Guess? IP Holder and Guess?, Inc. v. VirgilBeene
Claim Number: FA1805001789388
Complainant is Guess? IP Holder and Guess?, Inc. (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is VirgilBeene (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guessoutlet.us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, 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 May 31, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <guessoutlet.us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On May 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@guessoutlet.us.com. Also on May 31, 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 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 (“Rules”). 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 contends as follows:
Complainant registered the GUESS mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <guessoutlet.us.com> domain name is confusingly similar to Complainant’s mark as it contains GUESS in its entirety plus the descriptive term “outlet,” the country code abbreviation “us,” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <guessoutlet.us.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent sells counterfeit GUESS goods and displays Complainant’s own GUESS mark and photographs of Complainant’s models on the resolving website.
Respondent registered and uses the <guessoutlet.us.com> domain name in bad faith. Respondent disrupts Complainant’s business through the sale of counterfeit goods in direct competition with Complainant’s business. Respondent uses the disputed domain name to offer counterfeit versions of Complainant’s products for Respondent’s commercial gain. Respondent had actual knowledge of Complainant’s rights in the GUESS marks prior to registration of the <guessoutlet.us.com> domain name. Finally, Respondent provided false contact information to CentralNic.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GUESS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GUESS trademark.
Respondent uses the domain name to operate a website that sells counterfeit GUESS goods and displays Complainant’s GUESS mark as well as photographs of Complainant’s models.
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 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.”
Complainant Guess IP Holder, is presumably a holding company concerned with Complainant Guess, Inc.’s intellectual property. The Panel therefore finds that the two Complainants (herein later referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity. Notably, there is no objection by Respondent to the two named complainants proceeding together. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has multiple registrations for its GUESS mark with the USPTO. Each registration is convincing evidence of Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name starts with Complainant’s GUESS trademark, adds the descriptive terms “outlet” and concludes with the ccTLD country code “.us” and gTLD top level “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Notably, the term “outlet” is suggestive of a retail directed business such as Complainant’s apparel business. The presence of a suggestive term in the domain name adds to the confusion caused by the domain name’s inclusion of Complainant’s GUESS trademark. Further, top level domains are a necessary part of a domain name’s syntax and have long been held irrelevant to analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <guessoutlet.us.com> domain name is confusingly similar to Complainant’s GUESS trademark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); also see, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “VirgilBeene” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <guessoutlet.us.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <guessoutlet.us.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <guessoutlet.us.com> domain name addresses a website that offers counterfeit Guess products. The website also displays the GUESS mark and photographs of GUESS models. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent’s domain name creates confusion among internet users because the domain name includes Complainant’s well-known trademark and because Respondent offers counterfeit products on a website addressed by the domain name. These circumstances demonstrate bad faith registration and use of the <guessoutlet.us.com> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum April 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also, Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Additionally, the fact that Respondent failed to respond to Complainant’s Request for Mediation indicates that Respondent likely provided false contact information to CentralNic. Respondent’s bad faith is thereby demonstrated pursuant to Policy 4(b)(v). Furthermore, false contact information has traditionally been found as nonexclusive bad faith under Policy ¶ 4(a)(iii). See generally CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the GUESS mark when it registered the <guessoutlet.us.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of Complainant’s trademark and photo models on the <guessoutlet.us.com> website; and from Respondent’s offering of counterfeit GUESS products on such website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering 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 <guessoutlet.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 26, 2018
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