Guess? IP Holder L.P. and Guess?, Inc. v. Wang Xiao bo
Claim Number: FA1604001671006
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Wang Xiao bo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outlet-guess.com>, registered with Guangzhou Ehost Tech. 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2016; the Forum received payment on April 18, 2016. The Complaint was received in both Chinese and English.
On April 20, 2016, Guangzhou Ehost Tech. Co. Ltd. confirmed by e-mail to the Forum that the <outlet-guess.com> domain name is registered with Guangzhou Ehost Tech. Co. Ltd. and that Respondent is the current registrant of the name. Guangzhou Ehost Tech. Co. Ltd. has verified that Respondent is bound by the Guangzhou Ehost Tech. 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 April 26, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 16, 2016 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@outlet-guess.com. Also on April 26, 2016, 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 May 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:
1. Complainant uses the GUESS marks in connection with its business a worldwide clothing retailers. 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 domain <outlet-guess.com> is confusingly similar to the GUESS mark as the domain includes the mark and only differs from the mark through the addition of the generic top-level domain (“gTLD”) “.com,” the generic term “outlet,” and a hyphen.
2. Respondent has no rights or legitimate interests in the domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information listing the Respondent as, “Wang Xiao bo.” Further, Respondent’s use of the disputed domain, to sell counterfeit imitations of Complainant’s goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent registered and is using the disputed domain name in bad faith. Respondent has shown, through its attempt to sell Complainant’s counterfeit goods, that it is competing and disrupting Complainant’s business. Additionally, Respondent is attempting to attract and confuse Internet users for commercial gain through using Complainant’s mark to sell goods in competition with Complainant. Finally, Respondent’s use of Complainant’s marks and photographs to sell imitations of Complainant’s goods indicate that Respondent had actual knowledge of Complainant’s marks at the time of registration.
B. Respondent:
1. Respondent has not submitted a Response in this proceeding.
Panel Note: 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. Respondent’s <outlet-guess.com> domain name is confusingly similar to Complainant’s GUESS mark.
2. Respondent does not have any rights or legitimate interests in the <outlet-guess.com> domain name.
3. Respondent registered or used the <guess.com> domain name 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(f), 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 (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 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). See Compl., at Attached Ex. D. Panels consistently hold, and this Panel similarly holds, that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO).
Complainant claims that Respondent’s domain <outlet-guess.com> is confusingly similar to the GUESS mark in which Complainant claims rights. The disputed domain differs from the GUESS mark through the addition of the gTLD “.com,” a hyphen, and the generic term “outlet.” Past panels have considered the presence of the gTLD “.com” as irrelevant to a confusing similarity analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Panels have also held that punctuation, such as hyphens, does not differentiate a domain from the mark to which the punctuation mark is added. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Lastly, the addition of generic terms to a mark, particularly when the term is related to a complainant’s business, does not prevent a finding of confusing similarity. 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). Taken together, the Panel finds that Respondent’s domain is confusingly similar to the GUESS mark in which Complainant asserts rights.
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 (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 (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 argues that Respondent has not been commonly known by the disputed domain name based on WHOIS information listing the Respondent as, “Wang Xiao bo.” See Compl., at Attached Ex. A. Complainant also contends that Respondent has not been given permission by Complainant to use the GUESS mark. Panels have held that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of information to the contrary. See Instron Corp. v. Kaner, FA 768859 (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). This Panel concludes that Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii).
Further, Complainant urges that Respondent’s use of the disputed domain, to sell counterfeit imitations of Complainant’s goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website that displays the GUESS mark and purports to sell goods such as shoes, purses, and swimsuits using the GUESS mark. See Compl., at Attached Ex. E. Complainant believes that the goods offered on this website are counterfeit versions of products that Complainant offers through its GUESS mark. Prior panels have seen a respondent’s offering of counterfeit goods as not constituting a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (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). The Panel thus finds that Respondent’s use of a domain does not fall within the purview of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent’s bad faith has been shown through attempting to sell Complainant’s counterfeit goods. As stated previously, Respondent’s domain resolves to a website that displays the GUESS mark and offers multiple items for sale which are presented with titles that include the GUESS mark. See Compl., at Attached Ex. E. Panels have found bad faith under Policy ¶4(b)(iii) when a respondent used another’s mark to sell goods imitating those of a complainant. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum April 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). This Panel finds that Respondent’s bad faith is evident through competing and disrupting Complainant’s business.
Additionally, Complainant asserts that Respondent is attempting to attract and confuse internet users for commercial gain through using the disputed domain to sell goods that compete with Complainant’s own goods. Again, Respondent’s domain resolves to a website that offers products that imitate those offered by Complainant. See Compl., at Attached Ex. E. Presumably users who reach Respondent’s domain may purchase goods from Respondent believing the products to be legitimate and then be less likely to buy Complainant’s legitimate products. Panels have held that selling counterfeit goods can constitute bad faith under Policy 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (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). This Panel concludes that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the GUESS marks. Complainant argues that Respondent's offering of imitation 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 determine 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outlet-guess.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch; Panelist
Dated: May 27, 2016
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