Guess? IP Holder L.P. and Guess?, Inc. v. LingYing Shen
Claim Number: FA1510001643076
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is LingYing Shen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <france-guess.net>, registered with Zhengzhou Zitian Network Technology Co., 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2015; the Forum received payment on October 19, 2015. The Complaint was submitted in both English and Chinese.
On October 20, 2015, Zhengzhou Zitian Network Technology Co., Ltd. confirmed by e-mail to the Forum that the <france-guess.net> domain name is registered with Zhengzhou Zitian Network Technology Co., Ltd. and that Respondent is the current registrant of the name. Zhengzhou Zitian Network Technology Co., Ltd. has verified that Respondent is bound by the Zhengzhou Zitian Network Technology Co., 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 October 27, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 16, 2015 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@france-guess.net. Also on October 27, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable 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.
A. Complainant
Complainant made the following contentions.
Complainant uses the GUESS mark while carrying out its business as a worldwide clothing retailer. Complainant’s rights in the GUESS marks stem from registration of the mark with trademark agencies throughout the world including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered March 27, 1984). Respondent’s disputed domain<france-guess.net> is confusingly similar to Complainant’s GUESS mark as the only differences between the mark and the domain is the addition of the geographic term “France,” a hyphen, and the generic top-level domain (“gTLD”) “.net.” Even with these additions the domain remains confusingly similar to the GUESS marks.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as evidenced by WHOIS information identifying Respondent as “LingYing Shen.” Further, Respondent’s use of the disputed domain name, to sell counterfeits of Complainant’s products as well as competing goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s unauthorized sale of Complainant’s goods and counterfeits of Complainant’s goods demonstrates that Respondent is competing and disrupting Complainant’s business. Respondent has also confused and attracted internet users for commercial gain through using Complainant’s marks to sell illegitimate goods. Finally, Respondent’s use of Complainant’s marks and sale of Complainant’s goods shows that Respondent had knowledge of Complainant’s marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELMINIARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants, Guess? IP Holder L.P. and Guess?, Inc. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration 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.”
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 (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.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. 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 (Nat. Arb. 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 (Nat. Arb. 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. Accordingly, the two Complainants will be collectively referred to as “Complainant” in this decision.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. 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, concludes that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company that is a prominent worldwide manufacturer and retailer of men’s and women’s clothing.
2. Complainant has registered the GUESS mark with trademark agencies throughout the world including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,271,896, registered March 27, 1984).
3. Respondent registered the disputed domain name on August 5, 2015.
4. Respondent has used the domain name to sell counterfeits of Complainant’s products as well as competing goods.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends that it has rights in the GUESS marks based on registration of the marks with multiple trademark agencies including the USPTO (e.g., Reg. No. 1,271,896, registered March 27, 1984). Panels have consistently found that a complainant has rights in a mark based on its registration of the mark with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). The Panel thus concludes that Complainant has rights in the GUESS marks 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 submits that Respondent’s disputed <france-guess.net> domain name is confusingly similar to the GUESS marks in which Complainant has rights. The differences between the disputed domain and the GUESS marks are the presence of the geographic term “france,” a hyphen, and the gTLD “.net” in the domain name. Panels have found that the presence of a geographic term does not negate confusing similarity between the domain name and the trademark in question. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Additionally, hyphens and gTLDs have been found not to be relevant when conducting a Policy ¶ 4(a)(i) analysis. 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). Pursuant to Policy ¶ 4(a)(i) the Panel therefore finds that Respondent’s <france-guess.net> domain name is confusingly similar to the GUESS marks.
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), 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GUESS
trademark and to use it in its domain name, adding only the geographic word “France”;
(b) Respondent registered the disputed domain name on August 5, 2015;
(c) Respondent has used the domain name to sell counterfeits of Complainant’s products as well as competing goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the domain name identifies Respondent as “LingYing Shen,” which does not resemble the disputed domain name. See Compl., at Attached Ex. A. Panels have found that a respondent is not commonly known by a domain name where there is a lack of information in the record, including WHOIS information, indicating the opposite. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent’s use of the disputed domain name, to sell counterfeits of Complainant’s products as well as competing goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <france-guess.net> domain resolves to a website that sells Complainant’s products and counterfeits of Complainant’s products. Products sold on the domain include purses, watches, and clutches. See Compl., at Attached Ex. E. Panels have held that using a domain name containing a complainant’s mark to sell counterfeit products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Respondent’s use of the disputed domain name is therefore considered by the Panel not to constitute 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).
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 has no rights or legitimate interests 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’s use of the disputed domain name demonstrates bad faith through competing and disrupting Complainant’s legitimate business. As has been shown, Respondent uses the domain name to resolve to a website that uses the stylized GUESS mark and sells counterfeits of Complainant’s goods. See Compl., at Attached Ex. E. Prior panels have found a respondent to have acted in bad faith where a respondent used a complainant’s mark to sell competing or counterfeit goods. 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). The Panel therefore finds that Respondent has acted in bad faith under Policy 4(b)(iii).
Secondly, Complainant also submits that Respondent has demonstrated bad faith through confusing and attracting internet users for commercial gain. Respondent has used Complainant’s GUESS mark in the domain name at issue, which resolves to a website that resembles Complainant’s website, to sell counterfeit products. See Compl., at Attached Ex. E & F. Panels have determined that a respondent acted in bad faith based on a respondent’s appropriation of a complainant’s mark for commercial profit. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent’s bad faith is evident from its attempt to use the GUESS mark to attract internet users and commercially profit.
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant's rights in the GUESS marks. Complainant argues that Respondent's offering of Complainant's own products and use of the stylized GUESS mark indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GUESS mark and in view of its use of the domain name since registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <france-guess.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 27, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page