Guccio Gucci S.p.A. v 罗永红 (Luoyonghong)

WIPO Case No. D2025-1486

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. 罗永红 (Luoyonghong)

Case No. D2025-1486

1. The Parties

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

The Respondent is 罗永红 (Luoyonghong), China.

2. The Domain Name and Registrar

The disputed domain name <gucci.ceo> is registered with Chengdu West Dimension Digital Technology Co.,

Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April
11, 2025. On April 11, 2025, the Center transmitted by email to the Registrar a request for registrar
verif ication in connection with the disputed domain name. On April 14, 2025, the Registrar transmitted by
email to the Center its verification response confirming that the Respondent is listed as the registrant and
providing the contact details. The Center sent an email communication in Chinese and English to the
Complainant on April 16, 2025, providing the registrant and contact information disclosed by the Registrar.
The Complainant f iled an amendment in English to the Complaint on April 17, 2025.

On April 16, 2025, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On April 17, 2025, the Complainant conf irmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent in Chinese and English of the Complaint, and the proceedings commenced on April 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on May 18, 2025.

The Center appointed Francine Tan as the sole panelist in this matter on May 20, 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 a fashion house owned by the international conglomerate, Kering, one of the leading global groups in apparel and accessories. Founded in 1921 by Guccio Gucci in Florence, Italy, the Gucci Fashion House initially sold leather goods and luggage. The Complainant rapidly achieved great success, and not only increased its offerings, but also expanded to locations overseas. In 1995, the Complainant converted into a publicly-owned company, and was elected as the “European Company of the year” by the European Business Press Federation. In 1999, the Complainant entered into a strategic alliance with what is now the Kering conglomerate, becoming one of the world’s leading multi-brand luxury goods companies. The Complainant was ranked 31st in the Forbes list of 2020 World’s Most Valuable Brands.

The Complainant is the owner of numerous trademark registrations for GUCCI, including the following:

- International trademark registration No. 429833, registered on March 30, 1977;

- International trademark registration No. 457952, registered on December 16, 1980;

- International trademark registration No. 1184004, registered on May 6, 2013;

- International trademark registration No. 1101533, registered on November 25, 2011; and

- European Union trademark registration No. 000121988, registered on November 24, 1998.

The Complainant owns numerous domain names, including its primary domain name, <gucci.com>, registered on June 5, 1996.

The disputed domain name was registered on November 12, 2015, and has not directed to any active website since its registration.

The Complainant stated that once it became aware of the registration of the disputed domain name, it contacted the Respondent via a web agency to ascertain the possible availability to transfer the disputed domain name. After a reminder was sent, the Respondent replied, requesting an offer for the transfer of the disputed domain name. The web agency offered reimbursement of the registration and maintenance costs. The Respondent however indicated a selling price of USD 50,000. On May 17, 2017, a cease-and-desist letter was sent to the Respondent requesting a transfer of the disputed domain name to the Complainant. No reply was received. As the disputed domain name was not actively used, the Complainant made a decision to simply monitor it. In January 2025, it was ascertained that the disputed domain name had MX records configured, which suggested that the disputed domain name could be used for the sending of misleading email communications.

Additional cease-and-desist letters were sent to the Respondent on January 29, 2024, November 19, 2024 and February 10, 2025. No response was received.

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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 name.

Notably, the Complainant contends that:

- The disputed domain name is identical to the GUCCI trademark in which the Complainant has rights,

with the addition of the Top-Level Domain (“TLD”) “.ceo”, which can be disregarded as it is merely
instrumental to Internet use.

- The Respondent has no rights or legitimate interests in the disputed domain name. There is no

evidence that the Respondent is commonly known by the disputed domain name. The Respondent is not licensed or authorized by the Complainant to use the Complainant’s GUCCI trademark. The Respondent does not own any trademark registration(s) for GUCCI. The disputed domain name does not resolve to an active website, and there is no evidence that the Respondent is using, or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. The passive use of the disputed domain name does not constitute legitimate noncommercial or fair use. The fact that the disputed domain name is identical to the Complainant’s well-known GUCCI trademark carries a high risk of implied af f iliation with the Complainant. The use of the TLD “.ceo” may also increase confusion among Internet users, as they may think it refers to the Complainant’s CEO. The Respondent’s conduct in not responding to the cease- and-desist letters and sale price of USD 50,000 suggests that the Respondent registered the disputed domain name for prof it and the Respondent did not intend to use the disputed domain name for any

legitimate noncommercial or fair use.

- The disputed domain name was registered and is being used in bad faith. The Complainant’s GUCCI trademark has been used since as early as 1921 and is a well-known brand. It is inconceivable that the Respondent was unaware of the existence of the Complainant or its GUCCI trademark at the time of

registering the disputed domain name. It is clear that the Respondent registered the disputed domain name intending to refer to the Complainant’s trademark. The disputed domain name resolves to an inactive website, which has been held to be considered bad faith. The use of the “.ceo” TLD also may give the false impression that the disputed domain name is associated with the Complainant’s CEO. The MX servers of the disputed domain name are also configured which makes it possible for the Respondent to send emails using the disputed domain name and falsely imply an af f iliation between the Complainant and the

Respondent. The Respondent’s offer to sell the disputed domain name to the Complainant for the sum of USD 50,000, which is in excess of any out-of-pocket registration costs of the disputed domain name, is also evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specif ied otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

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The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons:

- The Complainant communicates in English and would be prejudiced if it were required to translate the Complaint and participate in the proceedings in Chinese. Significant expense and delay would be caused.

- The Respondent demonstrated that he has a command of English by virtue of the correspondence

with the web agency engaged by the Complainant.

- The disputed domain name is in Latin characters.

- The TLD “.ceo” is an abbreviation for “Chief Executive Of f icer”, which reveals the Respondent’s

intention to target an international audience, including English-speaking Internet users.

The Respondent did not make any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues
A. Identical or Confusingly Similar

It is well accepted that the f irst 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel f inds the f irst 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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

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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 name. 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 name such as those enumerated in the Policy or otherwise. The Panel considers that the composition of the disputed domain name carries a high risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Respondent was not licensed or authorized by the Complainant to use the Complainant’s GUCCI trademark or to register a domain name incorporating the trademark. The disputed domain name resolves to an inactive webpage, and there is no evidence that the Respondent is using or preparing to use it for any legitimate

noncommercial or fair use, without intent for commercial gain. Further, the fact that the Respondent did not f ile any response in this proceeding nor respond to the cease-and-desist letters is indicative that he does not have any rights or legitimate interests in the disputed domain name. In any event, the Complainant’s

trademark is distinctive, well-known, and exclusively associated with the Complainant. Accordingly, it is not at all conceivable that the Respondent would be able to demonstrate that he has rights or legitimate interests in the disputed domain name.

The Panel f inds 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 disputed domain name incorporates the entirety of the Complainant’s distinctive GUCCI trademark with no alterations. The Complainant’s mark has been registered for almost 50 years. Given that length of time of registration and use, as well as the fame and reputation of the Complainant’s mark, the Panel concludes that the Respondent must have known of the Complainant’s mark at the time he registered the disputed domain name and specifically targeted it. The fact that the MX records of the disputed domain name have been set up suggests that the Respondent may attempt to impersonate the Complainant or to use the email for phishing or other fraudulent purposes. Additionally, the Respondent’s attempt to sell the disputed domain name to the Complainant for the sum of USD 50,000, a sum far in excess of any likely out-of -pocket

registration costs incurred by the Respondent, is further evidence of bad faith.

Panels have found that the non-use of a domain name would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, and (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use to which the domain name may be put. The Panel f inds that in the circumstances of this case, the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

The Panel f inds 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 name <gucci.ceo> be transferred to the Complainant.

/Francine Tan/ Francine Tan Sole Panelist Date: June 3, 2025