the disputed domain names present to Internet users. In the case at hand, the disputed domain names only differ from the GUCCI Trademark by the fact that the final “i” of the GUCCI Trademark has been replaced by a dotless “ı”. Such difference would remain unnoticed from
Internet users and is a clear case of typo-squatting.
On the second element of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the GUCCI Trademark. The Complainant is
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| might be commonly known by a name corresponding to the disputed domain names as an individual, | not in possession of, nor is aware of, the existence of any evidence demonstrating that the Respondent domain names, being virtually identical to the GUCCI Trademark, undoubtedly create a high risk of implied affiliation with the Complainant. Indeed, the GUCCI Trademark enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with bags, apparel, fragrances, accessories, and footwear products in many countries all over the world. Consequently, the GUCCI Trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. In addition to the above, i) the current direction of the disputed domain names to parking pages publishing commercial links, ii) the request for a sum well-over the out-of-pocket costs related to the registration and maintenance of the disputed domain names presented by the Respondent to the web agency entrusted by the Complainant, and iii) the refusal to transfer the disputed domain names for free upon receipt of the cease-and-desist letter sent by the Complainant’s representative suggest that the Respondent registered the disputed domain names to obtain commercial gain. The Complainant highlights that, in the exchange of correspondence between the web agency and the Respondent and in the one between the Respondent and the Complainant’s representative, the Respondent clearly indicated to have registered the disputed domain names for the purpose of selling them. |
| On the third element of the Policy, the Complainant asserts that the Respondent has registered and used the disputed domain names in bad faith. With respect to assessing the Respondent’s bad faith in registering the disputed domain names, in light of the fact that the GUCCI Trademark has been used since as early as 1921 and is certainly well known, it is inconceivable that the Respondent was unaware of the existence of the | |
| Complainant’s GUCCI Trademark, considering that the disputed domain names are confusingly similar thereto. Indeed, the most cursory search on search engines as well as on online trademark databases would have highlighted the existence of the Complainant’s trademark rights. Furthermore, given the | |
| distinctiveness and reputation of the GUCCI Trademark, the Respondent acted in opportunistic bad faith, by registering the disputed domain names with full knowledge of the GUCCI Trademark in all likelihood for the purpose of taking some advantage of the same. | |
| With respect to bad faith use, the disputed domain names have been directed to webpages displaying several sponsored links. As a result, the Respondent at least earns commissions whenever an Internet user visits the websites and clicks on one of the sponsored links featured therein. Such a conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith. With respect to “automatically” generated PPC links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. In view of the above-described use of the |
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disputed domain names, it is clear that the Respondent intentionally attempted to attract, for commercial
gain, Internet users to its websites, by creating a likelihood of confusion with the GUCCI Trademark as to the
source, sponsorship, affiliation or endorsement of its websites.
As an additional circumstance evidencing the Respondent’s bad faith, the Respondent requested the amounts of EUR 50,000 and EUR 10,000 for transferring the five disputed domain names and five additional domain names corresponding to another third-party trademark in a series of email exchanges with the web agency entrusted by the Complainant, and also in its reply to the Complainant’s cease-and-desist letter, indicating that the Respondent registered the disputed domain names in order to sell them. Therefore, the Respondent clearly intended to obtain profit from the sale of the disputed domain names for an amount exceeding the out-of-pocket costs. Furthermore, the Respondent also registered the disputed domain names to prevent the Complainant from reflecting its mark in corresponding domain names, and has clearly engaged in a pattern of such conduct, as it registered five domain names almost identical to the GUCCI mark. Moreover, the Respondent indicated to the web agency that it had registered, and was able to sell, “192 domains of other international brands […]”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.
The 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 disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed 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 and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The disputed domain names contain the GUCCI Trademark in its entirety, with the only difference that individual letters are slightly modified by diacritics. However, the Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
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A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered
by panels to be confusingly similar to the relevant mark for purposes of the first element. Examples of such
typos include the use of non-Latin internationalized or accented characters. WIPO Overview 3.0, section
1.9.
The applicable Top-Level-Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a
standard registration requirement and as such is disregarded under the first element confusing similarity test.
WIPO Overview 3.0, section 1.11.
The Panel finds 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.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the GUCCI Trademark. The Panel finds on record that there are no indications that the Respondent is commonly known by the disputed domain names or otherwise has any rights to or legitimate interests in the disputed domain names. Further, the disputed domain names are not used for a bona fide offering of goods or services. Rather, the Complainant has provided evidence that (i) the disputed domain names have been connected to the Registrar parking pages with PPC advertisement links, which, in the circumstances of this case, reflects an intent to capitalize on the Complainant’s reputation, and (ii) the Respondent offered to sell the disputed domain names to a web agency (entrusted by the Complainant) upon request for an amount that likely far exceeded the out-of-pocket expenses directly related to the disputed domain names.
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. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
The Panel finds 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.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
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Panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor). Circumstances indicating that
a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-
specific; the nature of the domain name (e.g., whether a typo of a famous mark, a domain name wholly
incorporating the relevant mark plus a geographic term or one related to the complainant’s area of
commercial activity, or a pure dictionary term) and the distinctiveness of the trademark at issue, among other
factors, are relevant to this inquiry. WIPO Overview 3.0, section 3.1.
In the present case, the Complainant has provided evidence that (i) the disputed domain names have been connected to the Registrar parking pages with PPC advertisement links, which, in the circumstances of this case, reflects an intent to capitalize on the Complainant’s reputation, (ii) the Respondent offered to sell the disputed domain names to a web agency (which was instructed by the Complainant to contact the
Respondent) for an amount that likely far exceeded the out-of-pocket expenses incurred for registering and maintaining the disputed domain names, while suggesting that “you'll definitely profit from this easily selling to gucci”, and (iii) the Respondent has engaged in a pattern of abusive registrations.
The fact the disputed domain names presently do not resolve to any active webpages does not prevent a finding of bad faith. From the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. The Panel notes the distinctiveness and reputation of the well-known GUCCI Trademark, the composition of the disputed domain names, including the entire GUCCI Trademark with a minor misspelling, the fact that the Respondent concealed its identity as well as the Respondent’s failure to submit a response to the Complaint, and the implausibility of any good faith use to which the disputed domain names may be put, and finds that the change in use reinforces the finding that there was no good faith intention behind the registration and prior use of the disputed domain names. By using the disputed domain names as described above, the Respondent has intentionally attempted to take unfair advantage of, abuse, or otherwise engage in behaviour detrimental to the GUCCI Trademark.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes 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 <guccĩ.com> (xn--gucc-jya.com), <guccī.com> (xn--gucc-tya.com),
<guccï.com> (xn--gucc-8pa.com), <guċċi.com> (xn--gui-7paa.com), and <ġucci.com> (xn--ucci-9wa.com) be
transferred to the Complainant.
/Christian Gassauer-Fleissner/
Christian Gassauer-Fleissner
Sole Panelist
Date: May 29, 2025
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