Guess? IP Holder L.P. and Guess?, Inc. v. JAMES YOUNG
Claim Number: FA1711001757566
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 JAMES YOUNG (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clothes-guess.com>, registered with eNom, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2017; the Forum received payment on November 7, 2017.
On November 8, 2017, eNom, LLC confirmed by e-mail to the Forum that the <clothes-guess.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 November 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@clothes-guess.com. Also on November 14, 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 December 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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
Complainants, Guess? IP Holder L.P. and Guess?, Inc., own the world-famous GUESS brand which they have used for over 30 years in connection with their lines of men’s and women’s apparel. Complainant has rights in the GUESS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,271,896, registered Mar. 27, 1984). Respondent’s <clothes-guess.com> is confusingly similar to Complainant’s GUESS mark as it wholly appropriates said mark before appending a hyphen as well as the descriptive term “clothes” and the “.com” generic top-level-domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the GUESS marks. Respondent fails to utilize <clothes-guess.com> in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use as instead, Respondent inactively holds the disputed domain name.
Respondent registered and uses <clothes-guess.com> in bad faith. Respondent fails to make an active use of the disputed domain name. Respondent had actual and constructive notice of Complainant’s rights in the GUESS mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The two Complainants in this matter are Guess? IP Holder L.P. and Guess?, Inc., a clothing and goods manufacturer. These two companies collectively own the GUESS trademark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Today, I’m not feeling well. May 12, 2006), 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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complaints, and will treat them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <clothes-guess.com>domain name.
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 asserts rights in the GUESS mark based upon registration with the USPTO (Reg. No. 1,271,896, registered Mar. 27, 1984). Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “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. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds Complainant has rights in the GUESS mark per Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <clothes-guess.com> domain name is confusingly similar to the GUESS mark, as the name contains the mark in its entirety and merely adds a hyphen, the generic term “clothes,” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also 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).”). The Panel finds the <clothes-guess.com> domain name is confusingly similar to the GUESS mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <clothes-guess.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GUESS mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies Respondent as “JAMES YOUNG.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed 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). The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <clothes-guess.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that the disputed domain name also redirects users to a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). Complainant asserts Respondent had not made an active use of the disputed domain name and provides screenshot evidence. The Panel finds that Respondent has failed to provide 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).
Complainant has proved this element.
Complainant argues Respondent had constructive or actual notice of Complainant’s rights in the GUESS mark prior to registration of the <clothes-guess.com> domain name. Constructive notice, as per Policy ¶ 4(a)(iii), is insufficient for a finding of bad faith registration and use; however, actual knowledge of a complainant’s rights in a mark prior to registration of a domain name containing said mark can be found in an evaluation of the totality of the circumstances. Complainant claims that the fact Respondent included the GUESS mark along with the term “clothes”—which describes products sold by Complainant—indicates Respondent had actual knowledge of Complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends Respondent utilizes the GUESS mark in the name and the domain name fails to resolve. The Panel finds Respondent had actual knowledge of Complainant’s rights in the GUESS mark prior to registration of the disputed domain name and finds bad faith registration and use.
Complainant has alleged that Respondent’s registration of a confusingly similar domain name to Complainant’s GUESS Mark and its failure to make use of the domain name evidences Respondent’s bad faith under Policy ¶ 4(a)(iii). Panels have consistently held that the non-use of a domain name that is confusingly similar to a complainant’s mark constitutes use in bad faith. Clerical Med. Inv. Group Ltd. V Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Michelin North America, Inc. v. Energie Media Group, FA 1451882 (Forum Aug. 7, 2012) (concluding that respondent registered and used the disputed domain names in bad faith under Policy 1[4(a)(iii) where a printout from the resolving website indicated that respondent's websites were inactive, and there was no evidence the domain names were being used for any other purpose). The Panel finds Respondent registered and used the disputed domain name in bad faith.
Complainant has proved this element.
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 <clothes-guess.com>domain name be TRANSFERRED from Respondent to Complainant.
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