Guess? IP Holder L.P. and Guess?, Inc. v. Joyce Berns
Claim Number: FA1706001738250
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 Joyce Berns (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fr-guess-enligne.com>, registered with NameSilo, 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 30, 2017; the Forum received payment on June 30, 2017.
On July 3, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <fr-guess-enligne.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@fr-guess-enligne.com. Also on July 7, 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 31, 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 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 is global manufacturer and retailer of men’s and women’s apparel, and related goods and services, including hair care products. Complainant uses the GUESS mark in conjunction with its business practices. Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,704,002; registered July 28, 1992).
2. Respondent’s <fr-guess-enligne.com>[1] is confusingly similar to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the country code “fr,” the generic term “enligne,” hyphens, and the “.com” generic top-level domain (“gTLD”). The term “fr” is a geographically descriptive abbreviation for “France,” and “enligne” is the French word for “online.”
3. Respondent does not have rights or legitimate interests in <fr-guess-enligne.com>. Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the GUESS mark in any regard, nor is Respondent affiliated with Complainant.
4. Additionally, Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <fr-guess-enligne.com> domain name resolves to a website promoting hair care products and services in direct competition with Complainant.
5. Respondent registered and is using the <fr-guess-enligne.com> domain name in bad faith. The domain name attracts internet users to Respondent’s website for commercial gain by creating the confusion Respondent has an affiliation with Complainant. Additionally, Respondent is promoting goods and services in competition with Complainant.
6. Finally, Respondent registered the <fr-guess-enligne.com> domain name with knowledge of Complainant and its rights to the GUESS mark.
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 <fr-guess-enligne.com> 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 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 is a global manufacturer and retailer of men’s and women’s apparel, and related goods and services. Complainant uses the GUESS mark in conjunction with its business practices. Complainant registered the GUESS mark with the USPTO (e.g., Reg. No. 1,704,002; registered July 28, 1992). It is well established that registration with the USPTO is sufficient to show rights in a 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 determines that Complainant’s registration with USPTO is sufficient to confer it rights in the GUESS mark.
Complainant also contends that Respondent’s <fr-guess-enligne.com> domain name is confusingly similar to Complainant’s GUESS mark because it incorporates the mark in its entirety, adding the country code “fr,” the generic term “enligne,” hyphens, and the “.com” gTLD. The term “fr” is a geographically descriptive abbreviation for “France,” and “enligne” is the French word for “online.” Geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity. See e.g., Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015). Moreover, the addition of a generic term and gTLD is insufficient in distinguishing a domain name from a mark under Policy ¶ 4(a)(i). See e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Also, the “use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark." Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000). Hence, the Panel concludes that Respondent’s <fr-guess-enligne.com> domain name is confusingly similar to Complainant’s GUESS mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <fr-guess-enligne.com> 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 does not have rights or legitimate interests in the <fr-guess-enligne.com> domain name. Complainant has shown that Respondent is not commonly known by the domain name. Complainant also states it has not authorized or licensed Respondent to use the GUESS mark in any regard, nor is Respondent affiliated with Complainant. WHOIS information associated with this case identifies Respondent as “Joyce Berns.” A respondent is not commonly known by a domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by the domain name or affiliated with the complainant. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, when “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel may determine that Respondent is not commonly known by the <fr-guess-enligne.com> domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant also contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. In support of its argument, Complainant demonstrates that Respondent’s <fr-guess-enligne.com> resolves to a website promoting hair care goods and services in direct competition with Complainant. The “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). As such, the Panel finds that “capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent registered and is using <fr-guess-enligne.com> in bad faith. The record shows that the domain name attracts internet users to Respondent’s website for commercial gain by indicating incorrectly that Respondent is affiliated with the Complainant. This conduct has been found to constitute bad faith. See e.g., Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000).
Additionally, Respondent is promoting goods and services in competition with Complainant. A “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, and . . . bad faith per Policy ¶ 4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015). Complainant’s provided screenshot demonstrates that Respondent does appear to display hair products which would seemingly compete with Complainant’s. “As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant,” the Panel determines that “this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).” Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fr-guess-enligne.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 2, 2017
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