Guess? IP Holder L.P. and Guess?, Inc. v. lee sugar
Claim Number: FA1405001557429
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 lee sugar (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-shop.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2014; the National Arbitration Forum received payment on May 2, 2014.
On May 5, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <guess-shop.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 May 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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-shop.com. Also on May 6, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The two Complainants in this matter are Guess IP Holder L.P. and Guess?, a clothing and fashion goods manufacturer. These two companies collectively own the GUESS trademark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed a 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 (Nat. Arb. 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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complaints, and will treat them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Allegations
Complainant uses the GUESS mark to promote its clothing and fashion goods. Complainant has registered this mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,433,022 registered Mar. 17, 1987). The domain name is confusingly similar to the GUESS mark as the generic term “shop,” the hyphen, and the generic top-level domain ("gTLD") “.com” are not significant additions.
Respondent has no rights or legitimate interests in this domain name. Respondent is not commonly known as the <guess-shop.com> domain name and Complainant has taken no course of action that might expressly or implicitly create the perception that Complainant approves of Respondent’s conduct. Respondent’s use of the <guess-shop.com> domain name is neither bona fide in the commercial sense, nor is it some legitimate noncommercial or fair use. The domain name resolves to an online store promoting counterfeit goods bearing the GUESS mark.
Respondent’s registration and use of this domain name is in bad faith. First, Respondent’s counterfeit goods disrupt the sale of legitimate GUESS merchandise. Second, Respondent’s use of the GUESS mark in the disputed domain name and its website for purposes of promoting counterfeits is evidence of an intent to confuse Internet users as to Complainant’s affiliation with this counterfeit goods store. Finally, Respondent registered the domain name despite having actual knowledge of Complainant’s rights in GUESS.
Respondent’s Allegations
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the GUESS mark to promote its clothing and fashion goods. Complainant has registered this mark with the USPTO (Reg. No. 1,433,022 registered Mar. 17, 1987). The Panel agrees this registration shows Complainant’s rights under Policy ¶ 4(a)(i). 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.”).
Complainant further claims the domain name is confusingly similar to the GUESS mark as the generic term “shop,” the hyphen, and the gTLD “.com” are not relevant additions. The Panel agrees that hyphens and gTLDs are not considered under a Policy ¶ 4(a)(i) analysis for confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds the addition of “shop” to be insufficient to distinguish the domain name, as this is a generic term. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel finds that the <guess-shop.com> domain name is confusingly similar to the GUESS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent does not have any rights or legitimate interests in the <guess-shop.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its GUESS mark. The Panel notes that the WHOIS record for the disputed domain name lists “Lee Sugar” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and all the evidence in the record in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the GUESS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <guess-shop.com> domain name under Policy ¶ 4(c)(ii).
Complainant further claims Respondent’s use of the <guess-shop.com> domain name is neither bona fide in the commercial sense, nor is it some legitimate noncommercial or fair use. Complainant notes the domain name resolves to an online store promoting counterfeit goods bearing the GUESS mark. The Panel finds that the sale of counterfeit goods is not a use protectable under Policy ¶¶ 4(c)(i), and (iii). See Keihin Corp. v. Youli Ltd., FA 11060190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant has proven this element.
Complainant claims Respondent’s counterfeit goods disrupt the sale of legitimate GUESS merchandise. The Panel notes Respondent is using the domain name to promote goods bearing the GUESS mark. The Panel agrees these goods are indeed counterfeits, the Panel finds the sale of counterfeit goods to constitute a Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business. See 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).
Complainant further claims Respondent’s use of the GUESS mark in the disputed domain name and its website for purposes of promoting counterfeits is evidence of an intent to confuse Internet users as to Complainant’s affiliation with this counterfeit goods store. The Panel notes the domain name is used to host allegedly counterfeit goods. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel found the sale of counterfeit goods as evidence of an intent to profit from the likelihood of consumer confusion. The Panel finds Respondent’s use of the domain name to sell counterfeit GUESS goods is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to confuse Internet users into associating Respondent’s illegitimate merchandise with the GUESS mark.
Complainant claims Respondent registered the domain name despite having actual knowledge of Complainant’s rights in GUESS. Complainant bases this assertion on the fact that the domain name is being used solely to promote goods falsely bearing Complainant’s GUESS mark. The Panel finds Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii) as it knowingly infringed on the GUESS mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant has proven this element.
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 <guess-shop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 4, 2014
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