Guess? IP Holder L.P. and Guess?, Inc. v. Wauddell Robinson Jr
Claim Number: FA1405001561206
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 Wauddell Robinson Jr (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 27, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@shop-guess.com, postmaster@guess-eshop.com, and postmaster@guess-discount.com. Also on May 27, 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 June 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
a) Complainant uses the GUESS mark in connection with lines of men’s and women’s apparel and related goods. Complainant owns registrations for the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022 registered March 17, 1987).
b) Respondent’s <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names are all confusingly similar to Complainant’s GUESS mark. The disputed domain names each incorporate Complainant’s mark in its entirety while adding hyphens and descriptive terms including “shop,” “eshop,” and “discount,” as well as the generic top-level domain (“gTLD”) “.com.”
c) Respondent does not have any rights or legitimate interests in the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its GUESS mark in any way. The WHOIS record for the disputed domain names list “Wauddell Robinson Jr.” as the domain name registrant.
b. The <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names do not resolve to an active website, which demonstrates that the domain names are not being actively used in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See Complainant’s Exhibit E.
d) Respondent registered and is using the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names in bad faith.
a. Respondent’s failure to make an active use of the confusingly similar domain names is indicative of bad faith. See Complainant’s Exhibit E.
b. Respondent had knowledge of Complainant’s GUESS mark prior to registering the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names because Complainant has held trademark registrations for the mark long before Respondent registered the disputed domain names. Additionally, Respondent owns two other infringing domain names, <guess-soldes.fr> and <eshop-guess.us>, from which Respondent sell counterfeit versions of Complainant’s goods. See Complainant’s Exhibit F.
B. Respondent
a) Respondent did not submit a response in this proceeding.
b) The Panel notes that Respondent registered the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names on July 18, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
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 contends that it uses the GUESS mark in connection with lines of men’s and women’s apparel and related goods. Complainant states it owns registrations for the GUESS mark with the USPTO (e.g., Reg. No. 1,433,022 registered March 17, 1987). Therefore, the Panel finds that Complainant has rights in the GUESS mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant claims Respondent’s <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names are all confusingly similar to Complainant’s GUESS mark. Complainant observes that the disputed domain names each incorporate Complainant’s mark in its entirety while adding hyphens and descriptive terms including “shop,” “eshop,” and “discount,” as well as the gTLD “.com.” First, the Panel finds that the addition of a descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Next, the Panel finds the neither the addition of a hyphen nor a gTLD is relevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names are all confusingly similar to Complainant’s GUESS mark pursuant to Policy ¶ 4(a)(i).
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 <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names. Complainant states that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its GUESS mark in any way. Complainant notes that the WHOIS record for the disputed domain names list “Wauddell Robinson Jr.” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole 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 the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names do not resolve to an active website, which demonstrates that the domain names are not being actively used in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See Complainant’s Exhibit E. The Panel notes the each of the disputed domain names resolves to a website containing only a message stating “Notice: This domain has been redirected. If you are the registrant of this domain, please contact invalidwhois@godaddy.com.” Id. Past panels have found that a failure to make an active use of a disputed domain name fails to demonstrate any bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent has not demonstrated it is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names do not resolve to an active website.
The Panel may look outside the illustrations of bad faith listed in Policy ¶ 4(b) in determining bad faith in the instant proceeding. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Those illustrations are not meant to be an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel finds still bad faith under Policy ¶ 4(a)(iii) as the Panel determines that Complainant’s contentions have merit.
Complainant contends that Respondent registered and is using the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names in bad faith. Complainant argues that Respondent’s failure to make an active use of the confusingly similar domain names is indicative of bad faith. See Complainant’s Exhibit E. The Panel notes the each of the disputed domain names resolves to a website containing only a message stating “Notice: This domain has been redirected. If you are the registrant of this domain, please contact invalidwhois@godaddy.com.” Id. Past panels have agreed with Complainant’s argument, finding that a respondent who has failed to make an active use of a disputed domain name has violated Policy ¶ 4(a)(iii) regarding bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Therefore, the Panel finds that Respondent registered and is using the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain names.
Complainant asserts that Respondent had knowledge of Complainant’s GUESS mark prior to registering the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names because Complainant has held trademark registrations for the mark long before Respondent registered the disputed domain names. Additionally, Complainant states that Respondent owns two other infringing domain names, <guess-soldes.fr> and <eshop-guess.us>, from which Respondent sell counterfeit versions of Complainant’s goods. See Complainant’s Exhibit F. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name due to the well-known status of the Complainant’s mark, the Panel infers that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shop-guess.com>, <guess-eshop.com>, and <guess-discount.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq. Panelist
Dated: July 7, 2014
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