Guccio Gucci S.p.A. v Phan Tan Tai, Phan Tan Tai and Nguyen Minh
WIPO Case No. D2025-0926
•18-04-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Guccio Gucci S.p.A. v. Phan Tan Tai, Phan Tan Tai and Nguyen Minh
Duong, Nguyen Minh Duong
Case No. D2025-0926
1. The Parties
The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.
The Respondents are Phan Tan Tai, Phan Tan Tai, Viet Nam, and Nguyen Minh Duong, Nguyen Minh
Duong, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <guccihanbag.website>, <gucci-handbags.website> and <gucciph.online> are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2025. On March 6, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 7, 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 (GMO-Z.com RUNSYSTEM, GMO-Z.com RUNSYSTEM JSC) and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 7, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint for the disputed domain name associated with a different underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on March 10, 2025.
The Center verified that the Complaint together with the amended 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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on March 12, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 1, 2025. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on April 2, 2025.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 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 is an Italian Public Limited Company which belongs to the international conglomerate company Kering, a leading group worldwide in apparel and accessories.
The Complainant has many trademark registrations around the world including International Trademark
Registration No. 429833 for GUCCI, registered on March 30, 1977, in classes 3, 14, 18, and 25;
International Trademark Registration No. 457952 for GUCCI registered on December 16, 1980, in classes 1-
42; and European Union Trademark Registration No. 000121988 for GUCCI, filed on April 1, 1996, and
registered on November 24, 1998, in classes 1-42.
The Complainant is the owner of several domain names identical to or similar to the trademark GUCCI, including the domain name <gucci.com>, registered on June 5, 1996, which directs to its official website.
The disputed domain names <guccihanbag.website>, <gucci-handbags.website> and <gucciph.online> were registered on Septermber 9, 2024, January 14, 2025 and September 30, 2024 respectively. The disputed domain mames are currently not active.
However, the Complaint stated that the disputed domain names had been actively used by Respondents, specifically to create webpages publishing without authorization the Complainant’s GUCCI trademarks and the Complainant’s company details and offering purported GUCCI products for sale at discounted prices, requesting users to provide their personal information to finalize the purchase.
5. Parties’ Contentions
A. Complainant
The Complainant requests the consolidation of the disputes against the multiple disputed domain names registrants based on the reasons provided in its Complaint.
The disputed domain names are confusingly similar to the Complainant’s trademark.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The
Respondents have registered and are using the disputed domain names in bad faith.
The Complainant requests the transfer of the disputed domain names.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
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6. Discussion and Findings
6.1. Consolidation: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the disputes against multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that:
| - | all the disputed domain names are registered with the same Registrar. |
- the disputed domain names were registered in a short period of time, between September 9, 2024, and January 14, 2025;
- all the disputed domain names are registered in the name of individuals with a declared domicile in Viet Nam with the use of the same email service provider;
- the disputed domain names <gucci-handbags.website> and <gucciph.online> are registered in the name of the same registrant Phan Tan Tai, Phan Tan Tai;
| - | the disputed domain name <guccihanbag.website>, registered in the name of Nguyen |
Minh Duong, Nguyen Minh Duong, is very similar to the disputed domain name <gucci-handbags.website>
registered by Phan Tan Tai, Phan Tan Tai, as they both include the GUCCI mark and a descriptive term
referrable to the Complainant’s products, i.e. “handbags” or “hanbag” (clear misspelling of “handbag”) and
are registered in the same generic Top-Level Domain “.website”;
- all the disputed domain names resolve to the same webpage displaying the following indication in the
Vietnamese language: “Tên miền của bạn đã được trỏ thành công! Vui lòng xuất bản Landing Page với tên
miền trên để sử dụng dịch vụ. Xin cám ơn!” (in English: “Your domain has been successfully
pointed! Please publish Landing Page with the above domain to use the service. Thank you!”).
| - | According to the Complainant and the screenshots in Annex 8.2 of the Complaint, the disputed |
domain names have been used to create internal webpages – very similar to each other - displaying the prices;
| - The same Respondents Nguyen Minh Duong, Nguyen Minh Duong and Phan Tan Tai, Phan Tan Tai confusingly similar to the GUCCI mark and concluded with the transfer of the domain names to the | were involved together in a prior UDRP case brought by the Complainant against other domain names mark GUCCI were consolidated. |
| In light of the above, it is clear from the evidence that the disputed domain names are under the actual control of a single individual or entity or, at least, under common control of a group of individuals acting in concert. | |
| As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. |
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Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview 3.0, section 4.3.
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 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.
Although the addition of other terms, here “ph”, “handbags” and “hanbag” (a typo version of “handbags”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
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.
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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 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.
Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation with the Complainant, which cannot constitute fair use. WIPO Overview 3.0, section 2.5.1.
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.
In the present case, the Panel notes that:
- The registration of the Complainant’s trademark pre-dates the registration of the disputed domain names by several decades.
- The disputed domain names incorporate the Complainant’s trademark in its entirety, with the addition of generic or geographic terms related to the Complainant’s products.
| - | The Respondent is in default; and |
| - | The disputed domain names are currently passively held. |
At the time of filing of the Complaint, they all resolved to websites using the Complainant’s trademark GUCCI and photos of the Complainant’s products and displaying a copyright notice ““©2016 – 2022 Guccio Gucci S.p.A.” Noting the lack of authorization by the Complainant and lack of any disclaimer on the websites which the disputed domain names resolved to, the impersonating nature of the disputed domain name is reinforced and as such, the disputed domain names cannot qualify as fair use. The Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under paragraph 4(b)(iv). The current non-use of the disputed domain names does not prevent a finding of bad faith.
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 <guccihanbag.website>, <gucci-handbags.website> and
<gucciph.online> be transferred to the Complainant.
/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: April 18, 2025
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