Guess? IP Holder L.P. and Guess? Inc. v. Protection of Private Person
Claim Number: FA1706001736058
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 Protection of Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessasap.com>, registered with Registrar of Domain Names REG.RU 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2017; the Forum received payment on June 15, 2017.
On June 21, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <guessasap.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 June 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@guessasap.com. Also on June 21, 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 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in GUESS and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language of Complaint
The Registration Agreement is written in Russian and so under Rule 11, Russian is the language of the proceedings. Nevertheless, the Panel has the discretion to determine that another language is to be the language of the proceedings after taking into consideration the particular circumstances of the case.[i]
The at-issue trademark is an ordinary English language word. The resolving website displays articles of clothing with sizing and website navigation terms written in English. Pursuant to UDRP Rule 11(a), the Panel determines that Respondent is sufficiently proficient in English and the proceedings can continue in English. English is the language of the proceedings.[ii]
Multiple Complainants
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two named complainants: Guess? IP Holder L.P. and Guess?, Inc. The Panel notes that this is not the first complaint filed by these companies which does not address the Forum’s Supplemental Rule 1(e) at all. However, for the purposes of Supplemental Rule 1(e) it seems likely that the named complainants are part of the one company group and that the most likely relationship is that of parent and a related company which owns the group’s intellectual property rights. The Panel therefore treats the named complainants as a single entity[iii] and all references herein to “Complainant” are to be understood in that way.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells clothing and fashion accessories by reference to the trademark GUESS which is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,433,022 from March 17, 1987;
2. the disputed domain name was created on April 18, 2017 and resolves to a website offering items of clothing;
3. the resolving website uses the trademark GUESS and, separately, the integer “A$AP”;
4. there is no evidence of Complainant’s assertion that the clothing sold at the resolving website is counterfeit; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for GUESS, the Panel is satisfied that it has trademark rights in that term.[iv]
The disputed domain name makes additions to the trademark in the form of the letters “asap” and the general top-level domain,“.com”. It is agreed that for the purposes of comparison, the gTLD can generally be ignored, as it can in this case.[v] The additional letters “asap” form a well-recognized acronym understood to mean “as soon as possible” and in the Panel’s assessment do not substantially affect the identity of the trademark. The trademark remains the recognizable element of the domain name.[vi]
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vii]
The publicly available WHOIS information identifies “PROTECTION OF PRIVATE PERSON” (a privacy service) as the registrant and so there is no evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent might hold relevant trademark rights.
The evidence accompanying the Complaint shows that the domain name resolves to a website principally selling t-shirts bearing the trademark. Complainant asserts the goods are counterfeit. There is no proof of that claim. Nevertheless, the Panel accepts Complainant’s assertion that it has not licensed use of the trademark to Respondent, nor given permission to register any domain name incorporating the trademark.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case the Panel find registration and use in bad faith pursuant to paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain. The resolving website shows goods bearing Complainant’s trademark proving Respondent’s primary intention. In terms of paragraph 4(b)(iv) the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel finds the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessasap.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 16, 2017
[i] See FilmNet Inc. v Onetz, FA 96196 (FORUM Feb. 12, 2001 finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English.
[ii] See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009), the panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language; see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
[iii] See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (FORUM May 12, 2006), where the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”; see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (FORUM Dec. 28, 2003), where the panel treated two complainants as a single entity where both held rights in trademarks contained within the disputed domain names; see Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (FORUM Feb. 6, 2004), where the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
[iv] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[v] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[vi] See, by way of comparison, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (FORUM Aug. 3, 2015) finding <twitcch.tv> confusingly similar to the TWITCH TV trademark.
[vii] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
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