Guess? IP Holder L.P. and Guess?, Inc. v. Hu ZiQuan
Claim Number: FA1604001671007
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 Hu ZiQuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guess-factory.net>, registered with Xin Net Technology Corporation.
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.
Paul M. DeCicco, 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, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <guess-factory.net> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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@guess-factory.net. 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 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant’s GUESS mark been used in connection with its worldwide men’s and women’s apparel company for over 30 years. 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, <guess-factory.net>, is confusingly similar to the GUESS mark as the domain includes the entire GUESS mark and merely adds the generic top-level domain (“gTLD”) “.net,” a hyphen, and the generic term “factory.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain as WHOIS information associated with the domain indicates that Respondent is known as “Hu ZiQuan.” Further, the website operated by Respondent at the subject domain name sells counterfeit GUESS goods and displays Complainants' own GUESS Mark and photographs of Complainants' models. Respondent’s use of the disputed domain, to employee Complainant’s GUESS mark to sell counterfeits of Complainant’s products, 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 has shown, through its attempt to sell counterfeit goods that appear to be Complainant’s that it is competing and disrupting Complainant’s business. Additionally, Respondent is attempting to attract and confuse Internet users for commercial gain by using Complainant’s mark to sell goods in competition with Complainant. Finally, Respondent’s use of Complainant’s mark to sell imitations of Complainant’s goods indicates that Respondent had actual knowledge of Complainant’s marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GUESS mark through its registration of such mark with the numerous trademark registries worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GUESS trademark.
Respondent uses the at-issue domain name to address a website offering counterfeit goods and other goods that are similar to those offered by Complainant.
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.”).
Furthermore, 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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has registered its GUESS mark in the United States, China, and in other national trademark registries worldwide. Each registration is convincing evidence of Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s entire GUESS trademark, adds a hyphen and the descriptive term “factory,” and concludes with the top level domain name “.net.” The addition of a hyphen and generic top-level domain “.net” has no impact on the Panel’s analysis under Policy ¶ 4(a)(i). 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"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, the inclusion of the term “factory” in Respondent’s domain name actually promotes confusing similarity as the descriptive term “factory” is suggestive of a producer of goods and/or an entity that might have a “factory” store, such as Complainant. 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). Therefore, the Panel concludes that Respondent’s <guess-factory.net> domain name is confusingly similar to Complainant’s GUESS mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Hu ZiQuan” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <guess-factory.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the <guess-factory.net> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <guess-factory.net> domain name addresses a website that displays the GUESS mark and offers goods labelled, “Guess Mens Skinny Jeans Glenhaven,” “Guess Mens Bootcut Jeans Joey Low Classic,” and “Guess Mens Slim Jeans Conductor Black.” Using the domain name in this manner to offer counterfeit goods is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above, Respondent’s confusingly similar domain name creates confusion among internet users by the fact of the domain name and because Respondent offers counterfeit products on a website addressed by such domain name. These circumstances demonstrate bad faith registration and use of the <guess-factory.net> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). 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)); see also, Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Finally, Respondent had actual knowledge of Complainant’s rights in the GUESS mark when it registered the <guess-factory.net> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of Complainant’s trademark and photo models on the <guess-factory.net> website; and from Respondent’s offering of counterfeit GUESS products on the offending website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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).
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-factory.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 19, 2016
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