Guess? IP Holder L.P. and Guess?, Inc. v. MMX Registry / MMX
Claim Number: FA2106001951179
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is MMX Registry / MMX (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess.miami>, (‘the Domain Name’) registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2021; the Forum received payment on June 15, 2021.
On June 16, 2021, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <guess.miami> domain name is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the names. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@guess.miami. Also on June 17, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Guess? IP Holder LP is wholly owned by Guess? Inc. and both own the trade mark registrations including the GUESS mark. The panel holds that both companies have the sufficient nexus to both bring this Complaint.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing. It owns <guess.com>. Guess ? IP Holder LP is effectively wholly owned by Guess ? Inc. and so both own the GUESS trade mark registrations.
The Domain Name registered in 2021 is identical to the Complainant’s mark for the purposes of the Policy adding only the gTLD “.miami”.
The Respondent does not have any rights or legitimate interests in the Domain Name. The Domain Name has been offered for sale generally at the web site attached to the Domain Name. This is not a bona fide offering of services or goods or a legitimate noncommercial or fair use.
The Respondent is not commonly known by the Domain Name and has never been given permission by the Complainant to use the Complainant’s trade mark for any purpose.
The Domain Name has been registered and used in bad faith. Offering it for sale demonstrates the Complainant’s primary intention behind registering the Domain Name is selling it for financial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the world famous GUESS brand which it has used for 30 years since 1981 in relation to apparel and which is registered, inter alia, in the USA for clothing. It owns <guess.com>. Guess ? IP Holder LP is effectively wholly owned by Guess ? Inc. and both own the GUESS trade mark registrations.
The Domain Name registered in 2021 has been offered for sale generally at the site attached to it.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's GUESS mark (which is registered, inter alia, in USA for clothing with first use recorded as 1984) and the gTLD “.miami”.
A gTLD does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent has not answered this Complaint to explain the background to the registration of the Domain Name and is not authorized by the Complainant. The Respondent does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name containing the Complainant’s mark has been offered for sale which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this complaint and has not explained why it should be entitled to register a domain name consisting of the Complainant’s mark which is well known for clothing and a gTLD. The Domain Name consisting as it does of the Complainant’s mark and a place is strongly suggestive that it is an entity based in Miami and the panellist believes that it is more likely than not that it will be interpreted as the Complainant’s domain name relating to Miami, USA without more.
The Domain Name containing the Complainant’s GUESS mark has been offered for sale generally. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”)
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for the purposes of sale for profit and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guess.miami> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 14, 2021
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