Guess? IP Holder L.P. and Guess?, Inc. v. Milen Radumilo
Claim Number: FA1706001735164
Complainant is Guess? IP Holder L.P. and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, U.S.A. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eshop-guess.us>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2017; the Forum received payment on June 8, 2017.
On Jun 09, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <eshop-guess.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@eshop-guess.us. Also on June 9, 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 July 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 manufactures and sells men’s and women’s apparel, and registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. (Reg. No. 1,433,022, registered Mar. 17, 1987). Respondent’s <eshop-guess.us> domain name [1]is confusingly similar to Complainant’s GUESS mark because the domain name features the entire mark and merely adds the term “eshop,” which is descriptive of Complainant’s core business models, a hyphen, and the country-code top-level domain name (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in the domain name. Respondent is neither commonly known by the domain name nor has Complainant authorized Respondent to use its GUESS mark. Further, Respondent is not the owner of any trade or service mark that is identical to the domain name.
3. Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the domain name to resolve to a parking page populated by pay-per-click opportunities that directly compete with Complainant.
4. Respondent’s use of the domain name to host a parking page also demonstrates that Respondent registered and is using the domain name in bad faith. The domain name so clearly references Complainant’s business that it necessitates the inference that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GUESS mark. Respondent’s domain name is confusingly similar to Complainant’s GUESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <eshop-guess.us> domain name and that Respondent registered and uses the 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 via its registration of that mark with the USPTO. (Reg. No. 1,433,022, registered Mar. 17, 1987). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Therefore, the Panel finds that Complainant has established rights in the GUESS mark.
Complainant argues that Respondent’s <eshop-guess.us> domain name is confusingly similar to Complainant’s GUESS mark because the domain name features the entire mark and merely adds the descriptive term “eshop,” which is descriptive of Complainant’s core business models, a hyphen, and the ccTLD “.us.” The addition of a term descriptive of a complainant’s business is not sufficient to eliminate confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions”). Further, a hypen will not distinguish a domain name from a mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Finally, a ccTLD is irrelevant to the confusing similarity analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, the Panel finds that Respondent’s <eshop-guess.us> domain name is confusingly similar to Complainant’s GUESS mark in which it has established rights.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <eshop-guess.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <eshop-guess.us> domain name, nor has Complainant authorized Respondent to use its GUESS mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether the respondent is commonly known by the domain name in dispute. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Frank Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Milen Radumilo” as the registrant. Furthermore, the lack of evidence in the record showing that Complainant authorized Respondent to use the GUESS mark further supports a finding that Respondent does not have rights or legitimate interests in the use of the <eshop-guess.us> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Accordingly, the Panel concludes that Respondent is not commonly known by the <eshop-guess.us> domain name.
Complainant contends Respondent is not using the <eshop-guess.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the domain name to resolve to a parking page populated by pay-per-click opportunities that directly compete with Complainant. Use of a domain name in which a complainant has rights to host a parking page populated by pay-per-click opportunities that directly compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The <eshop-guess.us> domain name resolves to a parked website. Therefore, the Panel finds that Respondent is not using the <eshop-guess.us> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent’s use of the <eshop-guess.us> domain name to host a parked website that offers links to competing goods/services, as outlined in its argument under Policy ¶ 4(b)(iv), demonstrates that Respondent registered and is using the domain name in bad faith. Hosting a parked page with competing hyperlinks shows bad faith registration and use. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Further, it is irrelevant whether the parked page is automatically populated by a third party. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eshop-guess.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 10, 2017
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