Guess? IP Holder L.P. and Guess?, Inc. v. Li feiyan
Claim Number: FA1308001513718
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Li feiyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapguessonsale.com>, registered with HiChina Zhicheng Technology Limited.
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 Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013. The Complaint was submitted in both English and Chinese.
On August 20, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <cheapguessonsale.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 August 27, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 16, 2013 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@cheapguessonsale.com. Also on August 27, 2013, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Guess? IP Holder L.P. and Guess?, Inc., uses the GUESS mark in connection with the sale of apparel and other clothing goods. Complainant has registered the GUESS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,433,022 registered on Mar. 17, 1987).
Respondent, Li feiyan, registered the <cheapguessonsale.com> domain name on January 21, 2013. Respondent uses the <cheapguessonsale.com> domain name to promote competing goods to Internet users. Some of these goods appear to be counterfeited GUESS goods. Respondent prominently displays the GUESS mark.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the GUESS mark under Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 1,433,022 registered on Mar. 17, 1987). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <cheapguessonsale.com> domain name merely adds the generic term “cheap,” the phrase “on sale” and the gTLD to the GUESS mark. The Panel finds that the <cheapguessonsale.com> domain name is confusingly similar to the GUESS mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004)(generic terms and phrases do not distinguish a domain name from the mark of another so as to avoid a finding of confusing similarity).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Respondent is not commonly known by the <cheapguessonsale.com> domain name under Policy ¶ 4(c)(ii). Respondent appears to be known in the domain name’s WHOIS information as “Li feiyan.” Complainant has not licensed or authorized Respondent to use the GUESS mark in the <cheapguessonsale.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)(the panel concluded that the respondent was not commonly known by the disputed domain name when the only available evidence in the record, the WHOIS information, failed to connect the respondent to the domain name).
Respondent uses the <cheapguessonsale.com> domain name to promote competing goods to Internet users. Some of these goods appear to be counterfeited GUESS goods. Respondent prominently displays the GUESS mark throughout the domain name’s websites. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007)(use of the domain name to sell of competing and counterfeit merchandise is not a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the <cheapguessonsale.com> domain name to promote counterfeited GUESS apparel along with competing merchandise is not a Policy ¶ 4(c)(i) bona fide offering of goods, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent is disrupting Complainant’s commercial endeavors by using the <cheapguessonsale.com> domain name to sell competing goods and counterfeits of Complainant’s goods through misappropriation of Complainant’s mark. Respondent’s actions constitutes Policy ¶ 4(b)(iii) bad faith. See, e.g., Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Respondent creates the likelihood that Internet users will confuse the counterfeited GUESS goods, and other competing products, with Complainant and its legitimate GUESS goods. Respondent’s use of Complainant’s GUESS mark in the advertising of Respondent’s goods constitutes passing off and Policy ¶ 4(b)(iv) bad faith. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002)(use of the complainant’s mark in an attempt to pass off the respondent’s competing goods to the general consuming public as being those goods sold by the complainant constitutes Policy ¶ 4(b)(iv) bad faith).
Respondent had actual knowledge of Complainant’s rights in the GUESS mark in registering the domain name; therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapguessonsale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 4, 2013
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