ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Guccio Gucci S.p.A. v. 杨涛 杨涛 (Tao Yang) Case No. D2025-2747 1. The Parties The Complainant is Guccio Gucci S.p.A., Italy, represented by Studio Barbero S.p.A., Italy. The Respondent is 杨涛 杨涛 (Tao Yang), China. 2. The Domain Name and Registrar The disputed domain name is registered with West263 International Limited (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2025. On July 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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. On July 15, 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 July 15, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s language submission. The Center verified that 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 in Chinese and English of the Complaint, and the proceedings commenced on July 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2025. The Respondent sent an email communication to the Center on August 3, 2025. The Center informed the Parties that it will proceed to panel appointment on August 17, 2025.
page 2 The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on August 21, 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 luxury fashion house founded in 1921 by Guccio Gucci, which is part of the international conglomerate company Kering (previously, Pinault-Printemps-Redoute, PPR). This is one of the leading groups in manufacturing and commercializing apparel and accessories, notably active on a nearly worldwide scale which particularly includes the Respondent’s jurisdiction China. The Complainant was ranked 31st in the 2020 World’s Most Valuable Brands list of Forbes, with a brand value of USD 22.6 billion. The Complainant has a global portfolio of trademark registrations that contain the mark GUCCI, including the following: - International Trademark registration No. 429833 for GUCCI in Classes 3, 14, 18, and 25, designating a number of jurisdictions, registered on March 30, 1977; - International Trademark registration No. 457952 for GUCCI in Classes 1 to 42, designating a number of jurisdictions including China, registered on December 16, 1980; - Chinese Trademark registration No. 177032 for GUCCI in Class 18, registered on May 15, 1983; and - Chinese Trademark registration No. 1046977 for GUCCI in Class 25, registered on July 7, 1997. The Complainant is the owner of numerous domain names identical to or similar to the trademark GUCCI, including , registered on June 5, 1996 and , registered on March 22, 2006. The disputed domain name was registered on October 6, 2022. The evidence provided by the Complainant indicates that prior to the filing of the Complaint, the disputed domain name had previously resolved to an inactive page. It then resolved to a page displaying the text “Coming soon! 网站维护中 (which means the website is under construction). 合作咨询 (which means for collaboration inquiries)”, followed by an email address. At the time of this Decision, the disputed domain name continued to resolve to an inactive page, now displaying the text: “抱歉！该站点已经被管理员停止运行，请联系管理员了解详情！”, meaning “Sorry! This site has been shut down by the administrator. Please contact the administrator for details.” The record shows that the Parties apparently engaged in correspondence well before the filing of this proceeding. Following the initial registration of disputed domain name by the Respondent in 2019, the Complainant’s representative issued cease-and-desist letters, to which the Respondent replied, asserting plans for a future project but refusing to transfer the disputed domain name. The disputed domain name was then in public domain for some time. After the disputed domain name was re-registered by the Respondent in 2022, further exchanges between the Parties took place in which the Respondent again claimed to be preparing a project and reiterated that he was open to discussing possible cooperation with the Complainant. In March 2023, the Respondent’s purported legal advisor expressly requested USD 15,000 as reimbursement for alleged expenses or, alternatively, offered to lease the disputed domain name, thereby conditioning transfer or use of the disputed domain name on monetary compensation. 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.
page 3 Notably, the Complainant contends that the disputed domain name is identical to its trademarks for GUCCI. Further, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that, consistent with established UDRP practice, it need only establish a prima facie case, after which the burden of production shifts to the Respondent. The Complainant argues that the Respondent is not a licensee, agent, or otherwise authorized to use the Complainant’s GUCCI mark, nor is there evidence that the Respondent is commonly known by the disputed domain name or holds any relevant trademark rights. The Complainant argues that the GUCCI mark is a distinctive, globally famous brand name with no dictionary meaning. The Complainant states that the record shows no evidence of a bona fide offering of goods or services, no demonstrable preparations for use, and only passive holding of the disputed domain name, which does not constitute legitimate noncommercial or fair use. The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. Given the Complainant’s long-standing reputation of the GUCCI brand, the Complainant argues that it is inconceivable that the Respondent was unaware of the Complainant’s rights, particularly as he re-registered the disputed domain name in 2022 after having received a cease-and-desist letter in 2019. The Complainant argues that passive holding of a domain name identical to a well-known trademark constitutes bad faith use under UDRP jurisprudence, as it risks implied affiliation. Moreover, the Complainant argues that the Respondent sought USD 15,000 (well above any out-of-pocket registration costs) to transfer the disputed domain name or alternatively proposed leasing it, conduct squarely falling under paragraph 4(b)(i) of the Policy. Accordingly, the Complainant concludes that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent replied to the Complainant’s contentions via his email in Chinese of August 3, 2025, in which it argued essentially the following: the disputed domain name was lawfully registered through open public channels, first in 2018 and again in 2022 after an earlier lapse, with the stated intention of using it for a personal project rather than for sale. The Respondent contended that he had received many offers for purchasing the disputed domain name, but he had rejected all of them, and he had the intention to apply for a trademark with the Chinese Trademark Office. The Respondent further stated that he had no prior knowledge of the Complainant or its business, noting that mainstream shopping sites in China are different and that “gucci” could have varied meanings in different countries. The Respondent also asserted that the Complainant failed to protect the disputed domain name despite multiple opportunities were available for the Complainant to register the disputed domain name and therefore the disputed domain name was available to the public for registration, and anyone successfully registering the disputed domain name would be the legitimate owner. The Respondent further maintained that he had no bad faith intention, and denied any intention to infringe, emphasizing that the Complainant’s accusations of infringement amount to harassment. Finally, the Respondent reiterated that ownership of the disputed domain name is legitimate, untainted by bad faith registration or use, and requested that the Complaint be dismissed. 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 specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including essentially the fact that the Respondent originally registered the disputed domain name, on July 21, 2019, via the registrar GoDaddy.com, LLC, that the Respondent replied to the Complainant in English in at least one communication during the Parties’ communications prior to the filing of the Complaint, that the disputed domain name is registered in Latin characters, and that the
page 4 Respondent secured the disputed domain name in the Top-Level Domain “.app” (abbreviation for the English term “application”), which allegedly reveals the Respondent’s intention to target an international audience, including English speaking users. The Complainant also argued that requiring translation into Chinese would cause undue delay and expense. While the Respondent sent an email communication in response to the Complaint in Chinese, the Respondent did not make any specific request regarding 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. Nevertheless, the Panel accepts and has reviewed the communication and evidence filed by the Respondent in Chinese and does not require a translation thereof. 6.2 Substantive Issues 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 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 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. 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. In reply, the Respondent essentially states that the disputed domain name was validly registered by them through open public channels and designated for use in a future planned project, and that the term “gucci” may carry different meanings beyond association with the Complainant.
page 5 The Panel does not accept the Respondent’s arguments as to rights or legitimate interests. First, the mere registration of a domain name through a registrar does not of itself confer rights or legitimate interests under the Policy, absent demonstrable preparations to use the domain name for a bona fide offering of goods or services (see Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). The Panel finds that the Respondent’s asserted “project” is unsupported by credible evidence and most likely would not be capable of establishing rights or legitimate interests since the chosen disputed domain name is identical to a well-known mark, namely GUCCI (see earlier decisions in UDRP proceedings regarding the recognized fame of this mark, such as Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170). Second, the contention that the Complainant failed to register the disputed domain name is irrelevant: the Policy does not impose on trademark owners an obligation to register every possible domain name incorporating their marks across all available Top-Level Domains (see W.K. Kellogg Foundation v. Md Arif Hossain, eMedia Germany e.K., WIPO Case No. D2024-3431: “There is no obligation on a trademark owner to register domain names corresponding to the trademark owner’s trademark.”). Third, the Panel finds that the Respondent’s suggestion that GUCCI may have varied meanings across jurisdictions is not persuasive because the Complainant’s mark GUCCI is globally famous and distinctive and is also successfully registered and intensively used in the Respondent’s jurisdiction China, and even if Gucci may have any meaning other than the Complainant’s mark and may have used by another party, there is no evidence on record showing that Respondent has any rights or legitimate interests in the term Gucci. Further, the Panel notes that the Respondent is not a licensee, agent, or otherwise authorized to use the Complainant’s GUCCI mark, nor is there evidence that the Respondent is commonly known by the disputed domain name or holds any relevant trademark rights. The Respondent’s name is 杨涛 杨涛 (Tao Yang) which has no connection with Gucci. As to the fact that the disputed domain name currently directs to an inactive or blank webpage, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent in this case (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685). Finally, the Panel also finds that the nature of the disputed domain name, being identical to the Complainant’s world-famous trademarks and consisting only of the Complainant’s trademark, carries a high risk of implied affiliation and cannot constitute fair use, as it effectively suggests sponsorship or endorsement by the Complainant (see 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 Respondent has registered a domain name which is identical to the Complainant’s intensely used and famous trademarks for GUCCI, which the Panel notes are also registered and used intensely in the Respondent’s jurisdiction China. The Panel also notes that the Complainant’s trademarks in this case predate the registration date of the disputed domain name by many years. Therefore, although the Respondent claims to have no knowledge of the Complainant and its GUCCI mark when initially registering the disputed domain name in July 2019, the Panel finds it incredible. In any event, after the Respondent’s initial registration of the disputed domain name in July 2019, the Complainant sent a cease-and-desist letter asserting its rights in GUCCI in December 2019, which would have made it clear to the Respondent that the Complainant owns prior rights in its trademarks. After the disputed domain name expired, the Respondent registered the same disputed domain name again in 2022 without any explanation why he would choose “Gucci” in the disputed domain name. In the Panel’s view, it is most likely that the Respondent targeted the Complainant when he registered the disputed domain name, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
page 6 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. The disputed domain name does not resolve to any active website. The Respondent claims that the disputed domain name was chosen for his personal project. However, no evidence has been provided regarding the claimed project. 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. Having reviewed the available record, the Panel notes the distinctiveness and nearly worldwide fame of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Deanna Wong Wai Man/ Deanna Wong Wai Man Sole Panelist Date: September 1, 2025
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