Guess? IP Holder L.P. and Guess?, Inc. v. ZheWen Zuo
Claim Number: FA1510001643080
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 ZheWen Zuo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guesssoldesparis.com>, registered with Zhengzhou Zitian Network Technology Co., Ltd.
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. 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 <guesssoldesparis.com> 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 26, 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@guesssoldesparis.com. Also on October 26, 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 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 adds the generic terms “soldes” and the name of the city of Paris, in addition to 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.
Preliminary Issue: Language of Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. However, 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.
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. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003); Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004).
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 adds the common word “soldes” (which means “sale” in French) and the name of the city of Paris. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); and Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). 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 “ZheWen Zuo,” 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
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).”); Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a 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).”); G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under 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 <guesssoldesparis.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 20, 2015
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