Guess? IP Holder L.P. and Guess?, Inc. v. zhou honghai / zhouhonghai
Claim Number: FA1510001643077
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 zhou honghai / zhouhonghai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-2016.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2015; the Forum received payment on October 19, 2015.
On October 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guess-2016.com> domain nam 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 October 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@guess-2016.com. Also on October 21, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it has registered the GUESS mark with the United States Patent and Trademark Office in 1987; it was subsequently registered in many other countries, including China. The mark is used on or in connection with the sale of men’s and women’s apparel and related goods. The mark and Complainant’s produces are famous around the world. The disputed domain name is confusingly similar to the GUESS trademark because the domain name contains the entire mark and makes only minor alterations, such as adding a hyphen, the term “2016,” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name is being used to sell counterfeit goods. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii) by using the domain name to sell counterfeit goods that compete with Complainant. Respondent is also attempting to commercially profit from a likelihood of confusion, which consists of bad faith under Policy ¶ 4(b)(iv). Furthermore, Respondent had actual knowledge of Complainant’s trademark rights at the time the disputed domain name was registered, which is evidence of bad faith registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GUESS and uses it to market a range of men’s and women’s apparel and related goods. The mark and Complainant’s produces are famous around the world.
Complainant’s registration of its mark dates back to 1987.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that offers counterfeit versions of Complainant’s products.
The web site at the disputed domain name displays Complainant’s 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.”).
Prior to dealing with the elements of the Policy, the Panel must deal with a procedural issue.
Preliminary Issue: Multiple Complainants
In the instant proceedings, the Complaint is filed by the entities Guess? IP Holder L.P. and Guess?, Inc. These are affiliated companies which, between them, own multiple trademarks bearing the GUESS mark.
Pursuant to National Arbitration Forum’s Supplemental Rule 1(e), a Complaint may be submitted by “multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Such is the case here. Therefore, pursuant to 10(a) of the Rules, the Panel finds that the Complaint is properly submitted and that the entities filing the Complaint have standing.
Complainant has registered the GUESS mark in 1987. The mark is used on or in connection with the sale of men’s and women’s apparel and related goods. The disputed domain name is confusingly similar to the GUESS trademark because it contains the entire mark and makes only minor alterations, such as adding a hyphen, the term “2016,” and the gTLD “.com.” As a general rule, alterations in the form of added punctuation or the gTLD “.com” will never suffice to differentiate the domain name from the mark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also 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). Also, the addition of numbers to a domain name containing the entire mark has been found to result in a confusing similarity. See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). Therefore, the Panel finds that the disputed domain name is confusingly similar to the GUESS trademark under Policy ¶ 4(a)(i).
Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the GUESS mark in domain names. Indeed “zhou honghai” is listed as the registrant of record for the disputed domain name and the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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).
Further, Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Indeed the disputed domain name is being used by Respondent to sell products that are counterfeit versions of Complainant’s own products. Past panels have declined to grant a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name was used to sell counterfeit goods. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Therefore the Panel finds Respondent does not have rights or legitimate interests in the disputed domain name.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, the disputed domain name is being used by Respondent to sell counterfeit goods that compete with Complainant’s business. Prior panels have found bad faith where the domain name was used to sell counterfeit goods or services that competed with the complainant. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Further, Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. A likelihood of confusion exists because the webpage resolving from the disputed domain name contains advertisements for goods that are counterfeit versions of Complainant’s own goods. Respondent is profiting from the offer of such goods for sale. In the past, panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to sell counterfeit versions of the goods or services offered under the trademark at issue. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also 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); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Consequently, the Panel finds bad faith under Policy ¶ 4(b)(iv).
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-2016.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 15, 2015
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