Guess? IP Holder L.P. and Guess?, Inc. v. Joel Bandy / Guess & Co. Corporation / Corporate Affairs / The Guess Bread Company, Ltd. / The Guess Construction Company, Ltd. / The Guess Private Merchant Company, Ltd.
Claim Number: FA1802001773878
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 Joel Bandy / Guess & Co. Corporation / Corporate Affairs / The Guess Bread Company, Ltd. / The Guess Construction Company, Ltd. / The Guess Private Merchant Company, Ltd. (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2018; the Forum received payment on February 27, 2018.
On Feb 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2018 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@guessandco.info, postmaster@guessandco.org, postmaster@guessandcoshareholder.info, postmaster@theguessbreadcompany.com, postmaster@theguessconstructioncompany.com, and postmaster@theguessprivatemerchantcompany.com. Also on March 1, 2018, 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 March 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On March 27, 2018, the Panel issued a Procedural Order to Complainants to submit an explanation along with supporting exhibit showing that the Complainants have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint and to specify the Complainant to whom the disputed domain name should be transferred in the remedy sought by April 3, 2018.
On March 30, 2018, Complainants submitted an Additional Submission in response to the Panel’s Procedural Order.
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 names be transferred from Respondent to Complainant 'Guess? IP Holder L.P.'.
A. Complainant
Complainant began its business in 1981 as a small California jeans company, and has since developed into a global lifestyle brand. Complainant now designs, markets, and distributes its full collection of women’s and men’s apparel throughout the United States, Canada, and the rest of the world. Complainant has rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987). See Compl. Ex. F. Respondent’s <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names are identical or confusingly similar to Complainant’s mark as they all contain the GUESS mark in its entirety and simply add various generic/descriptive terms along with a generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the at-issue domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to use any of the domain names in connection with an active website. See Compl. Ex. G.
iii) Respondent registered and uses the <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names in bad faith. Respondent has previously engaged in a pattern of bad faith and fraudulent business activities. See Compl. Ex. B (article regarding Respondent). Further, Respondent registered six confusingly similar domain names to attract Internet users to its web pages, where Respondent fails to use the domain names in connection with an active website. See Compl. Ex. G. Finally, Respondent clearly had actual and constructive knowledge of Complainant’s rights in the GUESS mark prior to registering the domain names given the fact that Respondent registered six domain names all incorporating the GUESS mark along with various descriptive terms.
B. Respondent
Respondent failed to submit a response in this proceeding.
1. A sufficient nexus or link between the Complainants Guess? IP Holder L.P. and Guess?, Inc. exists.
2. The disputed domain names are commonly owned · controlled by a single Respondent who is using multiple aliases.
3. Complainant began its business in 1981 and has since developed into a global lifestyle brand. Complainant now designs, markets, and distributes its full collection of women’s and men’s apparel throughout the United States, Canada, and the rest of the world.
4. Complainant has established rights in the GUESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987).
5. Respondent registered the domain names on the following dates: <guessandco.info> (January 17, 2018), <guessandco.org> (January 17, 2018), <guessandcoshareholder.info> (January 17, 2018), <theguessbreadcompany.com> (January 18, 2018), <theguessconstructioncompany.com> (January 18, 2018), and <theguessprivatemerchantcompany.com> (January 18, 2018).
6. No evidence exists to show that Respondent has ever been legitimately known by the GUESS mark.
7. The disputed domain names resolve in websites that lack any content.
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.”).
Preliminary Issue 1: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 (Forum 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Complainants contend that Guess? IP Holder L.P. is a Delaware limited partnership that is effectively wholly owned by Guess?, Inc. by submitting a declaration of an Officer of Guess?, Inc.. It also contends that both Guess? IP Holder L.P. and Guess?, Inc. have a sufficient trademark interest and ownership in the disputed domain names by submitting a copy of the Trademark Assignment of certain Guess-based trademarks and corresponding registrations from Guess?, Inc. to Guess? IP Holder L.P.
As the Panel accepts that the evidence in the Complaints’ Additional Submission is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant” in this decision.
Preliminary Issue 2: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the contact information for the <guessandco.info>, <guessandco.org>, and <guessandcoshareholder.info> domain names all go through the email address, “@guessandco.com.” Similarly, the <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names all list the same registrant contact information, such as the same name, address, and email. Additionally, various articles on the Internet appear to show that the listed registrants, The Guess Bread Company, Ltd, The Guess Construction Company, Ltd., The Guess Private Merchant Company, Ltd., and Guess & Co. Corporation, all appear to be subsidiaries of Guess & Co. Corporation, affiliated with an individual names “Jerry Demario Guess.” See Compl. Exs. B & C. Finally, all of the domain names were registered within ten hours of each other.
The Panel finds the disputed domain names are commonly owned · controlled by a single Respondent who is using multiple aliases.
Complainant claims rights in the GUESS mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,433,022, registered Mar. 17, 1987). See Compl. Ex. F. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established rights in the GUESS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names are identical or confusingly similar to Complainant’s mark as they all contain the GUESS mark in its entirety and simply add various generic/descriptive terms along with a gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain names are confusingly similar to the GUESS mark under Policy ¶4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the at-issue domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS identifies the following as the registrants for the domain names: <guessandco.info> (“Joel Bandy / Guess & Co. Corporation”), <guessandco.org> (“Joel Bandy / Guess & Co. Corporation”), <guessandcoshareholder.info> (“Joel Bandy / Guess & Co. Corporation”), <theguessbreadcompany.com> (“Corporate Affairs / The Guess Bread Company, Ltd”), <theguessconstructioncompany.com> (“Corporate Affairs / The Guess Construction Company, Ltd”), and <theguessprivatemerchantcompany.com (“Corporate Affairs / The Guess Private Merchant Company, Ltd”)>. See Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the GUESS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant contends that the disputed domain names resolve in websites that lack 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving web pages, all of which appear to be parked by the registrar, GoDaddy, without any substantive content. See Compl. Ex. G. Accordingly, the Panel finds that Respondent fails to actively use the domain names, failing to confer rights and legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names in bad faith as Respondent has previously engaged in bad faith registration of domain names. A complainant may use prior bad faith actions against a respondent to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides an article outlining the fraudulent behavior of the alleged registrant of the domain names, Jerry Guess. See Compl. Ex. B. The articles detail how Jerry Guess was investigated, charged, and convicted of various criminal activity in connection with a former business, and how Jerry Guess wanted to begin new business under a different name involving the GUESS mark. Id. As such, the Panel agrees that Respondent has previously engaged in bad faith behavior, and holds that Respondent registered and used the disputed domain names in bad faith.
Next, Complainant argues that Respondent registered and uses the infringing domain names in bad faith by registering six confusingly similar domain names to attract Internet users to its web pages, where Respondent fails to use the domain names in connection with an active website. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv), even where a respondent does not use the domain name in connection with an active web page. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As mentioned above, the screenshots provided by Complainant show that the web pages are parked by the registrar, GoDaddy. See Compl. Ex. G. Accordingly, the Panel agrees that Respondent attempted to attract Internet users by trading off Complainant’s goodwill in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent’s inactivity on the resolving domains show bad faith under Policy ¶ 4(a)(iii). The Panel recalls Complainant’s provided screenshots, showing the parked web pages for each of the disputed domain names. See Compl. Ex. G. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant began its business in 1981, and has since developed into a global lifestyle brand. Complainant now designs, markets, and distributes its full collection of women’s and men’s apparel throughout the United States, Canada, and the rest of the world. As such, Complainant’s mark ‘GUESS’ is considered as being a well-known trademark, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Finally, Complainant claims that Respondent had actual and constructive knowledge of Complainant’s GUESS mark at the time of registering the disputed domain names. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers, however, due to the fame of the Complainant’s mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain names and finds that actual knowledge does adequately evince 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guessandco.info>, <guessandco.org>, <guessandcoshareholder.info>, <theguessbreadcompany.com>, <theguessconstructioncompany.com>, and <theguessprivatemerchantcompany.com> domain names be TRANSFERRED from Respondent to Complainant ‘Guess? IP Holder L.P.’.
Ho Hyun Nahm, Esq., Panelist
Dated: April 9, 2018
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