WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A., v. 詹金荣 (Zhan Jinrong); 何祥 (He Xiang); 张明荣 (Zhang Mingrong); 蓝罗程 (Lan Luocheng); 张航 (Zhang Hang); Philipp Schumacher, Hardware Solutions Canada (HSC) Inc.; Mathieu Laroussi, Gucciowner; Tok Pi; Eiki Stone village; Dominique Lacroix; Daniel Liao; Chengwei Hong, Guccidubai; Jingjia Ji, Gucci; Ba Dan Wang; Hua Wang; Huaiwei Zhang; Ke Ke Zhou; Manami Murakami; Peter Green; Sara Lee; SDFDS DSFS; Siciyuan Luo; Wang Zhang; \u6d25\u5609\u5c71 \u5f18\u6a39 [津嘉山 弘樹].

Case No. D2020-3211

1. The Parties

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

The Respondents are 詹金荣 (Zhan Jinrong), China; 何祥 (He Xiang), China; 张明荣 (Zhang Mingrong), China; 蓝罗程 (Lan Luocheng), China; 张航 (Zhang Hang), China; Philipp Schumacher, Hardware Solutions Canada (HSC) Inc., Canada; Mathieu Laroussi, Gucciowner, Canada; Tok Pi, China; Eiki Stone village¹ , China; Dominique Lacroix, United States of America (“United States”); Daniel Liao, Singapore; Chengwei Hong, Guccidubai, China; Jingjia Ji, Gucci, China; Ba Dan Wang, China; Hua Wang, China; Huaiwei Zhang, Hong Kong, China; Ke Ke Zhou, China; Manami Murakami, Japan; Peter Green, United States; Sara Lee, China; SDFDS DSFS, United States; Siciyuan Luo, Japan; Wang Zhang, China; and \u6d25\u5609\u5c71 \u5f18\u6a39 [津嘉山 弘樹] (referred to below as “Tsukayama Hiroki” ²), China.³

2. The Domain Names and Registrars

The disputed domain names <gucciby.com>, <guccimalaysia.store>, <gucciowners.com> and <guccisgs.store> are registered with Tucows Inc.

The disputed domain name <gucci-id.vip> is registered with Blue Razor Domains, LLC.

The disputed domain name <guccijaps.shop> is registered with NameCheap, Inc.

The disputed domain names <gucciwebs.com>, <guccijpa.com> and <jpguccistcok.com> are registered with Hongkong Domain Name Information Management Co., Limited.

The disputed domain names <guccilvshop.com>, <guccivvip.com> and <jp-guccibags.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

The disputed domain names <gucci-my.vip>, <gucci-shop.vip>, <jp-gucci.vip> and <ph-gucci.vip> are registered with Go Australia Domains, LLC.

The disputed domain name <guccistore.vip> is registered with Go France Domains, LLC.

The disputed domain name <guccith.vip> is registered with Go Montenegro Domains, Inc.

The disputed domain name <zklgucci.shop> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).

The disputed domain names <fashiongucci.shop>, <gc-gucci.com>, <gucciae.shop>, <gucciae.store>, <guccibag.vip>, <guccibest.tokyo>, <guccibl.shop>, <guccicc.shop>, <guccicd.shop>, <guccicheap.club>, <guccicl.shop>, <gucciclub.shop>, <gucciclub.tokyo>, <guccico.com>, <guccicompany.com>, <guccic.shop>, <guccidcd.shop>, <gucci-fashion.com>, <gucci-gc.com>, <guccigc.com>, <gucci-hk.club>, <guccihks.com>, <guccihome.shop>, <guccihp.shop>, <gucciibag.com>, <gucci-id.com>, <gucciid.com>, <gucci-idn.com>, <gucci-id.shop>, <gucciie.com>, <gucciii.shop>, <gucciil.shop>, <gucciina.com>, <gucci‑ind.shop>, <gucci-ins.shop>, <gucci-i.shop>, <guccii.store>, <gucci-japan.shop>, <gucci-jap.com>, <guccijap.shop>, <guccijap.store>, <gucci-jpshop.com>, <guccijpy.store>, <guccikey.com>, <guccilee.shop>, <gucci-llc.com>, <guccillee.shop>, <guccilli.shop>, <guccill.shop>, <gucciltd.com>, <gucci‑ma.com>, <gucci-malaysia.shop>, <guccimalaysia.shop>, <guccimarts.com>, <guccimas.com>, <guccimas.shop>, <gucci-my.club>, <guccimyr.shop>, <gucci-my.shop>, <gucci-my.store>, <guccins.com>, <guccins.shop>, <gucci-o.com>, <gucciol.shop>, <gucciolv.com>, <gucci-online.shop>, <guccio.shop>, <gucci-o.store>, <gucciotoku.store>, <gucciouni.shop>, <guccioutlet-hk.com>, <gucci-outlet.shop>, <gucci‑ph.club>, <gucciph.club>, <gucciph.com>, <gucciphi.com>, <gucci-philippines.shop>, <gucci‑phil.shop>, <gucci-phi.shop>, <gucciphi.shop>, <gucci-ph.shop>, <gucciph.shop>, <gucciph.store>, <guccipro.shop>, <guccisale.shop>, <guccisea.shop>, <gucci-sell.com>, <guccisell.store>, <gucci‑sgp.com>, <guccisgp.com>, <guccisgp.online>, <guccisgp.shop>, <guccisgp.store>, <gucci‑sg.shop>, <guccisg.store>, <guccishop-jp.com>, <guccishop-my.com>, <guccishopp.tokyo>, <guccishop.site>, <gucci-shop.store>, <gucci-shop-th.com>, <guccishop-th.com>, <gucci-shore.shop>, <guccisite.shop>, <gucci-snk.com>, <guccispf.com>, <guccispf.vip>, <guccisp.store>, <guccis.shop>, <guccistores.biz>, <guccistores.tokyo>, <guccistore.tokyo>, <guccithai.com>, <guccithb.com>, <guccith.com>, <gucci-thl.com>, <gucci-th.shop>, <guccith.shop>, <guccitk.com>, <guccitl.com>, <guccitokyoworld.shop>, <gucci-tw.club>, <gucci-twn.com>, <guccitw.sale>, <guccitw.shop>, <guccitw.store>, <gucci-tw.vip>, <guccitym.shop>, <gucciuae.shop>, <guccivip.online>, <gucci-vip.shop>, <gucci-vip.site>, <gucciway.tokyo>, <gucciwlm.shop>, <guccix.shop>, <guccixy.shop>, <gucciym.shop>, <gucciz.shop>, <guchi.shop>, <gucibag.com>, <gucicod.com>, <gucidn.com>, <guciiiiiiiiii.club>, <guciiiiiiiiii.life>, <gucijp.shop>, <gucioe.shop>, <guciph.com>, <gucitop.com>, <guciwear.com>, <hk‑gucci.store>, <hkgucci.store>, <idgucci.com>, <id-gucci.shop>, <iguccis.shop>, <indegucci.com>, <ingucci.tokyo>, <knguci.com>, <livegucci.com>, <live-gucci.shop>, <malaygucci.site>, <malaysiatgucci.website>, <masgucci.shop>, <myguccisg.com>, <mygucci.shop>, <myguccishop.com>, <mysgucci.com>, <ofgucci.shop>, <ongucci.shop>, <phgucci.club>, <ph-gucci.com>, <phgucci.com>, <ph‑gucci.shop>, <phgucci.shop>, <phigucci.com>, <phigucci.store>, <php-gucci.shop>, <rosgucci.website>, <sale-gucci.store>, <seagucci.shop>, <sgpgucci.com>, <sgpgucci.shop>, <taipei‑gucci.com>, <tl-gucci.com>, <twngucci.com> and <uguccis.com> are registered with GoDaddy.com, LLC.

Tucows Inc., Blue Razor Domains, LLC, NameCheap, Inc., Hongkong Domain Name Information Management Co., Limited, Alibaba Cloud Computing (Beijing) Co., Ltd., Go Australia Domains, LLC, Go France Domains, LLC, Go Montenegro Domains, Inc., Alibaba Cloud Computing Ltd. d/b/a HiChina, and GoDaddy.com, LLC are referred to below separately and collectively as the “Registrar”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 1, December 2, and December 7, 2020, and January 15, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 28, 2021, the Complainant requested an extension of time to file an amendment. On January 29, 2021, the Center granted the extension of time until February 8, 2021. The Complainant filed an amended Complaint in English on February 5, 2021.

On January 27, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on February 5, 2021. The Respondents did not comment on the language of the proceeding.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the amended Complaint in English and Chinese, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. On January 28, 2021 and February 23, 2021, the Center received two informal emails sent from contact email addresses of the Respondents. On March 22, 2021, the Center notified the commencement of the Panel appointment process.

On April 6, 2021, the United States District Court for the Southern District of Florida ordered the transfer of 38 domain names, including <gucciins.com>, which was included in the amended Complaint in this proceeding that had been notified to the Respondents.⁴ On April 8, 2021, the Registrar notified the Center that it had transferred that domain name and, on the same day, the Center notified the Parties of the Registrar’s communication. On April 9, 2021, the Complainant notified the Center that it wished to remove that domain name from this administrative proceeding.

The Center appointed Matthew Kennedy as the sole panelist in this matter on April 16, 2021. 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 fashion house founded in 1921 by Mr. Guccio Gucci. Gucci was ranked number 30 in Forbes list of the world’s most valuable brands in 2019 and number 33 in Interbrand’s best global brand rankings in 2019. The Complainant holds multiple trademark registrations for GUCCI including International trademark registration number 429833, registered from March 30, 1977, designating multiple jurisdictions, and specifying goods in classes 3, 14, 18, and 25. That trademark registration remains current. The Complainant has also registered over 1600 domain names that incorporate “Gucci” including <gucci.com> that it uses in connection with an online store.

The Respondents are identified in the Registrar’s WhoIs database by a variety of names. One registrant name (“SDFDS DSFS”) is composed of random letters typed on the left-hand side of a keyboard. Some of the contact addresses are also manifestly false. According to information provided by the Complainant, certain of the named registrants in this proceeding have been found in prior proceedings under the Policy to have registered and been using other domain names in bad faith. See Chapter 4 Corp. d/b/a Supreme v. Dominique Lacroix, Ndiaye Therese, Newbeta, Trani Johanna, geryi wang, WIPO Case No. D2017-1902; Moncler S.p.A. v. Dominique Lacroix, WIPO Case No. D2019-1017; and Chanel, Inc. v. Manami Murakami, \u82f1\u8a18 \u77f3\u6751 [英記石村], WIPO Case No. D2020-2459.

The disputed domain names were registered on the following dates by the following named registrants:

Most of the 204 disputed domain names currently resolve, or formerly resolved, to online shops displaying advertising material from the Complainant’s website and offering for sale what purport to be the Complainant’s GUCCI fashion products, particularly bags, at heavily discounted prices. Most of these websites are presented as a “fast fashion online shopping platform” established in 2015 that provides a “one‑stop online shopping experience” providing customers with a “wide range of product choices”. The operator of the websites is frequently identified as “GGOW Co., Ltd” or “GGAW Co., Ltd”, or both⁵ or, in several cases, “Gucci Co., Ltd”⁶, “GucciPH., Ltd”⁷, “LVOW Co., Ltd”⁸, merely “Co., Ltd”⁹ or “M Boutique”.¹⁰ Five other such websites are for a company named “SYMBI Co., Ltd”¹¹, represented by the same person as GGOW Co., Ltd or GGAW Co., Ltd on other websites. Two disputed domain names redirected to other domain names that resolved to such online shops.¹² One website offers for sale not only the Complainant’s products but virus blockers as well.¹³ The websites are variously in English, Chinese, Japanese, and Thai.

Five disputed domain names resolve or formerly redirected to websites promoting what purport to be products of the Complainant’s competitors (i.e., Canada Goose jackets, Coach bags, or Louis Vuitton bags).¹⁴ One of these websites is also for LVOW Co., Ltd, which is described in the same terms set out above.

Seven disputed domain names appear to have been passively held since their registration.¹⁵ These disputed domain names do not resolve to any active website or redirect to a landing page where a domain name holder can finish setting up a new web address.

By the time that the amended Complaint was filed, 77 more disputed domain names had ceased to resolve to any active website or had begun to redirect to the landing page to finish setting up a new web address.

Another domain name (<gucciins.com>, registered in the name of Daniel Liao) was removed from this dispute by the Complainant due to a court-ordered transfer as described in section 3 above. Accordingly, the Panel does not consider that domain name further. However, the Panel will continue to consider the disputed domain name <gucioe.shop>, which redirects to <gucciins.com>.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s GUCCI mark. Most of the disputed domain names incorporate the GUCCI mark along with the addition of letters, descriptive terms, or geographical indications or a combination of both.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s GUCCI trademark. Specifically, the Respondents are not authorized resellers of the Complainant and have not been authorized to register and use the disputed domain names. The Respondents are not commonly known by the disputed domain names. Most of the disputed domain names have been, and many of them still are, redirected by the Respondents to websites mirroring the Complainant’s website, displaying the Complainant’s trademarks and official images and offering for sale prima facie counterfeit GUCCI products. Moreover, no disclaimer has been published on the websites at the disputed domain names in order to inform users as to the Respondents’ lack of relationship or affiliation with the Complainant.

The disputed domain names have been registered and are being used in bad faith. It is inconceivable that the Respondents were not aware of Complainant’s trademark rights at the time of the registration of the disputed domain names. The use of most of the disputed domain names for commercial websites mirroring the <gucci.com> website, where the Complainant’s trademarks are misappropriated and prima facie counterfeit GUCCI-branded products are offered for sale or products of the Complainant’s competitors are promoted, clearly indicates that the Respondents’ purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking GUCCI-branded products to their own websites for financial gain.

B. Respondents

The Respondents sent two informal emails to the Center. One, from the contact email address of 詹金荣(Zhan Jinrong), contained only an insult. The other from the contact email address of Ke Ke Zhou professed ignorance of the specific situation and claimed that his information had been leaked.

6. Discussion and Findings

6.1 Preliminary Issues

A. Consolidation: Multiple Domain Name Registrants

The Complaint initiates disputes in relation to 24 nominally different domain name registrants. The registrant of each disputed domain name is shown in the table in section 4 above. The Complainant alleges that the disputed domain names are under the control of a single individual or entity or, at least, reflective of a group of individuals acting in concert, and requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The Respondents 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. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or associated 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 many of the disputed domain names are registered in the same name or share other contact details or registration information. Some differently named registrants nevertheless share the same contact email address in the Registrar’s WhoIs database (Eiki Stone village and Daniel Liao) or the same contact email address and telephone number (蓝罗程 (Lan Luocheng) and 张航 (Zhang Hang)). Many differently named registrants hold disputed domain names linked to the same IP address (Dominique Lacroix; Eiki Stone village; SDFDS DSFS; Daniel Liao; Sara Lee; siciyuan luo; 蓝罗程 (Lan Luocheng); Wang Zhang; Ba Dan Wang; Mathieu Laroussi, Gucciowner; and 詹金荣 (Zhan Jinrong)) and, as regards another IP address (Tsukayama Hiroki and Ke Ke Zhou).

Many websites associated with disputed domain names registered in different names are for the same company or display the same contact details. Many are for “GGOW Co., Ltd” (Dominique Lacroix; Eiki Stone village; SDFDS DSFS; Sara Lee; siciyuan luo; 蓝罗程 (Lan Luocheng); Huaiwei Zhang; Jingjia Ji, Gucci; Mathieu Laroussi, Gucciowner; Philipp Schumacher, Hardware Solutions Canada (HSC) Inc.; and Tok Pi) or “GGAW Co., Ltd” (SDFDS DSFS, Daniel Liao and Tsukayama Hiroki) or “Gucci Co. Ltd” (Eiki Stone village, SDFDS DSFS and 张明荣 (Zhang Mingrong)) with company descriptions that are wholly or partly identical. Many websites associated with disputed domain names registered in different names display the same email address (Dominique Lacroix, Daniel Liao, Eiki Stone village, 蓝罗程 (Lan Luocheng) and Tok Pi), or, as regards another email address (Dominique Lacroix; Eiki Stone village; SDFDS DSFS; Daniel Liao; Sara Lee; Tsukayama Hiroki; Manami Murakami; 何祥 (He Xiang); Hua Wang; Jingjia Ji, Gucci; and Wang Zhang), or, as regards a third email address (Sara Lee; and Chengwei Hong, Guccidubai), or the same telephone number (Dominique Lacroix, Eiki Stone village, Daniel Liao, Tsukayama Hiroki, Wang Zhang, Ba Dan Wang, Hua Wang and Huaiwei Zhang), or the same WhatsApp number (Dominique Lacroix, Eiki Stone village and 詹金荣 (Zhan Jinrong)), or the same Line ID (Dominique Lacroix, Eiki Stone village, Daniel Liao, Manama Murakami, Tsukayama Hiroki, Wang Zhang, Hua Wang and Huaiwei Zhang) or, as regards another Line ID (Dominique Lacroix, Eiki Stone village, Sara Lee, 蓝罗程 (Lan Luocheng), Manami Murakami and Tok Pi) or, as regards a third Line ID (Dominique Lacroix, Eiki Stone village, 蓝罗程 (Lan Luocheng) and Peter Green).

Finally, the Panel takes note that the disputed domain names were registered within a relatively short period, i.e., between October 2019 and November 2020, in most cases between May and November 2020, and in several cases by differently named registrants on the same day.

Taking into consideration all these circumstances, the Panel is persuaded that the disputed domain names and their associated websites are subject to common control.¹⁶

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate in a single proceeding the disputes regarding the nominally different disputed domain name registrants (jointly and collectively referred to below as “the Respondent”).

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in English except for those registered with Alibaba Cloud Computing (Beijing) Co., Ltd or Alibaba Cloud Computing Ltd. d/b/a HiChina (“www.net.cn)”, which are in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that requiring Complainant to translate the Complaint and all documents into Chinese would cause delay; the Respondent in this case has demonstrated that it understands English since it has used several of the disputed domain names in connection with websites published entirely in English and several of the disputed domain names include English words.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and amended Complaints were filed in English. The Registration Agreements for 200 of the disputed domain names are in English. Although the Registration Agreements for four disputed domain names are in Chinese, three of those (<guccilvshop.com>, <jp-guccibags.com>, and <zklgucci.shop>) resolve to websites in English or with an English version while the fourth (<guccivvip.com>) has the same named registrant as one of the other three (<guccilvshop.com>), from which it can be inferred that the registrants of these four disputed domain names are also able to communicate in English. This is confirmed as regards one of these named registrants by the informal email received in English from the contact email address for <zklgucci.shop>. Moreover, the Panel has already determined in section 6.1A above that the registrants of all the disputed domain names or the associated websites are under common control. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a formal Response in Chinese, but none was filed.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a 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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the GUCCI mark.

192 disputed domain names wholly incorporate the GUCCI mark; in 150 instances as their respective initial element. The disputed domain names also include dictionary words (including: “bag”, “cheap”, “club”, “company”, “fashion”, “in”, “key”, “live”, “marts”, “of”, “on”, “online”, “outlet”, “owners”, “sale”, “sea”, “sell”, “shop”, “shore”, “site”, “way”, “webs”, “world”); misspelt words (“shopp”, “stcok”); a transliteration of a Japanese dictionary word (“otoku”, meaning “great value”), geographical and currency references (including: “ae”, “hk”, “hks”, “id”, “ind”, “jp”, “jap”, “japan”, “jpa”, “jpy”, “ma”, “mas”, “malaysia”, “my”, “ph”, “phi”, “phil”, “philippines”, “php”, “sg”, “sgp”, “sgs”, “taipei”, “th”, “thai”, “thb”, “tl”, “tokyo”, “tw”, “twn”, “uae”), other abbreviations (“llc”, “ltd”, “pro”, “vip”), repeated letter “i”, pairs of letters, individual letters and, in some cases, one or more hyphens separating these elements. The additional words, abbreviations, letters, and hyphens do not prevent a finding of confusing similarity as the GUCCI trademark remains clearly visible in all these disputed domain names. See WIPO Overview, section 1.8.

12 disputed domain names incorporate the GUCCI trademark with an obvious spelling error (“guci” or, in one case, “guchi”); in 11 of these instances as their respective initial elements.¹⁷ These misspelt versions are visually and aurally almost identical to the GUCCI trademark. All but one of these disputed domain names include additional words and letters (i.e., “bag”, “cod”, “dn”, “jp”, “kn”, “oe”, “ph”, “top”, “wear”) or repeated letter “i”. However, in each case, these disputed domain names contain sufficiently recognizable aspects of the GUCCI trademark (omitting one “c” or, in one case, replacing one “c” with an “h”) for these disputed domain names to be confusingly similar to that mark. See WIPO Overview, section 1.9.

The only other element in each disputed domain name is a generic Top-Level Domain (“gTLD”), variously “.biz”, “.club”, “.com”, “.life”, “.online”, “.sale”, “.shop”, “.site”, “.store”, “.tokyo”, “.vip”, and “.website”. As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that all the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, many disputed domain names resolve to websites offering for sale what purport to be the Complainant’s GUCCI products. It is unnecessary for the purposes of this decision to determine whether the products are genuine or counterfeit. The websites prominently display the Complainant’s GUCCI mark, in most cases with advertising material from the Complainant’s own website, all of which gives the impression that the websites are operated or endorsed by, or affiliated with, the Complainant. The Complainant submits that the Respondent is not a licensee, authorized agent, or authorized reseller of the Complainant, or in any other way authorized to use the Complainant’s GUCCI mark. Although many websites identify another company name under “About Us” or “Contact Us” or “Company Profile”, the company description is inconspicuous and does not actually disclaim a relationship with the Complainant. Four websites display the company name “Gucci Co., Ltd” or “GucciPH., Ltd” which, if anything, reinforces the false impression that the website is affiliated with the Complainant. Moreover, five disputed domain names resolve or redirect to websites that sell what purport to be products of the Complainant’s competitors and one resolves to a website that sells an unrelated product as well. These circumstances show that the Respondent’s active use of the disputed domain names is not in connection with a bona fide offering of goods or services as envisaged by paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Many other disputed domain names do not resolve to any active website or merely redirect to a landing page to complete setting up a web address. These are not uses of disputed domain names in connection with a bona fide offering of goods or services either.

As regards the second circumstance set out above, few of the registrant names set out in the table in section 4 above correspond at all to any of the disputed domain names. Although the Respondent’s organization name as listed in the Registrar’s WhoIs database for three disputed domain names is “Gucciowner”, “Guccidubai” or “Gucci”, and although the company name identified on websites associated with four disputed domain names is “Gucci Co., Ltd” or “GucciPH., Ltd”, there is no other evidence that the registrants are actually known by these names. Accordingly, there is no direct evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.

As regards the third circumstance set out above, the disputed domain names either resolve or redirect to websites that offer goods for sale, or they are held passively. These uses are not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards registration, the disputed domain names were registered between October 2019 and November 2020, decades after the registration of the Complainant’s GUCCI trademark. 192 disputed domain names wholly incorporate the GUCCI trademark while 12 incorporate an obvious misspelling of that mark (“guci” or “guchi”). Most of the disputed domain names resolve or formerly resolved to websites that prominently display the GUCCI mark and advertising material from the Complainant’s own website, which gives the Panel reason to find that the Respondent knew of the GUCCI mark at the time of registration of these disputed domain names and also confirms that the misspelt versions of the mark were intended to confuse Internet users searching for the Complainant. Five other disputed domain names resolve or formerly redirected to websites for other luxury brands selling goods that compete directly with the Complainant’s products, which also indicates an awareness of the nature of the Complainant’s business. Although seven disputed domain names have only ever been passively held, they were all registered in the name of Dominique Lacroix no earlier than May 2020, by which time other disputed domain names registered in that same name were already resolving to websites displaying the GUCCI mark and advertising material from the Complainant’s own website. This gives the Panel reason to find that the Respondent knew of the GUCCI mark at the time of registration of the passively-held disputed domain names as well. The Respondent offers no explanation for the registration of these disputed domain names. Accordingly, the Panel finds that the Respondent knew of the Complainant’s GUCCI mark at the time of registration of all the disputed domain names and targeted them in bad faith.

As regards use, many of the disputed domain names names actively resolve to websites offering for sale what purport to be the Complainant’s GUCCI fashion products, particularly bags. This use is for commercial gain. The websites prominently display the Complainant’s GUCCI mark and advertising material from the Complainant’s own website, which gives the false impression that they are operated or endorsed by, or affiliated with, the Complainant. Several other disputed domain names actively resolve to websites offering for sale what purport to be products of the Complainant’s competitors. Given the Panel’s findings in section 6.2B above, the Panel considers that these actively-used disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s GUCCI trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of products on those websites within the terms of paragraph 4(b)(iv) of the Policy.

The Respondent currently makes only passive use of the other disputed domain names, including those that merely redirect to a landing page allowing the Respondent to finish setting up new web addresses. However, these circumstances do not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has acquired a strong reputation in the GUCCI mark in connection with its fashion products through longstanding and widespread use and promotion around the world. The passively-held disputed domain names wholly incorporate the GUCCI mark or an obvious misspelling of that mark and are composed according to the same patterns as the disputed domain names that the Respondent actively uses. Most of the passively-held disputed domain names were previously used in bad faith in connection with websites that gave the false impression that they were operated or endorsed by, or affiliated with, the Complainant and offering what purported to be the Complainant’s products, or redirected to websites offering for sale what purport to be products of the Complainant’s competitors. In the Panel’s view, the most likely intended uses of the passively-held disputed domain names are the same as those of the actively-held disputed domain names, which are in bad faith. The Respondent provides no explanation of any other potential use of the passively‑held disputed domain names. In all these circumstances, the Panel considers that the Respondent is also using the passively-held disputed domain names in bad faith.

Therefore, the Panel finds that all the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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, <fashiongucci.shop>, <gc-gucci.com>, <gucciae.shop>, <gucciae.store>, <guccibag.vip>, <guccibest.tokyo>, <guccibl.shop>, <gucciby.com>, <guccicc.shop>, <guccicd.shop>, <guccicheap.club>, <guccicl.shop>, <gucciclub.shop>, <gucciclub.tokyo>, <guccico.com>, <guccicompany.com>, <guccic.shop>, <guccidcd.shop>, <gucci-fashion.com>, <gucci-gc.com>, <guccigc.com>, <gucci-hk.club>, <guccihks.com>, <guccihome.shop>, <guccihp.shop>, <gucciibag.com>, <gucci-id.com>, <gucciid.com>, <gucci-idn.com>, <gucci-id.shop>, <gucci-id.vip>, <gucciie.com>, <gucciii.shop>, <gucciil.shop>, <gucciina.com>, <gucci-ind.shop>, <gucci-ins.shop>, <gucci-i.shop>, <guccii.store>, <gucci-japan.shop>, <gucci-jap.com>, <guccijap.shop>, <guccijaps.shop>, <guccijap.store>, <guccijpa.com>, <gucci-jpshop.com>, <guccijpy.store>, <guccikey.com>, <guccilee.shop>, <gucci-llc.com>, <guccillee.shop>, <guccilli.shop>, <guccill.shop>, <gucciltd.com>, <guccilvshop.com>, <gucci-ma.com>, <gucci-malaysia.shop>, <guccimalaysia.shop>, <guccimalaysia.store>, <guccimarts.com>, <guccimas.com>, <guccimas.shop>, <gucci-my.club>, <guccimyr.shop>, <gucci-my.shop>, <gucci‑my.store>, <gucci-my.vip>, <guccins.com>, <guccins.shop>, <gucci-o.com>, <gucciol.shop>, <gucciolv.com>, <gucci-online.shop>, <guccio.shop>, <gucci-o.store>, <gucciotoku.store>, <gucciouni.shop>, <guccioutlet-hk.com>, <gucci-outlet.shop>, <gucciowners.com>, <gucci-ph.club>, <gucciph.club>, <gucciph.com>, <gucciphi.com>, <gucci-philippines.shop>, <gucci-phil.shop>, <gucci‑phi.shop>, <gucciphi.shop>, <gucci-ph.shop>, <gucciph.shop>, <gucciph.store>, <guccipro.shop>, <guccisale.shop>, <guccisea.shop>, <gucci-sell.com>, <guccisell.store>, <gucci-sgp.com>, <guccisgp.com>, <guccisgp.online>, <guccisgp.shop>, <guccisgp.store>, <gucci-sg.shop>, <guccisgs.store>, <guccisg.store>, <guccishop-jp.com>, <guccishop-my.com>, <guccishopp.tokyo>, <guccishop.site>, <gucci-shop.store>, <gucci-shop-th.com>, <guccishop-th.com>, <gucci-shop.vip>, <gucci‑shore.shop>, <guccisite.shop>, <gucci-snk.com>, <guccispf.com>, <guccispf.vip>, <guccisp.store>, <guccis.shop>, <guccistores.biz>, <guccistores.tokyo>, <guccistore.tokyo>, <guccistore.vip>, <guccithai.com>, <guccithb.com>, <guccith.com>, <gucci-thl.com>, <gucci-th.shop>, <guccith.shop>, <guccith.vip>, <guccitk.com>, <guccitl.com>, <guccitokyoworld.shop>, <gucci-tw.club>, <gucci-twn.com>, <guccitw.sale>, <guccitw.shop>, <guccitw.store>, <gucci-tw.vip>, <guccitym.shop>, <gucciuae.shop>, <guccivip.online>, <gucci-vip.shop>, <gucci-vip.site>, <guccivvip.com>, <gucciway.tokyo>, <gucciwebs.com>, <gucciwlm.shop>, <guccix.shop>, <guccixy.shop>, <gucciym.shop>, <gucciz.shop>, <guchi.shop>, <gucibag.com>, <gucicod.com>, <gucidn.com>, <guciiiiiiiiii.club>, <guciiiiiiiiii.life>, <gucijp.shop>, <gucioe.shop>, <guciph.com>, <gucitop.com>, <guciwear.com>, <hk-gucci.store>, <hkgucci.store>, <idgucci.com>, <id-gucci.shop>, <iguccis.shop>, <indegucci.com>, <ingucci.tokyo>, <jp‑guccibags.com>, <jpguccistcok.com>, <jp-gucci.vip>, <knguci.com>, <livegucci.com>, <live-gucci.shop>, <malaygucci.site>, <malaysiatgucci.website>, <masgucci.shop>, <myguccisg.com>, <mygucci.shop>, <myguccishop.com>, <mysgucci.com>, <ofgucci.shop>, <ongucci.shop>, <phgucci.club>, <ph-gucci.com>, <phgucci.com>, <ph-gucci.shop>, <phgucci.shop>, <ph-gucci.vip>, <phigucci.com>, <phigucci.store>, <php-gucci.shop>, <rosgucci.website>, <sale-gucci.store>, <seagucci.shop>, <sgpgucci.com>, <sgpgucci.shop>, <taipei-gucci.com>, <tl-gucci.com>, <twngucci.com>, <uguccis.com>, and <zklgucci.shop> be transferred to the Complainant.

This transfer is ordered without prejudice to the rights of third parties in trademarks for CD, LEE, and LV with respect to the disputed domain names <guccicd.shop>, <guccidcd.shop>, <guccilee.shop>, <guccillee.shop>, <guccilvshop.com>, and <gucciolv.com>.

Matthew Kennedy
Sole Panelist
Date: April 30, 2021

¹ The Registrar initially identified this registrant in some cases in Unicode as “\u82f1\u8a18 \u77f3\u6751” as an encoded script of the Japanese name “英記 石村”. The Registrar confirmed that this name may be translated as “Eiki Stone village”.

² The Registrar identified this registrant in Unicode as “\u6d25\u5609\u5c71 \u5f18\u6a39” as an encoded script of the Japanese name “津嘉山 弘樹”, which the Panel has transliterated as “Tsukayama Hiroki”.

³ At the time of filing the Complaint, the public WhoIs records for the disputed domain names were either redacted or pointed to privacy services (namely, Contact Privacy Inc., Canada, and WhoisGuard Protected, WhoisGuard, Inc., Panama). For the purposes of this proceeding, the Panel considers the Registrar-identified registrants, listed above, as the appropriate Respondents in the present case.

⁴ See Chanel, Inc. v The Individual, Partnership Or Unincorporated Association d/b/a Chanel-C.Com, et al., Case number 0:21‑cv‑60225-WPD.

⁵ The website associated with <guccilee.shop>.

⁶ Websites associated with <gc-gucci.com>, <guccipro.shop> and <jp-guccibags.com>.

⁷The website associated with <phigucci.com>.

⁸ The website associated with <gucciii.shop>.

⁹ The website associated with <malaysiatgucci.website>.

¹⁰ The website associated with <guchi.shop>.

¹¹ Websites associated with <guccicompany.com>, <guccitokyoworld.shop>, <guccihome.shop>, <gucciltd.com> and <gucci-o.store>.

¹² Disputed domain names <gucci-o.com> and <gucioe.shop>.

¹³ The website associated with <seagucci.shop>.

¹⁴ Disputed domain names <live-gucci.shop>, <gucci-japan.shop>, <guccibl.shop>, <gucci-id.shop> and <zklgucci.shop>.

¹⁵ Disputed domain names <guccii.store>, <guccioutlet-hk.com>, <guccishopp.tokyo>, <guccistores.tokyo>, <guccitl.com>, <phgucci.com> and <ph-gucci.shop>.

¹⁶ The Panel finds partial confirmation for its finding in a prior decision under the Policy, to which the Complainant made reference, in which it was determined that Eiki Stone village (identified in that prior proceeding in Unicode and Japanese) was the same person as Manami Murakami, or under common control, or at the very least operated by persons that are connected and engaged in the same underlying enterprise. See Chanel, Inc. v. Manami Murakami, \u82f1\u8a18 \u77f3\u6751 [英記石村], supra.

¹⁷ These are <guchi.shop>, <gucibag.com>, <gucicod.com>, <gucidn.com>, <guciiiiiiiiii.club>, <guciiiiiiiiii.life>, <gucijp.shop>, <gucioe.shop>, <guciph.com>, <gucitop.com>, <guciwear.com> and <knguci.com>.