Guess? IP Holder L.P. and Guess?, Inc. v. McDonagh Geraldine
Claim Number: FA1705001729905
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, United States. Respondent is McDonagh Geraldine (“Respondent”), Illinois, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapguessoutletstore.com>, registered with GoDaddy.com, LLC.
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 Honorable Charles K. McCotter Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cheapguessoutletstore.com> domain name 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 May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2017 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@cheapguessoutletstore.com. Also on May 4, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter Jr. (Ret.) 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 designs, markets, and distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. Complainant began using its brand in 1981. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Respondent’s <cheapguessoutletstore.com> domain name is confusingly similar as it incorporates the entire GUESS mark, preceded by the descriptive term “cheap” and appended by the descriptive terms “outlet” and “store,” along with the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the <cheapguessoutletstore.com> domain name. Respondent is not commonly known by the GUESS mark. Respondent is not affiliated with Complainant, nor has Complainant has given Respondent permission to use the GUESS mark. Respondent also does not use the disputed domain name for any bona fide offering of goods or services because she sells counterfeit products under Complainant’s mark.
Respondent registered and uses the <cheapguessoutletstore.com> in bad faith. By using a domain name confusingly similar to Complainant’s GUESS mark, Respondent attempts to attract, for commercial gain, a likelihood of confusion with the mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain name. Similarly, Respondent uses the disputed domain name to sell counterfeit GUESS goods. Finally, Respondent had actual knowledge of Complainant’s GUESS mark as shown by the explicit use of Complainant’s GUESS mark and photographs.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Guess? IP Holder L.P. and Guess?, Inc., designs, markets, and distributes its full collections of women’s and men’s apparel throughout the United States, Canada, and worldwide. Complainant began using its brand in 1981. Complainant has rights in the GUESS mark through registration with the USPTO (e.g., Reg. No. 1,433,022, registered Mar. 17, 1987). Respondent’s <cheapguessoutletstore.com> domain name is confusingly similar to the GUESS mark.
Respondent, McDonagh Geraldine, registered the <cheapguessoutletstore.com> domain name on March 16, 2017.
Respondent has no rights or legitimate interests in the <cheapguessoutletstore.com> domain name. Respondent uses Complainant’s mark to sell counterfeit products.
Respondent registered and uses the <cheapguessoutletstore.com> 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 has rights in the GUESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <cheapguessoutletstore.com> domain name is confusingly similar to Complainant’s mark as it simply adds descriptive terms to Complainant’s GUESS mark along with the gTLD “.com.”
Respondent has no rights or legitimate interests in the <cheapguessoutletstore.com> domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use its GUESS mark. The WHOIS information identifies “McDonagh Geraldine” as the registrant of the domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent also uses the famous GUESS mark in its <cheapguessoutletstore.com> domain name to list and sell counterfeit GUESS products. The unauthorized selling of a complainant’s products, whether real or counterfeit, can show a lack of a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services, or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Therefore, Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent registered and uses the <cheapguessoutletstore.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Commercially benefiting via initial interest confusion can show bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Selling counterfeit products shows bad faith under Policy ¶ 4(b)(iii). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA 1621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”).
Respondent had actual knowledge of Complainant’s GUESS mark prior to registering the <cheapguessoutletstore.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapguessoutletstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter Jr. (Ret.), Panelist
Dated: June 12, 2017
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