Guess? IP Holder L.P. and Guess?, Inc. v. Wang XianLing
Claim Number: FA1805001789387
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 Wang XianLing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gbyguess.us.com>, registered with 1API GmbH.
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.
Kenneth L. Port as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on May 29, 2018.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On June 1, 2018, 1API GmbH confirmed by e-mail to the Forum that the <gbyguess.us.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On June 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@gbyguess.us.com. Also on June 5, 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 June 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 CDRP 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 CDRP Policy, CDRP 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 designs, markets and distributes its full collections of women’s and men’s apparel worldwide. Complainant has rights in the G BY GUESS and related marks based upon the registration with the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,573,181, registered Feb. 10, 2009) See Compl. Ex. D. Respondent’s <gbyguess.us.com> is confusingly similar to Complainant’s mark as Respondent merely eliminates the spacing and adds the country code “.us” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have any rights or legitimate interests <gbyguess.us.com> domain name. Respondent is not permitted or licensed to use Complainant’s G BY GUESS mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products.
Respondent has registered or is using the domain names in bad faith. Respondent is attempting to disrupt Complainant’s business by selling counterfeit versions of Complainant’s goods. In addition, Respondent attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Finally, Respondent must have had actual and constructive knowledge of Complainant’s G BY GUESS mark prior to registering the <gbyguess.us.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on March 16, 2018
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed 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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for CentralNic Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may submit to the Forum a complaint in accordance with the Policy and these Rules. . .” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as 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 complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainants claim Complainant Guess? IP Holder L.P. is effectively wholly owned by Complainant Guess?, Inc. See Compl. Ex. E (Declaration of Anne Deedwania, describing the relationship between Complainants). However, the Panel is convinced that there exists a significant nexus between these two entities and that this nexus is sufficient to treat these two complainants as one. As such, the Panel shall proceed in this matter referring to the two complainants as “Complainant.”
The Panel finds that the disputed domain name, <gbyguess.us.com>, is confusingly similar to Complainant’s mark, G BY GUESS. Complainant has adequately pled its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely eliminating the spacing and adding the country code “.us” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds the disputed domain name to be similar to the Complainant’s trademark.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent apparently uses the disputed domain name to sell counterfeit versions of Complainant’s products.
As such, the Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered or is using the disputed domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods is evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). Here, Complainant contends that Respondent is using Complainant’s G BY GUESS mark on its webpage to sell counterfeit products. Furthermore, Complainant contends that by using the disputed domain name along with photographs of Complainant’s counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with the Complainant G BY GUESS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. See Compl. Ex. G. Therefore, the Panel finds that Respondent attempted to disrupt Complainant’s business and commercially benefited from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further asserts that Respondent’s use of false contact information in the registration of the domain name indicates Respondent did so in bad faith. Provision of false contact information in registering a domain name with CentralNic can indicate bad faith per CDRP ¶ 4(b)(v). See Guess? IP Holder and Guess?, Inc. v. VirgilBeene FA 1789388 (FORUM June 26, 2018) (finding bad faith under CDRP ¶ 4(b)(v) and UDRP ¶ 4(a)(iii) where the respondent provided false, misleading WHOIS information when registering the domain name). Complainant contends that Respondent’s failure to respond to its request for CentralNic mediation indicates Respondent provided false contact information in registering the name. The Panel finds Respondent registered and/or used the disputed domain name in bad faith per Policy ¶ 4(b)(v).
Finally, the Panel finds that Respondent registered the domain name with actual knowledge of Complainant’s prior rights in and to the trademark G BY GUESS. Given the totality of the circumstances including the fame of the Complainant’s trademark and business, the Panel finds Respondent has actual knowledge of Complainant’s trademark and its rights thereto.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gbyguess.us.com> domain name TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 29, 2018
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