Guess? IP Holder L.P. and Guess?, Inc. v. mei zhen zhang
Claim Number: FA2206002000823
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 mei zhen zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-club.com>, registered with Gname.com Pte. Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2022; the Forum received payment on June 17, 2022.
On June 30, 2022, Gname.com Pte. Ltd. confirmed by e-mail to the Forum that the <guess-club.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 July 5, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 25, 2022 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-club.com. Also on July 5, 2022, the Chinese and English language 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 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.”
The two Complainants in this matter are Guess? IP Holder L.P. and Guess?, Inc. Complainant Guess? IP Holder L.P. is a Delaware limited partnership that is wholly owned by Complainant Guess?, Inc. See Declaration of Anne Deedwania (“Deedwania Decl.”) at ¶ 2-5, attached at Compl. Ex. 7.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. The proceeding may therefore go forward on that basis and the Complainants will be collectively referred to as “Complainant.”
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Chinese language, thereby making the language of the proceedings Chinese.
However, Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine that another language is more appropriate than the language of the Registration Agreement, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
In the present case, Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Additionally, Respondent’s WHOIS information places Respondent in a country whose identity may suggest familiarity with the English language. Furthermore, the registration agreement is available in both English and Chinese and Complainant provides a copy of the English version in Exhibit 4. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the probability that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel therefore decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a clothing and apparel company. Complainant has rights in the GUESS mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered on March 17, 1987). See Compl. Ex. 3. Respondent’s <guess-club.com> domain name is identical or confusingly similar to Complainant’s GUESS mark as it incorporates the mark in its entirety while adding the generic term “club”, a hyphen, and the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <guess-club.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GUESS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead directs users to its adult-oriented website.
Respondent registered and uses the <guess-club.com> domain name in bad faith. Respondent disrupts Complainant’s business while attracting users for commercial gain and creating confusion among consumers. Additionally, Respondent uses the disputed domain name to display adult-oriented content. Next, Respondent creates initial interest confusion and engages in opportunistic bad faith. Additionally, Respondent used a privacy service to hide its identity. Finally, Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the GUESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the clothing and apparel industries.
2. Complainant has established its rights in the GUESS mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered on March 17, 1987).
3. Respondent registered the <guess-club.com> domain name on April 3, 2022.
4. Respondent has caused the disputed domain name to direct internet users to its adult-oriented website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GUESS mark through its registration with multiple trademark agencies, including the USPTO (e.g., Reg. No. 1,433,022, registered on March 17, 1987). See Compl. Ex. 3. Registration with multiple trademark agencies including the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GUESS mark. Complainant contends that Respondent’s <guess-club.com> domain name is identical or confusingly similar to Complainant’s GUESS mark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it adds a generic term, a hyphen, and the “.com” gTLD. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The disputed domain name incorporates the mark in its entirety while adding a hyphen, the generic term “club”, and the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s GUESS mark and to use it in its domain name adding a hyphen and the generic word “club” to the mark;
(b) Respondent registered the disputed domain name on April 3, 2022;
(c) Respondent has caused the disputed domain name to direct internet users to its adult-oriented website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <guess-club.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information identifies Respondent as “Mei Zhen Zhang”. See Registrar Verification Email. Thus, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent is not using the <guess-club.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use by diverting internet to its website containing adult-oriented material. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert users to a website containing adult-oriented material does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dipaolo v. Genero, FA 203168 (Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which displays adult-oriented material. See Compl. Ex. 6. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <guess-club.com> domain name in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to host adult-oriented material is a disruption of a complainant’s business and thus evidence of bad faith registration and use. See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site). The Panel recalls that Respondent’s resolving website hosts adult-oriented material. See Compl. Ex. 6. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent registered and uses the <guess-club.com> domain name in bad faith by attracting users for commercial gain by creating confusion as to the affiliation with Complainant. Under Policy ¶ 4(b)(iv), using a disputed domain name to divert users for a respondent’s commercial gain while creating a likelihood of confusion is evidence of bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). The Panel recalls that Complainant’s GUESS mark is incorporated into the disputed domain name, and the resolving website displays adult-oriented content. See Compl. Ex. 6. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered and uses the <guess-club.com> domain name in bad faith by displaying adult-oriented material. Under Policy ¶ 4(a)(iii), using a disputed domain name to host adult-oriented material is evidence of bad faith registration and use. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel again recalls that the resolving website displays adult-oriented material. See Compl. Ex. 6. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant maintains that Respondent registered and uses the <guess-club.com> domain name in bad faith by causing initial interest confusion and engaging in opportunistic bad faith. Under Policy ¶ 4(a)(iii), initial interest confusion and opportunistic bad faith may be demonstrated where a disputed domain name is obviously connected to a well-known mark and is thus evidence of bad faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). The Panel again recalls that Complainant’s well-known GUESS mark is incorporated into the disputed domain name. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent’s bad faith is further demonstrated by its use of a privacy service to hide its identity. Under Policy ¶ 4(a)(iii), use of a privacy service to mask one’s identity may contribute to a finding of bad faith registration and use. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that Respondent’s identity was initially hidden by a WHOIS privacy service. See WHOIS information. Therefore, as the Panel agrees, it finds Respondent’s use of a privacy service contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
Sixthly, Complainant contends that Respondent registered the <guess-club.com> domain name with constructive knowledge of Complainant’s rights in the GUESS mark. While past panels have previously found that constructive notice is not sufficient for a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge may be found based on the fame and notoriety of a mark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Although Complainant does not argue Respondent had actual knowledge of Complainant’s rights in the mark, Complainant provides evidence of the longstanding use of the GUESS mark. See Compl. Exs. 7 and 8. As the Panel agrees that actual knowledge was present in this instance, it finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
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-club.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated July 29, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page